In an unusual patent claim construction order on March 2nd, a federal district court held a design patent invalid for functionality. See Order here. This is a relatively rare outcome because claim construction in design patent cases is often benign – the court merely holds that the scope of the patent’s claim is as shown in the figures in the patent.  However, in Top-Co Inc. v. Summit Energy Services, Inc., the court found the design patent at issue was devoid of ornamental features.  The patent claimed a dual diameter and rotating centralizer, used in making a well borehole (figure below).

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Drafts of the Top-Co’s marketing materials for the patented product undermined the company’s position about the ornamental nature of the claimed features by highlighting the physical benefits of the centralizer’s design.  Top-Co also admitted to the utility of certain design features.  Particularly in light of this evidence, the court made quick work of testimony on behalf of Top-Co that the design was chosen to aesthetically appeal to customers, stating “to suggest to the Court that a product’s design whose entire life use is underground was motivated predominantly by how it looks at a trade show strains credulity.”

This case is a cautionary tale to those seeking to enforce design rights that there are limitations to a court’s willingness to rely on a patentee’s claims related to ornamentality, particularly when this position is based only on testimony as to non-functionality.  It is worth noting the addition of a trade dress claim in this case would not likely have affected the result because design patent protection is generally more forgiving of co-existing functionality aspects as compared with trade dress protection.  However, for those desiring to protect product design for truly ornamental features, pairing design patent and trade dress protection can be effective in obtaining more robust protection for important designs.

Design protection can exist concurrently with trade dress protection and is often a way to protect a design before a product has been introduced into the market, or when obtaining a trademark registration for trade dress may be difficult or impossible.  Though both protect the ornamental, non-functional features of a product design, the requirements for obtaining registered protection are different, and the scope of protection afforded to each is distinct. For example, to be protected, trade dress requires proof of non-functionality, use in commerce, and a showing the design either is inherently distinctive or has acquired distinctiveness.  In contrast, a design patent requires neither a showing of acquired distinctiveness nor use in commerce.  Further, while both trade dress and design patents must not be directed to utilitarian aspects of a product, they differ in their tolerance for functionality, as hinted in the appellate decision in Apple v. Samsung last May.  In Apple, the Court of Appeals for the Federal Circuit reversed the jury’s verdict of trade dress dilution because the alleged trade dress was functional, while it left the design patent infringement verdict intact even though Apple’s design patents were directed to the same features as those of its purported trade dress.

Another distinction between the two types of protection lies in the tests for infringement.  Trade dress infringement hinges on whether the accused design creates a “likelihood of confusion” as to source, sponsorship, or affiliation.  The test for design patent infringement is different, involving a side-by-side comparison to determine whether an ordinary observer, having knowledge of the prior art, would view the patented design and accused design as “substantially the same.”  Given this seemingly narrower comparison, it may be more difficult to establish infringement of a design patent.

While design patents are found invalid for being directed to primarily functional features on occasion, this outcome is even rarer during claim construction.  Whether this case starts a new trend in design patent cases to render an asserted design patent invalid at the claim construction stage, or whether Top-Co will choose to appeal this judgment, remains to be seen.