Holding: The drawings of a design patent do not delineate between the functional and ornamental aspects of the claimed design. The existence of alternative designs is not dispositive of functionality for features of a claimed design.
RoM owns US Design Patent No. D802,155 for a body massaging apparatus. The Rolflex, a device designed to massage the entire body, embodies the design of the D’155 Patent. Armaid sells the Armaid2, a device designed for massaging the arms. Armaid also produced the Armaid1, another massaging apparatus that embodied US Patent No. 5,792,081, owned by Armaid.
RoM sued Armaid for patent infringement, alleging that the Armaid2 infringed the D’155 Patent. During claim construction, the district court distinguished between the features of the claimed design that were functional versus ornamental. Finding that most of the features were functional, the district court stated that the scope of the D’155 Patent was narrow. Armaid filed for summary judgment of noninfringement, and the district court granted summary judgment, finding that no reasonable jury could find the Armaid2 to be substantially similar to the claimed design in the D’155 Patent.
Design patent infringement is determined by a two-part test. First the court construes the claim to determine its meaning and scope. Then, the fact finder compares the construed claim to the accused design. Although the claim is best represented by the drawings in the design patent, it may be helpful for a court to identify the functional and the non-functional aspects of the claim during claim construction.
RoM argued that the district court erred by ignoring entire structural elements of the design, such as the shape of the arms, because these elements were found to be functional. The Federal Circuit held that the district court did not err in ignoring the shape of the arms, as this feature was functional. Armaid’s ‘081 Patent described how the arms of the Armaid product are particularly shaped to allow a limb to be clamped and massaged. Further, RoM’s marketing material touted that the shape of the roller arms provided leverage.
RoM also argued that the intrinsic evidence presented by the drawings in the D’155 Patent demonstrated that the shape of the arms was ornamental. RoM stated that the drawings of the D’155 Patent included features in both solid lines to show which material was claimed by the invention and dashed lines to depict material disclaimed from the invention. The Federal Circuit viewed this argument as an attempt by RoM to contend that all elements depicted by solid lines are ornamental, while those depicted by dashed lines are functional. However, courts are not constrained to treating a design patent’s drawings as being dispositive of functionality. The applicant and the Examiner do not get to determine which features are functional and which are decorative upon grant of the patent.
The Federal Circuit also rejected RoM’s argument that Armaid’s ‘081 Patent’s alternative design for arm shape was dispositive in showing that arm shape could be a decorative feature. The existence of alternative designs does not automatically make a feature decorative. The possibility of alternative designs is an important factor in determining functionality, but the other relevant PHG factors, such as whether the protected design is the best design, the existence of related utility patents, whether advertising touts the utility of certain features of the design, and whether there are any features clearly not dictated by function should still be considered.
RoM also contended that even using the district court’s claim construction, the design of the D’155 Patent and the Armaid2 were similar enough to withstand summary judgment. Design patent infringement is analyzed using the ordinary observer test set out in Egyptian Goddess, which asks if “in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.” This burden is not met as a matter of law if the claimed design and the accused design are sufficiently distinct and plainly dissimilar. If the designs are not plainly dissimilar, then the infringement inquiry should extend to comparing the claimed design and the accused design with the prior art to identify differences that would be significant to an ordinary observer familiar with the prior art.
The Federal Circuit held that the district court’s infringement analysis properly focused on the ornamental aspects of the claimed and accused designs. The district court found that most of the similarities between the D’155 Patent and the Armaid2 were between the functional features. The differences between the D’155 Patent and the Armaid2 include the shape and size of the hinge apparatus of the fixed arm; the segmented appearance of the Armaid2; the larger size-selection slots of the Armaid2; and the blunter, less rounded end of the hinge apparatus in the Armaid2. Taken together, the district court found these differences to make the Armaid2 plainly dissimilar from the claimed design in the D’155 Patent. Therefore, comparison with the prior art Armaid1 was not even necessary.
Judge Moore dissented, concluding that the claimed design of the D’155 Patent was similar enough to the Armaid2 to survive summary judgment and be evaluated by a jury. In her view, Egyptian Goddess improperly modified the Gorham substantial‑similarity test by recognizing that some designs may be so plainly dissimilar that infringement can be rejected as a matter of law. She argued that this emphasis on dissimilarity shifts the analysis away from identifying similarities between the claimed and accused designs and instead highlights differences. Judge Moore believed this approach gives too much weight to minor distinctions and diverts attention from the similarities that should drive the infringement inquiry.
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