By Peter Reap, J.D., LL.M.
The federal district court in Los Angeles erred in construing Coleman Company’s design patent for a personal flotation device to exclude the device’s two armbands and side torso tapering, the U.S. Court of Appeals for the Federal Circuit has determined (Sport Dimension, Inc. v. The Coleman Company, Inc., April 19, 2016, Stoll, K.). However, the court did not err in excluding the testimony of Coleman’s expert. The lower court’s judgment of noninfringement was vacated and the dispute remanded for further proceedings.
Outdoor sporting equipment company Coleman owns United States Design Patent No. D623,714 (“D’714 patent”). It claims “[t]he ornamental design for a personal flotation device.” The D’714 patent generally discloses a personal flotation device with two arm bands connected to a torso piece. The torso piece is flat on its back and tapers toward a connecting strap on its sides.
Sport Dimension is a sports equipment and apparel company that sells water-sports-related equipment, including its Body Glove® line of personal flotation devices. Sport Dimension’s Body Glove® Model 325 is the accused device.
Sport Dimension filed a declaratory judgment action in the Central District of California requesting judgment that it did not infringe the D’714 patent and that the patent is invalid.
The district court excluded the testimony of Coleman’s expert, Peter Bressler. Sport Dimension had argued that Mr. Bressler was not qualified to testify on the functionality of the D’714 patent’s design, and the court agreed.
The district court also adopted Sport Dimension’s proposed claim construction, as follows:
The ornamental design for a personal flotation device, as shown and described in Figures 1–8, except the left and right armband, and the side torso tapering, which are functional and not ornamental.
Notably, this construction eliminates several features of Coleman’s claimed design, specifically the armbands and the side torso tapering. Coleman timely appealed both of these rulings by the district court.
Claim construction. Words cannot easily describe ornamental designs, the appellate court noted. Even so, a district court may use claim construction to help guide the fact finder through issues that bear on claim scope.
A design patent cannot claim a purely functional design—a design patent is invalid if its overall appearance is dictated by its function, the court observed. But as long as the design is not primarily functional, the design claim is not invalid, even if certain elements have functional purposes.
In past cases, the Federal Circuit construed design patent claims so as to assist a finder of fact in distinguishing between functional and ornamental features. But in no case did it entirely eliminate a structural element from the claimed ornamental design, even though that element also served a functional purpose.
The district court’s construction in this case conflicted with that principle of design patent claim construction because it eliminated whole aspects of the claimed design, according to the Federal Circuit. In its construction, the district court improperly excluded the left and right armband and the torso side tapering.
As the district court correctly pointed out, Coleman’s armbands and tapered side torso designs meet several of the factors announced in PHG Technologies, LLC v. St. John Cos., for determining whether a design claim was dictated by function, including:
whether the protected design represents the best design; whether alternative designs would adversely affect the utility of the specified article; whether there are any concomitant utility patents; whether the advertising touts particular features of the design as having specific utility; and whether there are any elements in the design or an overall appearance clearly not dictated by function.
469 F.3d 1361, 1366 (Fed. Cir. 2006).
Applied here, the PHG factors indicate that the design patent’s armbands and side torso tapering serve a functional purpose. For example, the district court examined alternative personal flotation device designs and concluded that Coleman’s armband and torso tapering represented the best available design for a personal flotation device. The appellate court did not disagree with these findings. Nor did it disagree with the district court’s conclusion that the armbands and tapered side torso serve a functional purpose.
Nonetheless, the Federal Circuit rejected the district court’s ultimate claim construction. The district court eliminated the armbands and side torso tapering from the claim entirely, so its construction was contrary to law. By eliminating structural elements from the claim, the district court improperly converted the claim scope of the design patent from one that covers the overall ornamentation to one that covers individual elements. Here, the district court erred by completely removing the armbands and side torso tapering from its construction.
The appellate court looked to the overall design of Coleman’s personal flotation device to determine the proper claim construction. The design includes the appearance of three interconnected rectangles, and it is minimalist, with little ornamentation. And the design includes the shape of the armbands and side torso tapering, to the extent that they contribute to the overall ornamentation of the design.
Therefore, the district court’s claim construction was rejected, the stipulated judgment of noninfringement was vacated, and the case remanded for consideration of infringement and, if necessary, validity consistent with the proper claim construction. In turn, nothing in this opinion should foreclose any pre-trial resolution of the infringement issue that is otherwise substantively and procedurally appropriate, the court noted.
Expert witness. The district court here excluded Mr. Bressler, an industrial design consultant with four decades of industry experience, because he had “no experience whatsoever in the field of [personal flotation devices].”
The record supported the district court’s conclusion, according to the Federal Circuit. Mr. Bressler, when asked to evaluate Sport Dimension’s expert’s testimony on one aspect of the device’s function, stated: “I’m not an expert on personal flotation devices.” His proposal for alternative armband designs, by Mr. Bressler’s admission, was based on his “imagination.” And he further admitted that he had no work experience with wearable buoyancy devices before serving as an expert.
The case is No. 2015-1553.
Attorneys: Yuri Mikulka (Manatt, Phelps & Phillips, LLP) for Sport Dimension, Inc. Michael R. Annis (Husch Blackwell LLP) for The Coleman Company, Inc.
Companies: Sport Dimension, Inc.; The Coleman Company, Inc.
MainStory: TopStory Patent FedCirNews
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