INTRODUCTION I. LANGUAGE MATTERS II. FUNCTIONALITY AND INFRINGEMENT A. Egyptian Goddess 1. Markman Claim Construction 2. The New Test for Infringement B. Claim Construction, Scope & Functionality C. Recent Significant Caselaw D. Industry Standard Utilitarian Features III. Functionality and Validity A. Development of "Ornamental" and "Functional" B. The Alternative Designs Test C. The Problem with the Alternative Designs Test CONCLUSION INTRODUCTION
The so-called doctrine of functionality arises in both design patent validity and infringement analyses. Broadly stated, the doctrine seeks to ensure that design patents do not monopolize that which should only be monopolized with utility patents. (1) In general, a utility patent protects utilitarian concepts embodied in a product, while a design patent protects only the specific visual embodiment of such concepts, i.e., the product's appearance. (2)
In establishing the scope of a design patent during Markman claim construction, (3) the functionality doctrine has proven to be unworkable--and is in fact unnecessary--as a precursor to determining infringement. In considering design patent validity, the so-called doctrine of functionality no longer plays any meaningful role.
On the infringement side, lower courts during Markman have rather consistently tried to "factor out" elements of the design that appear to be "functional," a meaningless exercise that if pursued to its natural end will wind up with a claim to nothing. (4) Recent decisions from the Federal Circuit have recognized this reality. (5) Concerns about claimed utilitarian features that may comprise an industry standard or an essential component are taken into account during normal infringement analysis.
On the validity side, the lower courts remain somewhat confused as to how to determine whether a claimed design is impermissibly "functional." Most courts lose sight of the fact that a design can both have utilitarian features and also have an overall appearance that is protectable. Currently, the go-to validity test for functionality is whether there are alternative designs to the one claimed in the design patent-in-suit that perform substantially the same function; if there are, the design patent is said not to monopolize that function. (6) Recent Federal Circuit cases affirm the primacy of the alternative designs test, but omit analysis of the critically important and outcome-determinative word: "function." (7) This Essay will explore ramifications of the definition of "function."
There have been significant developments since my earlier article (8) on design patent functionality. This Essay will discuss these developments, and present my perhaps startling conclusion: the doctrine of functionality, in both the validity and infringement contexts, has outlived its usefulness, and analyzing it is a waste of litigants' and judicial resources. (9)
One problem that runs throughout the cases is the confusing use of the words "ornamental" and "functional." The former is a requirement for a design to constitute statutory subject matter under 35 U.S.C. [section] 171, (10) while the latter is a creation of the caselaw. (11)
It is challenging to understand what these terms mean when using them to define each other. It is not helpful, for example, to say that a design that is functional is not ornamental, or that a design that is ornamental is not functional.
The word "functional" in particular is problematic because it has two meanings. It can mean either de facto functional, i.e., a design or element that performs a function, or de jure functional, i.e., a design that is impermissibly legally functional. (12) Courts tend to use both meanings interchangeably, which has led to quite a bit of confusion.
The same is true for the word "ornamental." Since it is a statutory requirement, it is not helpful to say things such as "the overall ornamental appearance of the claimed design," and similar phrases that are frequently found in the caselaw. (13)
In an attempt to address these difficulties, wherever possible in this Essay the word "appearance" will be used rather than "ornamental" in instances other than where de jure ornamental is meant. Likewise, the word "utilitarian" shall be used rather than "functional" to connote de facto functional features in instances other than where de jure functional is meant. Of course, no quotes from the caselaw will be altered.
FUNCTIONALITY AND INFRINGEMENT
The seminal 2008 Egyptian Goddess decision (14) had a profound effect on the test for design patent infringement, particularly on how the scope of a design patent claim is determined during Markman claim construction, as well as on the subsequent comparison of the construed design patent claim to the accused product when conducting the test for infringement.
Markman Claim Construction
One of the questions presented for en banc review in the Egyptian Goddess case was whether claim construction should apply to design patents and, if so, what role it should play in the infringement analysis. (15)
Up until the time of that case, lower courts routinely construed design patent claims by drafting extensive verbal descriptions of what was shown in the design patent drawings. (16) This greatly advantaged accused infringers. (17) The Federal Circuit in Egyptian Goddess effectively put the practice to rest, stating: "Given the recognized difficulties entailed in trying to describe a design in words, the preferable course ordinarily will be for a district court not to attempt to 'construe' a design patent claim by providing a detailed verbal description of the claimed design." (18)
At the same time, the court, in discussing claim construction for a design patent, stated that "a trial court can usefully guide the finder of fact by addressing a number of ... issues that bear on the scope of the claim. Those include ... distinguishing between those features of the claimed design that are ornamental and those that are purely functional." (19) Unfortunately, there was no guidance as to how this should be done.
The New Test for Infringement
In Egyptian Goddess, the court also dispensed with the point of novelty infringement test, which had been another refuge for accused infringers. (20) The court found that the sole test for determining whether a design patent has been infringed is the "ordinary observer" test of Gorham Co. v. White (21):
[I]f, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other. (22) At the same time, the court also tweaked the ordinary observer test: "[T]he ordinary observer is deemed to view the differences between the patented design and the accused product in the context of the prior art," (23)
Thus, a comparison of the claimed design, the accused product, and the prior art became central to design patent infringement determinations.
The court provided the following guidelines on bow to apply the new Egyptian Goddess infringement test (i.e., how to take the prior art into account). These guidelines have an indirect bearing on the doctrine of functionality, as will be discussed below. (24)
*"[W]hen the claimed design is close to the prior art designs, small differences between the accused design and the claimed design are likely to be important to the eye of the hypothetical ordinary observer." (25)
* "If the accused design has copied a particular feature of the claimed design that departs conspicuously from the prior art, the accused design is naturally more likely to be regarded as deceptively similar to the claimed design, and thus infringing." (26)
* "If the claimed design consists of a combination of old features that creates an appearance deceptively similar to the accused design, even to an observer familiar with similar prior art designs, a finding of infringement would be justified." (27)
* "Where there are many examples of similar prior art designs ... , differences between the claimed and accused designs that might not be noticeable in the abstract can become significant to the hypothetical ordinary observer who is conversant with the prior art." (28)
* "In some instances, the claimed design and the accused design will be sufficiently distinct that it will be clear without more that the patentee has not met its burden of proving the two designs would appear 'substantially the same' to the ordinary observer...." (29)
Claim Construction, Scope, and Functionality
As explored in my earlier paper, the 1992 decision of Read Corp. v. Portec, Inc., is perhaps the earliest case to use the utilitarian features of a patented design as a factor in analyzing design patent infringement. (30) In discussing the spoon and fork handles of Gorham Co. v. White, the Head court stated:
[A] 11 elements forming the claimed design were ornamental. Where this is not the case, that is, [when] a design is composed of functional as well as ornamental features, to prove infringement a patent owner must establish that an ordinary person would be deceived by reason of the common features in the claimed and accused designs which are ornamental. (31) The Read case created the misbegotten notion that non-utilitarian and utilitarian features of a patented design need to be identified so that the subsequent infringement comparison occurs only between the appearance of non-utilitarian features. (32)
This parsing analysis was carried forward through several cases including, as noted above, the Egyptian Goddess case. (33)
The nadir of this thinking occurred in Richardson v. Stanley Works, Inc., involving a design patent on a construction tool combining the utilitarian features of a hammerhead, crowbar, jaw, and handle. (34) The Federal Circuit made the...