Addressing claim construction issues in the context of a design
patent, the US Court of Appeals for the Federal Circuit reversed
the district court’s construction, finding that it failed to
account for the overall ornamentation of the design. Sport
Dimension, Inc. v. The Coleman Company, Inc., Case No. 15-1553
(Fed. Cir., Apr. 19, 2016) (Moore, J).
The design patent at issue related to a personal flotation
device. The district court determined that the Coleman
Company’s flotation device featured an armband and torso
tapering that represented the best available design for a personal
flotation device. The district court also looked to a related
utility patent filed by Coleman in ultimately determining that the
armband and torso tapering were functional elements. Having
determined that the elements were functional, the district court
eliminated the armbands and side torso tapering from the claim
scope entirely. Coleman appealed.
Citing Ethicon, the Federal Circuit explained that it
is improper to entirely eliminate a structural element from the
claimed ornamental design, even when that element also serves some
functional purpose. Such an approach departs from the established
legal framework for interpreting design patent claims. The Court
explained that design patents protect the overall ornamentation of
a design, not an aggregation of separable elements. According to
the Federal Circuit, by eliminating particular structural elements
from the design patent’s claim scope, the district court
improperly converted the claim scope from one that covers the
overall ornamentation to one that covers individual elements.
The Federal Circuit then analyzed the overall design of
Coleman’s personal flotation device, including the features
ignored by the district court, and determined that the design was
minimalist, with little ornamentation. The Federal Circuit agreed
that the armband and torso features were indeed functional, and so
the fact finder should not focus on the particular designs of those
elements when determining infringement but rather should focus on
what these elements contribute to the design’s overall
ornamentation. In this case, because the overall design featured
many functional elements and a minimalist overall ornamentation,
the Court concluded that the overall claim scope is accordingly
narrow. The case was remanded for consideration of infringement
under the proper claim construction.
In Wasica Finance GmbH v. Continental Automotive Systems, Inc., No. 15-2078 (Fed. Cir. 2017), the patentee Wasica Finance discovered, among other things, the importance of using consistent terminology in the patent specification and claims.
While under attack for several years now, the patent infringement defense of laches was dealt a serious, and likely final, blow by the recent Supreme Court case of SCA Hygiene Products AB et al. v. First Quality Baby Products LLC et al.
Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
On April 6, 2017, the Federal Circuit reversed-in-part and affirmed-in-part the district court's judgment of infringement and summary judgment for non-infringement of The Medicines Company's ("MedCo") patents-in-suit.
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