Design Patent Functionality After Egyptian Goddess And Richardson: The Assumption Of Claim Construction Dysfunction And Gumption

The Federal Circuit's decisions in Egyptian Goddess v. Swisa and Richardson v. Stanley Works have afforded district courts considerable discretion regarding how to assess functional features of claimed designs in the context of infringement. Setting aside the threshold question of whether such evaluations are proper in the context of claim construction (versus being affirmative defenses), a matter which has been discussed extensively, the lack of clear signposts through the functionality thicket is injecting significant uncertainty into design patent litigation.

To make matters more complicated, the signposts that do exist are not always pointing in the same directions. Indeed, Richardson's use of varied language to describe how to consider functional elements in design patents, words such as "ignoring" and "factoring out," present further uncertainty. Indeed, it seems conceivable within the purview of Richardson that a court—armed with wide discretion—could completely "ignore" functional features and erase them from a claim, or it could merely "disregard" them.

Looking at post-Egyptian Goddess and Richardson case law, the net result is a patchwork of opportunistic battles—for patentees and alleged infringers—fought on several fronts. Courts are the arbiters of these new fronts, and they are making variable choices about functional aspects of designs. For now, practitioners should evaluate the various tests and advocate for the tests that most favor their clients. To the extent the foothold of Egyptian Goddess in claim construction can be challenged, returning functionality to a defense to validity would likely create more certainty. Doing so not only would reverse the reliance on dicta, but it would also be more efficient, it would inject more certainty into the process, and it also would avoid any element-by-element parsing on the design patent claim, which is something that is clearly not permitted.

1. BACKGROUND OF DESIGN PATENT FUNCTIONALITY

   As design patents protect "new and ornamental articles of manufacture," everybody seems to agree that "[a] design patent only protects the novel, ornamental features of the patented design."1 The flip side of protecting ornamentality is not protecting functionality, and everybody also seems to agree that at least some functional aspects of claimed designs are not protectable. Conversely, not every functional aspect is excluded from protection.

   This is because design patents only relate to articles of manufacture, and every article of manufacture has some function, for example, to dig, to hold liquid, to entertain, or to depict something else. So it can't be that any function precludes design patent protection. From there things begin to deviate. But let's pause for a moment and consider the context of functionality first.

2. THE TRADITIONAL CONTEXT FOR CONSIDERING FUNCTIONALITY

   The traditional context for considering design patent functionality was as an affirmative defense to infringement akin to invalidity based on, e.g., anticipation and obviousness. The US Patent and Trademark Office also has long rejected design patent applications for "lack of ornamentality."2

   When a functionality issue arises, the threshold question is how it should be handled. The traditional context for functionality was as an affirmative defense, premised upon the notion that a design is not patentable unless it is ornamental, and that a design is not ornamental if it is functional, in the same way that a utility invention is not patentable unless it is useful.

   An example of functionality being applied in the affirmative defense context is Best Lock v. Ilco.3 In Best Lock, the Federal Circuit affirmed the invalidation of US Des. Pat. No. D327636 titled "Portion of a Key Blade Blank" on the ground that "the key blade must be designed as shown in order to perform its intended function--to fit into its corresponding lock's keyway. An attempt to create a key blade with a different design would necessarily fail because no alternative blank key blade would fit the corresponding lock. In fact, Best Lock admitted that no other shaped key blade would fit into the corresponding keyway, and it presented no evidence to the contrary. Therefore, we find no clear error in the court's finding that the claimed key blade design was dictated solely by the key blade's function. Any aesthetic appeal of the key blade design shown in the '636 patent is the inevitable result of having a shape that is dictated solely by functional concerns.":

   Best Lock is the only Federal Circuit case ever to hold a design patent invalid on functionality grounds in the context of an affirmative defense. Indeed, as with other types of validity, the burden must be proved by clear and convincing evidence. Even then, it was a close call. Judge Newman, in dissent, stated that "[i]n holding that because the key must fit a keyway, the abstract design of the key profile is converted to one solely of function, the court creates an exception to design patent subject matter. An arbitrary design of a useful article is not statutorily excluded from Section 171 simply because in use it interacts with an article of complementary design."4

3. THE INTRODUCTION OF FUNCTIONALITY TO CLAIM CONSTRUCTION

   The utility patent infringement case of Markman v. Westview Instruments gave rise to claim construction and claim interpretation being a matter of law.5 Courts thereafter began to construe design patent claims.

   The first design patent case to apply Markman was Alan Tracy v. Trans Globe Imports.6 In Alan Tracy v. Trans Globe Imports, an unreported case, the Federal Circuit considered design patent drawings for broken lines showing indeterminate length to cover a U-shaped accused device, when the U-shape would have been in the article portion not shown:

   The Elmer case followed, where a litigant sought to exclude "functional" features of his design, apparently for the purpose of making his design patent more like the infringers.7 He wasn't allowed to do so—the court said that the features were claimed (i.e., they weren't in dotted lines) and thus they were part of the claim. So here the patentee was not allowed to exclude functional features from the design.

   In OddzOn Prods. v. Just Toys, the court stated that "Where a...