Docket No. 2015-1553
MOORE, HUGHES, STOLL
April 19, 2016
Brief Summary: DC claim construction rejected “because it eliminates whole aspects of the claimed design”. DC exclusion of expert witness found not to be an abuse of discretion because of his “admitted inexperience and unfamiliarity with the…subject”.
Summary: Coleman appealed stipulated judgment of noninfringement regarding its design patent D623,714 claiming “[t]he ornamental design for a personal flotation device” and “generally disclos[ing] a personal flotation device with two arms bands connected to a torso piece.” Sport Dimension’s accused infringing product, the Body Glove Model 325, “like Coleman’s design, have two armbands connected to a torso piece…[b]ut, unlike Coleman’s design, to torso section in the Body Glove device extends upward to form a vest that goes over a person’s shoulders.” The DC issued two rulings that are reviewed in the FC panel’s opinion. The first decision excluded Coleman’s expert testimony as he was found not to have “susbstantive experience in the narrower field of personal flotation device design” (as opposed to general experience in “industrial design”). The DC also adopted Sport Dimension’s proposed claim construction which, the FC panel noted, “eliminates several features of Coleman’s design, specifically the armbands and the side torso tapering”. Coleman “moved for entry of judgment of noninfringement…so that it could appeal the claim construction.” The FC panel’s opinion explained that while “[w]ords cannot easily describe ornamental designs” (Dobson, US 1886), a DC “may use claim construction to help guide the fact finder through issues that bear on claim scope” (Egyptian Goddess, FC 2008) such as where it helps “the fact finder ‘distinguish[] between those features of the claimed design that are ornamental and those that are purely functional” (EG citing OddzOn (FC 1997) (fins on tail fin of football with “rocket-like” appearance)). And “a design patent is invalid if its overall appearance is ‘dictated by’ its function” but not if “the design is not primarily functional” (“the design claim is not invalid, even if certain elements have functional purposes” (Ethicon, FC 2015); Richardson, FC 2010 (construction of claim to multi-function tool “did not protect the functional aspects of the design”); “a design patent’s claim protects an article of manufacture, which ‘necessarily serves a utilitarian purpose’” (L.A. Gear, FC 1993)). Here, the FC panel concluded the DC / Sport Dimension’s construction “conflicts with that principle of design patent claim construction because it eliminates whole aspects of the claimed design” and rejected the same. It explained, however, that it disagreed with Coleman that “the armbands and side torso tapering do not serve a functional purpose” since the designs “meet several” of the PHG factors (PHG, FC 2006 (e.g., “overall appearance clearly not dictated by function”)). The FC panel found the DC did not abuse its discretion is excluding Coleman’s expert testimony because of his “admitted inexperience and unfamiliarity with the…subject”.
Federal Circuit summaries 