Functional elements of a design patent claim cannot be separated and eliminated from construction
Sport Dimension, Inc. v. The Coleman Company, Inc., 2015-1553 (Fed. Cir. Apr. 19, 2016)
The patentee claimed infringement of its design patent for a personal flotation device. The parties stipulated to a judgment based on the court’s claim construction. On appeal, the Federal Circuit rejected the court’s claim construction, vacated the stipulated judgment, and remanded.
The patentee’s design patent was directed to a personal flotation device with two arm bands connected to a torso piece. Notably, the claimed torso piece is flat on its back and tapers toward a connecting strap on its sides. The accused product’s torso piece, however, was not tapered—it had two straps that extended up to form a vest. The district court found the patent’s arm bands and tapered torso functional, and thus eliminated those elements from its construction of the design patent claim.
After applying the PHG Technologies factors for functional design,the Federal Circuit agreed with the court that the tapered torso and armbands were functional and that it is appropriate to distinguish between functional and ornamental features when interpreting a design claim. The Federal Circuit did not agree with the court’s wholesale elimination of the functional elements of the claim, however, holding that the court erred in separating out and eliminating those features because “design patents protect the overall ornamentation of a design, not an aggregation of separable elements.” On remand, the Federal Circuit instructed that the court should focus on the “elements [that] contribute to the design’s overall ornamentation” but conceded that, because of the functional elements and minimal ornamentation, the patentee’s design claim was “narrow.”