Federal Circuit Holds Construction of Design Patents Must Include Functional Elements that Contribute to the Design’s Overall Ornamentation
In Sports Dimensions, Inc. v. The Coleman Company, slip op., 2015-1553 (Fed. Cir. April 19, 2016), the U.S. Court of Appeals for the Federal Circuit held that a design patent incorporating functional elements must be construed to include ornamental aspects of those elements. It rejected a lower court’s construction of the design patent because the construction eliminated the functional elements. “By eliminating structural elements from the claim, the district court improperly converted the claim scope from one that covers the overall ornamentation to one that covers individual elements.”
The design patent at issue is U.S. Patent No. D623,714 for a “an ornamental design for a personal flotation device” as shown in the figures of the patent. Figures 1 and 2 are reproduced below:
As shown in the drawings, the D’714 patent discloses a personal flotation device with two arms connected to a torso piece, and the torso piece is flat on its back and tapers toward a connecting strap on its sides.
The district court construed the D’714 patent as follows: “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 patent owner, Coleman, moved for entry of judgment of noninfringement so that it could appeal this construction, and the district court granted the motion and entered judgment against Coleman.
On appeal, the Federal Circuit first reviewed its case law on design patent claim construction. It acknowledged that “words cannot easily describe ornamental designs” and that “a design patent’s claim is thus often better represented by illustrations than a written claim construction.” The court further noted that while design patents cannot protect a purely functional design—a design “dictated by” its function, “as long as the design is not primarily functional, ‘the design claim is not invalid, even if certain elements have functional purposes.’” On the other hand, the court noted that the design patent claim “must be limited to the ornamental aspects of the design.”
As for the construction of the D’714 patent, the Federal Circuit agreed with the district court that the armbands and tapered torso are functional features of the design. The court, however, rejected as contrary to law the district court’s claim construction that eliminated the armbands and side torso tapering from the construction. The court summarized its holding as follows:
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 design includes the appearance of three interconnected rectangles, as seen in Figure 2. It is minimalist, with little ornamentation. And the design includes the shape of the armbands and side torso tapering, to the extent that they contribute to the overall ornamentation of the design. As we discussed above, however, the armbands and side torso tapering serve a functional purpose, so the fact finder should not focus on the particular designs of these elements when determining infringement, but rather focus on what these elements contribute to the design’s overall ornamentation. Because of the design’s many functional elements and its minimal ornamentation, the overall claim scope of the claim is accordingly narrow.
Based on this holding, the Federal Circuit vacated the district court judgment and remanded the case for decision consistent with the proper claim construction.
Sports Dimensions is an important case in the development of U.S. design patent law. Design patents protect ornamental designs of articles of manufacture that often have both functional and ornamental elements. Sports Dimensions provides valuable guidance on how to construe such design patents having functional elements.