Technologies, LLC v. St. John Companies, Inc.,
no. 06-1169, 2006 U.S. App. LEXIS 28468, ___ F.3d ___ (Fed. Cir. 2006) involved the question of functionality
of a patented design. In this ruling, the Court vacated a preliminary
injunction on two design patents for a sheet of medical labels. Both
designs include 11 rows of labels, each row having three labels.
first nine rows have three labels of equal size. That size is consistent
with a standard medical chart label. The 10th row has three
smaller labels which correspond to the size of a pediatric waistband,
and the 11th row has labels for an adult patient wristband.
The two design patents differ in that the border design is claimed in
one patent but not the other. Both patents depend from a utility patent
application. At a hearing before the district court, one of the joint
inventors testified that they settled upon the patented configuration
from among others because this one was the most aesthetically pleasing.
there are "a multitude" of ways to arrange different sizes of labels
on an 8.5 x 11 inch sheet, the district court rejected St. John's
argument that the patented designs were a mere byproduct of functional
considerations and were not primarily ornamental.
Federal Circuit reaffirmed the rule that if a patented design is primarily
functional rather than ornamental, the patent is invalid. A design of
a useful article is deemed functional when its appearance is dictated
by the use or purpose of the article. This determination ultimately
rests on analyzing the overall appearance. Among the several factors
identified in earlier precedents is the question of whether alternative
designs would adversely affect the utility of the specified article.
The presence of alternative designs may or may not assist in determining
whether the design can overcome a functionality challenge. The Court
has held that when there are several ways to achieve the function, then
the design of the article is more likely to serve a primarily ornamental
purpose. However, if the alternative designs would adversely affect
the utility of the article, then they are not really "alternatives"
within the meaning of the Court's precedents.
the district court failed to explain whether the alternative designs
would adversely affect the utility of the medical label sheet. The evidence
in the case explained the functional advantage of the particular arrangement
of labels in the design and further explained that alternative designs
would indeed adversely affect utility. This evidence was sufficient
to raise a substantial question of invalidity according to the Court
of Appeals. The patentee offered no evidence refuting the functionality
evidence. Accordingly, the evidence indicated clear error by the district
court in concluding that the patentee had established likely success
on the merits. Hence, the Court vacated the preliminary injunction.
D. Manzo, a member of the N.Y. and Ill. Bars, is a senior partner with
COOK ALEX in Chicago. He is the creator and editor-in-chief of Claim
Construction in the Federal Circuit (West Legalworks, Nov. 2006)
which he co-authors with other members of the Litigation Committee of
the Intellectual Property Law Ass'n. of Chicago (IPLAC). He may be
contacted at email@example.com or 312-236-8500.
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