In a recent decision, the Eastern District of Texas has clarified the proper role of functionality in claim construction for design patents. By statute, design patents must be directed to “ornamental designs for an article of manufacture.” As a result, courts have struggled with how and when functional aspects of a design should be considered when construing a patent claim. The Federal Circuit addressed this issue earlier this year in Richardson v. Stanley Works, 2010 WL 774334 (Fed. Cir. 2010), in whch it appeared to direct district courts to factor out the functional aspects of designs during claim construction.
The claim at issue in Good Sportsman v. Li & Fung Limited, 2010 WL 2640385 (E.D. Tex. 2010), was for a clip-on book light. Plaintiff Good Sportsman proposed the claim construction of “an ornamental design for a clip light as shown in Figure 1 of the picture.” Defendant Li & Fung Limited sought a more limiting construction based on Richardson, which expressly discounted “functional” elements of the design, such as the design’s clip, headlamp, on-off switch, and flexible wire. Ultimately, the court adopted Good Sportsman’s approach, holding that the claimed design is best represented by the illustration contained in the patent and refused to provide limiting language regarding functionality in its claim construction.
In doing so, the court found that both plaintiff and defendant misread the Federal Circuit’s opinion in Richardson by agreeing that functional elements be wholly eliminated from a claimed design during claim construction resulting in what plaintiff referred to as a “point of ornamentality” approach. Instead, the court pointed out that the Federal Circuit in Richardson merely affirmed the claim construction of the lower court, observing that function dictated the configuration of the tool. According to the court, nothing in Richardson compelled them to wholly “factor out” any element that serves a functional purpose.
Instead, the court explained that Richardson should be applied to determine whether “the claimed configuration is the only configuration for a clip on book light” (emphasis added). That is, whether the relative location of the elements is “necessarily dictated” by the function of the article. Further, the court noted that even if the configuration itself is dictated by the functional purpose of the design, the court would still not eliminate these elements from the patent, because each element may have ornamental qualities.
Citing the Federal Circuit’s 1993 decision in L.A. Gear Inc. v. Thom McAn Shoe Co., 988 F.2d 1117 (Fed. Cir. 1993), the court asserted that an article of manufacture must necessarily serve a utilitarian purpose and that the utility of individual elements is irrelevant to the question of functionality. In particular, the court noted that “while the identified components may have functions, they need not be excluded simply because they perform functions.” For example, the clip of Good Sportsman’s design need not be excluded because it fulfills the clipping function. However, where the overall design and configuration is dictated by function, those aspects cannot be the subject of a valid patent.
This opinion should serve as a welcome breath of fresh air for design patent owners after the Federal Circuit’s opinion in Richardson, which appeared to encourage district courts to factor out functional aspects of designs during claim construction. By acknowledging, but refusing to consider, the functionality of each element of Good Sportsman’s design, the Eastern District of Texas has appeared to reaffirm that the proper role for functionality in design patents is in determining patent validity, and not in claim construction, where limiting language may place undue emphasis on particular features of the design. This is certainly consistent with the 2009 decision in Egyptian Goddess, Inc. v. Swisa et al. 543 F.3d 665 (Fed. Cir. 2008) where the Federal Circuit rejected the “point of novelty” approach to claim construction.