Monthly Archives: April 2016

Federal Circuit Reverses Design Patent Claim Construction

by: Robert Wagner, intellectual property attorney at the Pittsburgh law firm of Picadio Sneath Miller & Norton, P.C. ()

In the wake of the Apple v. Samsung cases, the importance of design patents has become more visible. Whether a product infringes a design patent can sometimes be difficult to determine because design patents only protect the ornamental aspects of a design, and not the functional aspects. The Federal Circuit, in Sport Dimension, Inc. v. The Coleman Company, Inc. (No. 2015-1553) recently considered the interplay between ornamentation and functionality in a design patent.

Background

Coleman sells a variety of outdoor sporting equipment, including personal flotation devices. One of its products,  a flotation device with two arm bands and a torso piece, is protected by US Design Patent No. D623,714.

Flotation DeviceSport Dimension also sells personal flotation devices, including its line of Body Glove products that also have two armbands and a torso section.

Body GloveColeman brought suit against Sport Dimension, alleging infringement of the ‘714 patent.

The trial court adopted Sport Dimension’s claim construction, which expressly excluded the arm bands and side torso tapering as elements of the claim, because functional elements not protected by the patent. Coleman then moved for entry of a judgment of non-infringement in favor of Sport Dimension so that it could appeal the claim construction ruling.

The Federal Circuit reversed the claim construction, vacated the judgment of non-infringement, and remanded.

Analysis

The Federal Circuit began by noting that it is often difficult to use words to describe a design, which is why illustrations are an important part of design patents. Despite the limitations of words, the Court noted that it is often constructive for courts to construe design patents in order to guide the fact finder in determining infringement.

The Court then noted the law of infringement of design patents–a design patent cannot protect purely functional designs, but it can protect designs that are not primarily functional even if certain elements have functional purposes. Thus, design patents can be used with products that have elements that are both functional and non-functional, but the design patent will only protect the non-functional elements that are shown in the patent. Of particular interest to design patent litigators, the Court reviewed the key cases in the design patent arena.

In analyzing the patent in dispute and the trial court’s claim construction, the Federal Circuit found that the trial court went too far in excluding entirely the arm bands and tapered side torso from the scope of the patent. The Court agreed that these elements had functional aspects, but concluded it was improper to entirely exclude these elements. The test for infringement of a design patent is not an element-by-element comparison. Instead, infringement is to be assessed based on the overall design, excluding the functional aspects of certain elements (as opposed to excluding the elements entirely).

Based on this faulty claim construction, the Federal Circuit vacated and remanded.

Conclusion

This case highlights the difficulty that design patents present for courts and fact finders. Sometimes, the functional/ornamental aspects are difficult to distinguish and apply. Nonetheless, design patents are still an important piece of intellectual property for many companies and should not be discounted lightly.

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Copyright Infringement Suit Over Hit Song Fails Due to Lack of Valid Copyright Registration

by: Kelly A. Williams, a shareholder at Picadio Sneath Miller & Norton, P.C.

Copyright SignRapper Rick Ross and his producers sued LMFAO members Skyler and Stefan Gordy in December 2013, claiming that “Party Rock Anthem,” which topped the Billboard charts for six weeks and sold more than 7.5 million copies in the U.S., infringed Rick Ross’s 2006 hit “Hustlin’.”  The court held that Rick Ross and his producers didn’t have the copyright registration necessary to sue for infringement.  The court determined that Ross and his producers never presented evidence showing they were the owners of “Hustlin’,” and the three different registrations for the song at the U.S. Copyright Office were all inaccurate.

Interestingly, the members of LMFAO didn’t dispute that they had Ross’ “every day I’m hustlin” lyrics in mind when they drafted their “every day I’m shuffling” lyric.  However, they raised several defenses including lack of standing and fair use.  They won on lack of standing.  If they had not, the court had previously ruled that it would leave the fair use issue for trial.  That issue was whether LMFAO transformed Ross’ lyric into something new.

Also of note was the Register of Copyrights’ finding that the misrepresentations on three registrations for Ross’s Hustlin’ song were strong enough that the Register would cancel all three.  The court also commented on this, finding that the misrepresentations were dramatic and unexplained especially because two of them were filed by major, global music corporations.  The court’s ruling did not cancel the registrations.  However, it did bar Ross from bringing the infringement action because it turned on whether there was a valid registration, and Ross and his producers didn’t have one.

The case is found at Roberts v. Gordy, case no. 1:13-cv-2470 in the U.S. Dist. Court for the S.D. Florida.