In Sport Dimension, Inc. v. The Coleman Company, the Federal Circuit rejected the district court’s claim construction of the subject design patent claims for improperly eliminating structural features, even though the eliminated structure served a functional purpose.
Declaratory judgment defendant Coleman Company owns U.S. Patent No. D623,714, which is directed to the ornamental design for a personal flotation device. Plaintiff Sport Dimension filed a declaratory judgment action seeking a judgment that its personal flotation device did not infringe Coleman’s design patent. The Central District of California issued the following claim construction: “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.” After the court issued its claim construction order, the parties stipulated to a judgment of non-infringement, and Coleman appealed.
Design patents protect ornamental designs of objects. The design may include functional elements, but a design patent cannot claim a purely functional design. While a design patent’s claim is often better represented by illustrations than words, words may guide the fact-finder to distinguish between elements that are ornamental and those that are purely functional. A principle of design patent claim construction is that the construction should not eliminate an element from the claimed design unless it is purely functional.
In this case, the Federal Circuit agreed with the district court that the armbands and tapered torso elements serve a functional purpose, but found that it was an error to eliminate these elements from the claim entirely, because design patents protect the overall ornamentation of the design, not an aggregation of separable elements. The court recognized that the proper claim scope would be narrow, but held that the construction must allow a fact-finder to consider how the functional elements contribute to the design’s overall ornamentation.
Sport Dimension, Inc. v. The Coleman Company, Inc., Case No. 2015-1553 (Fed. Cir. April 19, 2016).