In a Law360 Expert Analysis piece, Knobbe Martens partner Ben Katzenellenbogen and associate Fatima Kouadio examine the uncertainty surrounding functionality in design patent cases, prompted by the Federal Circuit’s splintered denial of rehearing in Range of Motion Products LLC v. Armaid Company Inc.
In that case, Judge Kimberly Moore dissented from the denial and would have granted rehearing to address the Federal Circuit’s standards regarding functionality and infringement. In their piece, Katzenellenbogen and Kouadio argue that if the Federal Circuit or the Supreme Court revisits the functionality framework, it should first resolve a predicate question that case law has largely sidestepped: how to identify the article of manufacture to which the functionality analysis applies.
The authors observe that Federal Circuit decisions define the relevant universe of prior art to design patents based on the article of manufacture identified in the text of the claim. Yet the court frequently assesses functionality based on the article depicted in the drawings. This can be the difference between evaluating the functionality of a design to personal flotation devices generally, versus to a wearable flotation device a wearable flotation device incorporating attached arm floats and a torso float with tapering sides.
Katzenellenbogen and Kouadio suggest that one option to clarify and harmonize these authorities could involve borrowing from utility patent law’s treatment of genus and species claims. Specifically, an element of a claimed design could be deemed functional if it would be functional for any species of article falling within the genus recited in the text of the claim. That approach, they write, “would not require a wholesale reworking of design patent doctrine,” but “asks the Federal Circuit to more explicitly reconcile its decisions.” If courts were to adopt this approach, the authors write, it would affect how parties frame functionality arguments, litigate claim construction, and build infringement and invalidity theories.
Read the full article, “Fed. Circ. Should Redefine Functionality In Design Patents”.
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