Functional Elements of Design Contribute to Design Patent Scope to the Extent They Contribute to the Design’s Overall Ornamentation

In Sport Dimension, Inc. v. Coleman Co., No. 15-1553 (Fed. Cir. Apr. 19, 2016), the Federal Circuit held that the district court erred when it eliminated functional elements from a design patent claim, finding that the district court improperly converted the claim scope from one that covers the overall ornamentation to one that covers individual elements.

Coleman’s U.S. Patent No. D623,714 (“D’714 patent”) generally discloses a personal flotation device with two arm bands connected to a torso piece:

The district court’s claim construction excluded the armbands and tapered torso from the claim scope on the basis that they serve a functional rather than ornamental purpose. The Federal Circuit agreed with the district court’s conclusion that the armbands and tapered side torso serve a functional purpose. The Court found that several factors indicated functionality, including that the setup represented the best available design, that Coleman filed a co-pending utility patent disclosing and touting the utility of the armbands and torso tapering, and that Coleman advertised the particular utility of those features.

But, the Federal Circuit rejected the district court’s ultimate claim construction because it eliminated the armbands and side torso tapering from the claim entirely, thus improperly eliminating whole aspects of the claimed design. The Court emphasized that design patents protect the overall ornamentation of a design, not an aggregation of separable elements. In view of the design’s many functional elements and minimal ornamentation, the Federal Circuit noted that the overall claim scope of the claim is accordingly narrow. Accordingly, the court vacated the district court’s judgment of non-infringement and remanded the case for further proceedings.