Federal Circuit Reinforces Tests for Functionality and Obviousness in Design Patents

September 11, 2013

Eric L. Amundsen

What This Means to You

  • Consider design patents for articles or portions of articles where the ornamental aspects are not dictated by function.

Overview

In High Point Design LLC v. Buyer’s Direct, Inc., the U.S. Court of Appeals for the Federal Circuit (Federal Circuit) reinforced that a design patent can be invalid if the claimed design is primarily functional. However, the mere fact that a claimed design is part of a functional feature or article does not invalidate the patent.

In addition, the court made clear that the test for obviousness in a design patent is whether the claimed design would have been obvious to a designer of ordinary skill who designs articles of the type involved.

Case Background

Buyer’s Direct received a design patent for a slipper. After becoming aware of an allegedly infringing slipper being sold by High Point, Buyer’s Direct sent a cease and desist letter, and High Point filed suit, alleging non-infringement and invalidity of the patent. At summary judgment, the district court found the design patent invalid for two reasons: it was primarily functional instead of primarily ornamental, and it was obvious over a combination of two prior art references.

On appeal to the Federal Circuit, Buyer’s Direct challenged the district court’s invalidity findings.

Decision Analysis

The Federal Circuit concluded that the district court had erred in its approach to the question of functionality. Instead of determining whether the design’s primary features can perform functions, the district court should have assessed whether the claimed design was primarily functional or primarily ornamental. The Federal Circuit cited its precedent in stating that a distinction exists between the functionality of an article and the functionality of the particular design of the article. In fact, a design patent can only be granted on a utilitarian article of manufacture, so by definition, the article will have a function. The Federal Circuit reinforced that a design is entirely functional—without ornamental or decorative aspect—when the design is dictated by functional considerations, listing five factors that may help determine whether this is the case.

The Federal Circuit also reversed the district court’s finding of obviousness, and held that for design patents, obviousness is viewed from the standpoint of a designer of ordinary skill who designs articles of the type involved, as opposed to from the standpoint of an ordinary observer.

The Federal Circuit reaffirmed that obviousness of a design patent must be determined by a two-part analysis. First, one must find a single reference having design characteristics which are basically the same as the claimed design. Second, other references may be used to modify the single reference to create a design that has the same overall visual appearance as the claimed design.

In a separate case, a design patent holder has filed a Petition for Certiorari in the U.S. Supreme Court arguing that a certain implementation of this design patent-specific obviousness analysis does not comport with the Supreme Court’s KSR Int’l Co. v. Teleflex, Inc. holding.

Takeaways

The mere fact that a design patent involves functional features or a functional article does not render the patent invalid. Instead, the claimed design must be dictated by functional considerations to be invalid for functionality. Accordingly, design patents should be considered whenever there is an ornamental aspect to an article or a feature of an article.