Practitioners working in the area of design patent litigation should take note of the Federal Circuit’s recent decision in , No. 2012-1455 (Sept. 11, 2013), which provides guidance and instructions concerning design patent invalidity that are of the utmost importance to anyone seeking to invalidate or assert a design patent. The decision provides an in-depth tutorial on the standards to be used for invalidity based on obviousness or invalidity based on functionality.
The Federal Circuit began by noting that the standard for determining obviousness of a design patent is an “ordinary designer” standard rather than an “ordinary observer” standard. The Court explained that the ultimate inquiry in an obviousness analysis is whether the claimed design would have been obvious to a “designer of ordinary skill” who designs articles of the type involved. The Federal Circuit found, therefore, that the district court erred when it applied an “ordinary observer” standard to assess the obviousness of the design patent at issue.
The Federal Circuit then addressed the issue of whether an expert declaration should be considered with respect to the issue of obviousness. The Court explained that while an expert’s opinion on the legal conclusion of obviousness is neither necessary nor controlling, an expert’s opinion may still be relevant to the factual aspects of the analysis leading to that legal conclusion. The Court cited precedent indicating that an expert’s testimony may be helpful to explain the technology, the scope and content of the prior art, the differences between the prior art and the invention, and the level of skill in the art. The Federal Circuit reasoned, therefore, that the district court erred when it categorically disregarded a purported expert declaration on the issue of obviousness.
Turning to the test for obviousness, the Federal Circuit explained that when assessing the potential obviousness of a design patent, a finder of fact employs two distinct steps: first, one must find a single primary prior art reference with design characteristics that are basically the same as the claimed design; and second, once the primary reference is found, other references may be used to modify it to create a design that has the same overall visual appearance as the claimed design. Under the first step, a court must both (i) discern the correct visual impression created by the patented design as a whole; and (ii) determine whether there is a single reference that creates “basically the same” visual impression.
As to the first part of the first step – “discerning the correct visual impression created by the patented design as a whole” – the Federal Circuit stated that the district court erred by failing to translate the design of the patent into a “verbal description.” The Court pointed out that the closest to the necessary description was the district court’s comment characterizing the design in the patent as “slippers with an opening for a foot that can contain a fuzzy (fleece) lining and have a smooth outer surface.” In the Federal Circuit’s estimation, however, that description represented “too high a level of abstraction” by failing to focus on the distinctive visual appearances of the reference and the claimed design. On remand, the district court was instructed to add sufficient detail to its verbal description of the claimed design to evoke a visual image consonant with that design.
As to the second part of the first step – “determining whether there is a single reference that creates “basically the same” visual impression” – the Federal Circuit explained that the district court erred by failing to provide its reasoning. The Federal Circuit stated that on remand, the district court should do a “side-by-side comparison” of the two designs to determine if they create the same visual impression. The Federal Circuit then theorized that after properly completing the first and second parts of the first step of the analysis, the district court will be in a better position to assess whether or not the primary reference, modified by the secondary references, provide a design with the “same overall visual appearance as the claimed design,” as required under the second step.
Regarding the issue of secondary considerations of non-obviousness, the Federal Circuit cited precedent requiring that evidence rising out of the so-called “secondary considerations” must always, when present, be considered en route to a determination of obviousness. In this case, the Federal Circuit remarked that there were allegations of both commercial success of the claimed design as well as copying. Thus, the Court concluded that the district court erred when it failed to address the purported secondary considerations of non-obviousness.
On the issue of invalidity due to functionality, the Federal Circuit stated that a design patent can be declared invalid if the claimed design is “primarily functional” rather than “primarily ornamental,” i.e., if the claimed design is “dictated by the utilitarian purpose of the article.” The Court provided various factors to help determine whether a claimed design, as a whole, is “dictated by” functional considerations, including (1) whether the protected design represents the best design; (2) whether alternative designs would adversely affect the utility of the specified article; (3) whether there are any concomitant utility patents; (4) whether the advertising touts particular features of the design as having specific utility; and (5) whether there are any elements in the design or an overall appearance clearly not dictated by function.
The Federal Circuit noted that instead of assessing whether the claimed design was “primarily functional” or “primarily ornamental” as is required by the standard, the district court erred by determining whether the design’s “primary features” can perform functions. The Court explained that the “function of the article” itself must not be confused with the “functionality of the design” of the article. Because the district court applied the incorrect standard, the Federal Circuit reversed the district court’s ruling of invalidity by reason of functionality.