Takeaway: The courts look at the overall design of the embodiments in the design patent to determine the proper claim construction or patent scope.
In Sport Dimension, Inc. v. Coleman Co., Inc. (Fed. Cir. April 19, 2016), Coleman accused Sport Dimension of infringing on U.S. Patent No. D623,714 (the “D’714 patent”) for a “Personal Flotation Device.”
The district court adopted Sport Dimension’s proposed claim construction: “The ornamental design for a personal flotation device, as shown and described in Figures 1–8, except the left and right armband, and the side torso tapering, which are functional and not ornamental.”
The Federal Circuit’s 2010 decision Richardson v. Stanley Works, 469 F.3d 1361, 1366 (Fed. Cir. 2006), was interpreted to require courts to “factor out” functional parts of claimed designs. Thus, Coleman appealed the claim construction and moved for entry of judgment of non-infringement. Soon after Coleman’s appeal was docketed, the Federal Circuit disavowed the “factoring out” rule that many had read in Richardson and insisted that Richardson did not require the elimination of functional elements from design patent claims.
Thus, the Federal Circuit reversed the district court’s construction of Coleman’s claim, following this new interpretation of Richardson. The court further explained how it determined whether something is “functional” for the purposes of claim construction. Words cannot easily describe ornamental designs, the appellate court noted. Even so, a district court may use claim construction to help guide the fact finder through issues that bear on claim scope.
Agreeing with the district court, the Federal Circuit pointed out that Coleman’s armbands and tapered side torso designs meet several of the factors announced in PHG Technologies, LLC v. St. John Cos., for determining whether a design claim was dictated by function, including:
“whether the protected design represents the best design; whether alternative designs would adversely affect the utility of the specified article; whether there are any concomitant utility patents; whether the advertising touts particular features of the design as having specific utility; and whether there are any elements in the design or an overall appearance clearly not dictated by function.” Id.
“We thus look to the overall design of Coleman’s personal flotation device disclosed in the D’714 patent to determine the proper claim construction.” The overall design includes the appearance of three interconnected rectangles, and it is minimalistic, with little ornamentation, and the shape of the armbands and side torso tapering.
Therefore, the district court’s claim construction was rejected, the stipulated judgment of non-infringement was vacated, and the case remanded for consideration of infringement.
Determining whether a design patent is infringed can be challenging and needs to take into account functionality of the design.