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Public Display May Not Be Public Use of Furniture Designs

October 20, 2004

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Last Month at the Federal Circuit - November/December 2004

Judges: Linn (author), Mayer, and Michel

In Bernhardt L.L.C. v. Collezione Europa USA, Inc., No. 04-1024 (Fed. Cir. Oct. 20, 2004), the Federal Circuit vacated a district court’s decision that six design patents were not infringed and that four of the patents were invalid for prior public use.

Bernhardt L.L.C. (“Bernhardt”) owns the six design patents at issue (collectively “the patents-insuit”). Collezione Europa USA, Inc. (“Collezione”) imports and sells furniture. Bernhardt participates in the International Home Furnishing Market (“Market”) held in October and April of each year in North Carolina. One month prior to the Market event, Bernhardt conducts a “Premarket” exposition (“Premarket”), at which it showcases its new designs to key customers and industry newspaper representatives. To be admitted to Premarket, an attendee must have identification, which is checked in the lobby of the exhibition building. Attendees are escorted by security personnel but are not required to sign confidentiality agreements. Attendees may not take pictures of any of the designs. Bernhardt also showcases its new designs in its showroom in the form of mock-ups, prototypes, and drawings. The designs that are subject to the patents-in-suit, with some modifications, were adopted into Bernhardt’s Coronado collection, which was showcased at the September 1999 Premarket and then introduced to the public at the following Market.

Following a trial, the district court held that the designs covered by four of the patents-in-suit had been placed in public use by Bernhardt at the September 1999 Premarket exhibition, rendering them invalid. The district court also held all six patents to be noninfringed.

The district court had found that although some changes may have been made to the furniture designs exhibited at the Premarket, what was shown was not substantially different from the patented designs depicted in the Premarket patents. The Federal Circuit ruled that to invalidate a design patent based on a prior public use, the fact finder must compare the claim and the prior public use, employing both the “ordinary observer” and “point of novelty” tests. The Court concluded that it was unclear from the district court’s opinion whether both of these tests were correctly applied. The Federal Circuit concluded that the district court had overlooked the evidence showing that, under the circumstances, a confidentiality agreement was not necessary. Bernhardt showed that the Premarket was not open to the public; the witnesses and attendees were identified, logged, and escorted; and they were not permitted to make notes or take photographs. Absence of a confidentiality agreement in this instance is not dispositive. Thus, the district court’s analysis of the “public” nature of the exhibition was incomplete.

For these reasons, the Federal Circuit vacated the district court’s finding of invalidity based on a public use and remanded on that issue.

Concerning infringement, the district court had found that Bernhardt had failed to establish that Collezione’s designs appropriated the points of novelty of the furniture designs. The Court commented that it has not unequivocally spoken as to what minimum evidence the patentee must present to satisfy its burden under the point of novelty tests. Accordingly, the Court held that the patentee must introduce into evidence, at a minimum, the design patent at issue, its prosecution history, and the relevant prior art references cited in the prosecution history; and must present, in some form, its contentions as to points of novelty. In this case, Bernhardt submitted all of these requirements and its contentions as to the points of novelty contained in its proposed findings of fact and conclusions of law. Although Bernhardt did not present an expert witness, that was not necessary. Because the district court incorrectly required Bernhardt to explain its points of novelty through the testimony of a witness, the Federal Circuit vacated the district court’s judgment of noninfringement and remanded on the issue.