Posts Tagged: "functionality"

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential decision affirming the grant of a narrowly-tailored preliminary injunction to SoClean, Inc., a medical device company that makes CPAP machines, based on trademark infringement claims against Sunset Healthcare Solutions, Inc. SoClean alleged in 2021 that Sunset infringed its U.S. Trademark Registration No. 6,080,195. The registration covers the configuration of replacement filters for its sanitizing devices.

On June 22, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed a decision by the United States District Court for the Southern District of California granting summary judgment in favor of Golden Eye Media USA Inc (GEM) over Evo Lifestyle Products Limited, formerly known as Trolley Bags UK Ltd (TB UK) after holding TB UK’s U.S. Design Patent No. D779,828 (‘828 patent) invalid. The district court held the ‘828 patent to be invalid for reasons of functionality and obviousness.

Companies trying to compete for supermarket shelf space and consumer attention frequently turn to packaging and product designs that will stand out. If the product succeeds, one unfortunate side effect for the brand owner is the market can become flooded with “me too” products that attempt to ride on the coattails of that success. How do owners of unique products protect themselves? Trade dress protection is one legal tool that companies should consider.

Last week, the United States Court of Appeals for the Third Circuit affirmed a decision of the district court that granted summary judgment to Lotte International America Corp. because Ezaki Glico’s cookie design was functional and not entitled to trade dress protection in Kaisha v. Lotte International America Corp. Noting that trade dress protection does not extend to functional or useful features, and there was no dispute that Pocky’s design was useful, the Third Circuit explained that the trade dress was invalid and “[t]hat’s the way the cookie crumbles.”

On June 25, the U.S. Court of Appeals for the Ninth Circuit issued a decision in Blumenthal Distributing v. Herman Miller, Inc. in which the appellate court reversed some parts of a Central District of California ruling on trade dress and trademark infringement claims related to office chairs sold by Herman Miller, and affirmed others. The Ninth Circuit’s decision discusses at length the issue of functionality, an area of trademark law which is undefined by statute and is notable for overturning parts of the district court decision because of an erroneous jury instruction based upon the Ninth Circuit’s own model rules. The decision also includes a partial dissent by Circuit Judge Michelle Friedland on the issue of dilution, with Judge Friedland arguing that Herman Miller hadn’t proven the requisite fame to prevail on its trademark dilution claims.

On June 12, the U.S. Court of Appeals for the Seventh Circuit decided Bodum USA, Inc. v. A Top New Casting Inc., No. 18-3030, 2019 (7th Cir. June 12, 2019). The case was based on Bodum’s allegation that A Top infringed Bodum’s unregistered trade dress in its Chambord® French press coffee maker design and squarely addressed the doctrine of “functionality” of trade dress. The court addressed two important issues related to functionality: (1) what type of evidence is necessary to prove functionality of a particular design and (2) under what circumstances are utility patents relevant to that analysis?

British automaker Jaguar Land Rover (JLR) has been engaged in a multi-jurisdiction battle against Chinese automaker Jiangling Motors (Jiangling) over JLR’s assertions that Jiangling copied distinctive design features of JLR’s RANGE ROVER Evoque (EVOQUE) in the LANDWIND X7 vehicle. JLR previously successfully took action in Brazil and the European Union, resulting in injunctions against the sale of Jiangling’s LANDWIND vehicle in those jurisdictions. JLR’s latest efforts has yielded additional success against Jiangling’s sale and production of the LANDWIND X7 in China, Jiangling’s home base. On March 13, the Beijing Chaoyang District Court in China found Jiangling liable for unfair competition in connection with the sale and manufacturing of the LANDWIND X7, finding that certain design features of the LANDWIND vehicle are “essentially identical” to JLR’s distinctive design features for the EVOQUE. This decision is the first case under China’s 2017 Anti-Unfair Competition Law to find in favor of a foreign company in the auto industry.

Because it is clear when infringement occurs, and the scope of the claims is reasonably certain, the Court reversed the judgment of invalidity due to indefiniteness… Claims having functional elements are not indefinite, as encompassing both an apparatus and a method, if they make clear whether infringement occurs upon creating the apparatus or upon its use. A claim with functional language clearly tied to a structure that defines its capabilities is an apparatus claim; such functional language does not make the claim indefinite by also claiming a method of use.

One of the biggest mistakes I see inventors make is they spend too much time talking about what the invention does and very little time explaining what the invention is and how it operates to deliver the functionality being described. Many inventors also make the mistake of only very generally describing their invention. If that is you then you are already light on specifics, which is extremely dangerous in and of itself. But the other problem I want to discuss is the flip side of the coin. It is important to be specific, but not just specific.

Functional claim language is increasingly being used by practitioners to capture the metes and bounds of an invention, especially in computer-implemented inventions. Sometimes using functional language in a claim limitation is unavoidable. Functional language does not, in and of itself, render a claim improper. However, as recently experienced in Williamson v. Citrix (en banc) and Robert Bosch, using functional language carries a significant risk of having the claim invalidated as indefinite following a determination that the claim invokes § 112(f) even when the patentee does not intend to have the claim treated under § 112(f).