"Design Patents: Federal Circuit Vacates Preliminary = Injunction for Functionality of the Design" - an alert from the = Association of Patent Law Firms

Issue 06/62 |=20 November 20, 2006

"Design = Patents: Federal=20 Circuit Vacates Preliminary Injunction for Functionality of = the=20 Design"

PHG Technologies, LLC v. St. John Companies, Inc., = no.=20 06-1169, 2006 U.S. App. LEXIS 28468, ___ F.3d ___ (Fed. Cir. = 2006)=20 involved the question of functionality of a patented design. = In this=20 ruling, the Court vacated a preliminary injunction on two = design=20 patents for a sheet of medical labels. Both designs include = 11 rows=20 of labels, each row having three labels.

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The first nine rows have three labels of equal size. That = size is=20 consistent with a standard medical chart label. The = 10^th=20 row has three smaller labels which correspond to the size of = a=20 pediatric waistband, and the 11^th row has labels = for an=20 adult patient wristband. The two design patents differ in = that the=20 border design is claimed in one patent but not the other. = Both=20 patents depend from a utility patent application. At a = hearing=20 before the district court, one of the joint inventors = testified that=20 they settled upon the patented configuration from among = others=20 because this one was the most aesthetically pleasing.

Because there are "a multitude" of ways to arrange = different=20 sizes of labels on an 8.5 x 11 inch sheet, the district = court=20 rejected St. John's argument that the patented designs were = a mere=20 byproduct of functional considerations and were not = primarily=20 ornamental.

The Federal Circuit reaffirmed the rule that if a = patented design=20 is primarily functional rather than ornamental, the patent = is=20 invalid. A design of a useful article is deemed functional = when its=20 appearance is dictated by the use or purpose of the article. = This=20 determination ultimately rests on analyzing the overall = appearance.=20 Among the several factors identified in earlier precedents = is the=20 question of whether alternative designs would adversely = affect the=20 utility of the specified article. The presence of = alternative=20 designs may or may not assist in determining whether the = design can=20 overcome a functionality challenge. The Court has held that = when=20 there are several ways to achieve the function, then the = design of=20 the article is more likely to serve a primarily ornamental = purpose.=20 However, if the alternative designs would adversely affect = the=20 utility of the article, then they are not really = "alternatives"=20 within the meaning of the Court's precedents.

Here, the district court failed to explain whether the=20 alternative designs would adversely affect the utility of = the=20 medical label sheet. The evidence in the case explained the=20 functional advantage of the particular arrangement of labels = in the=20 design and further explained that alternative designs would = indeed=20 adversely affect utility. This evidence was sufficient to = raise a=20 substantial question of invalidity according to the Court of = Appeals. The patentee offered no evidence refuting the = functionality=20 evidence. Accordingly, the evidence indicated clear error by = the=20 district court in concluding that the patentee had = established=20 likely success on the merits. Hence, the Court = vacated the=20 preliminary injunction.

Edward D. Manzo, a member of the N.Y. and Ill. Bars, is a = senior=20 partner with COOK ALEX in Chicago. He is the creator and=20 editor-in-chief of Claim Construction in the Federal = Circuit=20 (West Legalworks, Nov. 2006) which he co-authors with other = members=20 of the Litigation Committee of the Intellectual Property Law = Ass'n.=20 of Chicago (IPLAC). He may be contacted at emanzo@cookalex.com = or=20 312-236-8500.

The information contained in this = email is=20 provided for informational purposes only and does not = represent=20 legal advice. Neither the APLF nor the author intends to = create an=20 attorney client relationship by providing this information = to you=20 through this message.

APLF - PO Box 7418 - = Washington,=20 DC - 20044-7418