Where Claimed Points of Novelty Have Primarily Functional Purpose, They Fail “Ornamental Design” Patentability Requirement
The Patent Trial and Appeal Board (Board) designated as informative a decision on institution of a post-grant review (PGR), which set forth an analysis for determining whether a design patent’s claims are primarily functional and therefore not patentable under 35 U.S.C. § 171’s requirement that the invention be an “ornamental design.” Sattler Tech Corp. v. HumanCentric Ventures, LLC, Case No. PGR2019-00030 (PTAB July 26, 2019) (Gerstenblith, APJ) (designated precedential on June 11, 2020).
The challenged design patent related to an alleged “ornamental design for a VESA mount adapter bracket.” A Video Electronics Standards Association (VESA) mount allows for a standard bracket interface for flat panel monitors, as defined in the VESA Flat Display Mounting Interface Standard from 2006. The VESA interface accepts a bracket that complies with the interface requirements for the spacing, size and shape of bolt holes and mounting tabs. This allows for universal mounting of VESA-compliant monitors on VESA-compliant brackets. The claims of the design patent were directed to the mounting tabs and raised grommets around the locations of the holes for mounting bolts.
The PGR petition alleged that the claimed tabs were purely functional, and therefore did not meet the “ornamental design” requirement of § 171 because the VESA standard required the tabs to be positioned and sized as claimed. The Board agreed, finding that the tabs could not be ornamental because they served the functional purpose of complying with the VESA standard, which dictates the size and shape of the tabs so they fit into mounting interfaces of VESA-compliant monitors. If the tabs did not have the claimed size and shape, they would not serve the bracket’s purpose of being VESA-compliant.
As to the claimed grommets, the petition alleged that the size and location of the grommets were also functional because the VESA standard set forth the specific size, spacing and location of the holes through which the mounting bolts attach to a VESA-compliant monitor. As with the claimed tabs, the size, spacing and location of the grommets could not be ornamental. However, the raised edges of the grommets were not dictated by the VESA standard. The petitioner cited a scientific paper about metal forming that recognized how raised edges on a grommet provide a functional benefit of improving fatigue strength of the material at the mounting hole. Crediting this evidence, the Board found that the primary purpose of the raised edges of the grommets was functional and not ornamental. As such, the petition met its burden to show that it was more likely than not that the claimed design elements were not “ornamental designs” and therefore not patentable.