Preliminary Injunctions and Obviousness in Design Patent Law

Titan Tire Corp. v. Case New Holland, Inc.pic-44.jpg 2008-1078 (Fed. Cir. 2009)

Titan (the patentee) and Goodyear (the exclusive licensee) combined to sue Case for infringement of its tractor tire design patent. (Des. Pat. No. D. 360,862). The district court rejected Goodyear’s motion for preliminary injunctive relief – finding that the evidence indicated that the patent claim was probably obvious. On appeal, the Federal Circuit affirmed.

Standard for Preliminary Relief: In order to obtain the “extraordinary” relief of a preliminary injunction to stop infringement before a final judgment, the a patentee must prove that “(1) it is likely to succeed on the merits, (2) it is likely to suffer irreparable harm in the absence of a preliminary relief, (3) the balance of equities tips in its favor, and (4) an injunction is in the public interest.” The likelihood of success requires proof that the patentee “will likely prove infringement, and that it will likely withstand [validity] challenges, if any.” When a defendant challenges a patent’s validity, the district court must weigh the evidence (both for and against) to determine whether the challenge “raises a substantial question” of validity.

“Thus, when analyzing the likelihood of success factor, the trial court, after considering all the evidence available at this early stage of the litigation, must determine whether it is more likely than not that the challenger will be able to prove at trial, by clear and convincing evidence, that the patent is invalid. We reiterate that the “clear and convincing” standard regarding the challenger’s evidence applies only at trial on the merits, not at the preliminary injunction stage. The fact that, at trial on the merits, the proof of invalidity will require clear and convincing evidence is a consideration for the judge to take into account in assessing the challenger’s case at the preliminary injunction stage; it is not an evidentiary burden to be met preliminarily by the challenger.”

The trial court’s decision on preliminary injunctive relief is reviewed for abuse of discretion.

Obviousness of Design Patents: Design patent claims are subject to the nonobviousness requirement of Section 103(a) — asking whether “the claimed design would have been obvious to a designer of ordinary skill who designs articles of the type involved.” However, it is unclear how KSR applies to design patent cases. Unfortunately, this decision provides no answers except that “it is not obvious that the Supreme Court necessarily intended to exclude design patents from the reach of KSR.”

Ordinarily, design patent obviousness analysis begins with a primary reference with design characteristics that “are basically the same as the claimed design.” Secondary references are then combined so long as the secondary references are “so related [to the primary reference] that the appearance of certain ornamental features in one would suggest the application of those features to the other.” Here, the lower court did not use the language of “primary and secondary references”, but the Federal Circuit found that the lower court’s obvious analysis was sufficient to for its denial of preliminary relief.

“[W]e cannot say the trial court abused its discretion in concluding that Titan was unlikely to withstand Case’s challenge to the validity of the ’862 patent on obviousness grounds.


  • Read the case: 08-1078.pdf
  • The court explicitly avoided indicating whether obviousness analysis for design patents should be modified to conform to either KSR or Egyptian Goddess.

54 thoughts on “Preliminary Injunctions and Obviousness in Design Patent Law

  1. 54

    Thank you Perry,

    Perhaps Dennis will feature your paper after it has been published.

  2. 53

    With due respect, I have already told you what the US law is on the subject. US law recognizes that ALL industrial products are dictated by functional considerations. The underlying purpose of the functionality doctrine is to prevent a design patent from monopolizing that which should only be monopolized by a utility patent. Thus, if there are alternate designs that perform substantially the same function, then ipso facto the design patent is not monopolizing that function, and is thus valid. I have written a long paper about functionality, which lays this out in great detail. It’s about to be published. If anyone wants an advance copy, email me at and I’ll shoot it to you.
    BTW, just because a product may be “hidden in use” does not automatically disqualify it for US design patent protection. The in re Webb case held that such a product (in this case a leg prosthesis that was obviously implanted within a leg during use) is design patentable if its appearance is a “matter of concern” at any time from manufacture to disposition, e.g., shown at a trade show.

  3. 52

    Answer from MaxDrei: no idea what thoughts are running through your head, Noise. What I “feel”, on the issue of auto parts, visible or not, is: “not much”. What would you like me to write? European registered design law draws a distinction between auto parts that are visible in use (might be registrable) and parts not visible in use (not registrable). Not sure where that leaves a Ferrari cylinder head, visible to onlookers, under a transparent window. Do you have a follow-up question? Is anybody else interested?

  4. 51

    mea culpa 6,

    “Such a statement belies your real world experience.”

    Feel better?

    Question for MaxDrei – How do you feel about aftermarket replacement auto parts that, once installed, no one sees?

  5. 50

    Good question 6. First laugh of the day.

    We’ve heard from Noise. Something now from Perry Saidman would be nice. Maybe we could thing about a “wing” that is never seen in use, like a blade deep inside the turbine engine of the winged aircraft. Is such a turbine blade design “dictated solely by function” and nevertheless valid subject matter for a design patent?

  6. 49

    “Such a statement belies your lack of actual real world experience. ”

    What do you think the word “belies” means?

  7. 48


    Regardless of US or EP jurisdiction, it is highly presumptuous of you to assume that aircraft wing design would have ” …looking attractive” plays no part in the design process of the aircraft wing”.

    Such a statement belies your lack of actual real world experience. Even under the assumption that you are positing the statement on an intuitive basis only, you draw a meritless distinction. One clue is that you want to maintain that aircraft wing design is dictated solely by function. This simply is not true.

    What Mr. Saidman may be trying to tell you is that the position you are trying to take simply does not exist.

  8. 47

    Mr Saidman, I agree with you that there is more than one aircraft wing profile to be found, if we survey all aircraft being designed today. There is also more than one shape to the front wing panels of cars being designed today. But I still see a distinction between these two sorts of wing. Whereas “looking attractive” plays no part in the design process of the aircraft wing, it does play a part in the design process of a car wing. In other words, each aircraft wing design is dictated solely by function but none of the car wing designs are. On that premise, and admittedly only intuitively, it seems to me that car wing designs can be suitable subject matter for design patents, but aircraft wing designs ought not to be.

    I’m very happy to let you tell me what current US design patent law says on this subject

  9. 46

    My example would be a bowling ball without any surface decoration. Presumably, no other shape beside spherical would allow the ball to roll down the bowling alley. Thus, a spherical bowling ball would be dictated solely by function, and unpatentable. I suppose even in that instance someone could design a ball that had 4, or 5, or 6, or 10, or even 20 or more holes on its surface, instead of the normal 3, and thus a 20-holed bowling ball would probably be design patentable, but of course the patentable portion would be limited to the new hole pattern.

  10. 45

    So, Max, under your theory, all aircraft wing profiles would be exactly the same, because there’s only one that will work? If that’s the case, then that one wing profile is dicated solely by function and not patentable in the U.S.
    However, since I believe that I’ve seen many, many different-looking wing profiles that in fact carry the airplanes to which they are attached into the sky, it is my opinion that each can be the subject of its own, valid U.S. design patent.
    It really depends, does it not, on how you define the word “function”? As I previously stated, ALL airplane wings are de facto functional; i.e., they perform a function. But if that were the criteria for invalidating a design patent, there would be no valid design patents, except for those that had surface decoration, and there’s some lawyer out there who would be able to argue that even such surface decoration “performs a function” and is thus “functional”. This absurd result cannot be the law.

  11. 44

    The classic example of a design that is purley functional is the shape of a gear.

    However, a rejection to a design patent for lack of ornamentality can be overcome by an applicant submitting possible alternative designs that could have served the same function to establish that the design was not dictated solely by function. One can envision that such can be possible even for a design patent on the shape of a gear.

    Here is the list from the MPEP of types of evidence that can establish that the design was not dictated soloely by function:

    “A rejection under 35 U.S.C. 171 based on lack of ornamentality may be overcome by the following:

    (A) An affidavit or declaration under 37 CFR 1.132 submitted from the applicant or a representative of the company, which commissioned the design, explaining specifically and in depth, which features or area of the claimed design were created with:

    (1) a concern for enhancing the saleable value or increasing the demand for the article. Gorham Manufacturing Co. v. White, 81 U.S. (14 Wall) 511 (1871), or

    (2) a concern primarily for the esthetic appearance of the article;

    (B) Advertisements which emphasize the ornamentality of the article embodying the claimed design may be submitted as evidence to rebut the rejection. See Berry Sterling Corp. v. Pescor Plastics Inc., 122 F.3d 1452, 43 USPQ2d 1953 (Fed. Cir. 1997);

    (C) Evidence that the appearance of the design is ornamental may be shown by distinctness from the prior art as well as an attempt to develop or to maintain consumer recognition of the article embodying the design. Seiko Epson Corp. v. Nu-Kote Int’l Inc., 190 F.3d 1360, 52 USPQ2d 1011 (Fed. Cir. 1999);

    (D) Evidence may be provided by a representative of the company, which commissioned the design, to establish the ornamentality of the design by stating the motivating factors behind the creation of the design;

    (E) When the rejection asserts that the design is purely dictated by functional considerations, evidence may be presented showing possible alternative designs which could have served the same function indicating that the appearance of the claimed design was not purely dictated by function. L.A. Gear Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 25 USPQ2d 1913 (Fed. Cir. 1993);

    (F) When the rejection asserts no period in the commercial life of the article when its ornamentality may be a matter of concern, the applicant must establish that the “article’s design is a ‘matter of concern’ because of the nature of its visibility at some point between its manufacture or assembly and its ultimate use.” In re Webb, 916 F.2d 1553, 1558, 16 USPQ2d 1433, 1436 (Fed. Cir. 1990).

    Attorney arguments are not a substitute for evidence to establish the ornamentality of the claim. Ex parte Webb, 30 USPQ2d 1064, 1068 (Bd. Pat. App. & Inter. 1993).”

  12. 43


    So when would a design be unpatentable because it is functional? Can you give some examples


  13. 42

    FYI. Did a quick USPTO search of design patents having the word “tire” within its title (TTL/tire AND PN/D).

    Search yielded 135 reults. All but about 5 (i.e., tire air pressure gauge design) claim tread designs.

  14. 41

    Thanks Mr Saidman but let’s look at an aircraft wing profile again shall we? No other profile can provide the “same” “function”. The profile IS the function. That was my point. Sorry it didn’t come across.

    But I am in Europe, where utility patents last for 20 years, and design registrations for 25. So I am more nervous than you, perhaps, about what subject matter can be protected by a valid design patent.

  15. 40

    As proven by Egyptian Goddess, the Federal Circuit might choose to eventually apply KSR to design patents in a very different way than with respect to utility patents. This is what happened with Markman, another SCOTUS case that, like KSR, never even mentioned design patents. The courts began to screw up design patent Markman claim constructions almost immediately after Markman came down in 1996, and it took the Feds 12 years to straighen it out in Egyptian Goddess. Let’s hope they do not dodge the issue next time it presents itself.

  16. 39

    Max III, this is such a common misperception in design patent law that I feel compelled to comment. Just because a design performs a function does not mean it’s functional as a matter of law. In analyzing design patent functionality, one must distinguish between de facto and de jure functionality. All articles of manufacture are de facto functional, by their very nature. It doesn’t make them de jure functional. As pointed out by other commentators, if there are alternate designs that perform substantially the same function as the patented design, it’s proof that the design patentee is not monopolizing that function, and completely negates the functionality defense.

  17. 38

    Perhaps the rationale can be better understood by looking at the accused infringer’s tire which is substantially the same as the patented design. Having the universe of tire tread designs available to it, why did the defendant obviously and intentionally copy the patented design? The design patentee wanted to stop look-alikes in a brand they had successfully marketed, and the defendant wanted to take advantage of that market (without doing any original design work) by knocking it off. That’s the rationale.

  18. 37

    I’m sorry to post so late on this, but for some reason I’m only getting about every other issue of Patently-O in my email. In any event, Prof. Crouch, I agree that the law of functionality varies between design patent, copyright, and trade dress [n.b., plenary session on this topic at AIPLA annual meeting this Fall], but then you proceed to apply trade dress standards to determine design patent functionality. I know you are summarizing the Federal Circuit’s PHG case, but the sole authority for the court’s “list of considerations” in that case (that you summarized) is the earlier Berry Sterling case where it was the purest of dicta, appearing in the last paragraph of the opinion. PHG adopted it wholesale, as if it was established precedent. Besides, it doesn’t make any sense. For example, of course the patented design is the “best” design – why would a designer design an inferior design? And it puts design patentees in the weird position of arguing that their design is NOT the best design. And why would not advertising for an article of manufacture NOT tout the functional benefits of the product? We are not selling art here; we are selling articles of manufacture that do things. Regarding trade dress functionality, these factors may be argued as being important, because for one thing trade dress protection lasts forever. And it is consumer protection based. And the Supreme Court says so! This trade dress vs. design patent functionality dichotomy has not been vetted by any court of which I am aware.

  19. 35

    “Kappos is also known for a general opposition to business method patents, recently arguing that the Federal Circuit’s 1998 State Street decision led to a 10-year “experiment” in allowing such patents that can now be seen as having failed.”

    If that’s pro-patent, baby, I’m all for it.

  20. 34

    I’ll bet David Kappos will be an excellent choice — a pro-patent American through and through!

    (Six, you are a sick phuck — no offense intended.)

  21. 31

    Design patents only have one claim, so it won’t be claims 1.-10., only Claim 1. that may be obvious.

  22. 30

    “All overtime suspended in all patent units.” That should really help the PTO catch up on the backlog. “one step forward, two steps back”

  23. 29

    Wow! I was really just being sarcastic about IE, I had no idea it didn’t have this feature.

    Even as I tpye this the fourth word in this sentence is underlined in red. Pretty basic stuff for a browser.

    Typically IE picks up the best features of FF after a few months (tabbing being the most obvious example) so I assumed the spelling thing was done long ago.

    FF is free, if that helps.

  24. 28

    dude said:

    “‘The district court rejected Goodyear’s motion for preliminary injunctive relief – finding that the evidence indicated that the patent claim was probably obvious. On appeal, the Federal Circuit affirmed.’

    …’probably obvious’…?

    I hope that is not a direct quote from the DC!

    I can see the rejections now: Claim 1-10 are probably obvious in view of KSR.”

    I wouldn’t get all worked up about the reference to “probably.” Remember the procedural posture of this case–the complaint sought a preliminary injunction. So the DC wasn’t going to go through the difficulty of determining validity, just whether the judge thought the plaintiff “probably” could succeed later on. And the judge thought “probably” not.

  25. 27

    Yes D, I do. I am unable to deliver it however, you never know what kinds of things they want to make an official announcement about.

    Quality will go up, rate of prosecution will go down in some instances, up in others. Depends on what point in prosecution the case is in.

  26. 26

    The Examiners don’t need overtime, because they can just say claims are obvious and provide some rational underpinning, and they are done.

  27. 24


    As an insider, how do you think suspending all overtime in all patent units will affect the quality and rate of patent prosecution and office actions?

  28. 22

    “It only matters whether it is the only possible design”

    I thought that that was the test.

  29. 21

    Sadly, no, but I did find a free plug in called ieSpell. I wish I could set it to automatically check when I click submit, but I have to remember to open the tools menu and use it every time.

  30. 20


    Why won’t they?
    Why don’t they?

    Are there options to invalidate patents where the evidence is such that your proposition is true?

  31. 19

    “The district court rejected Goodyear’s motion for preliminary injunctive relief – finding that the evidence indicated that the patent claim was probably obvious. On appeal, the Federal Circuit affirmed.”

    …”probably obvious”…?

    I hope that is not a direct quote from the DC!

    I can see the rejections now: Claim 1-10 are probably obvious in view of KSR.

  32. 18

    “You might consider composing your comments in Word and cutting and pasting into Prof. Crouch’s comment box.”

    Or you could just use a decent browser, such as Firefox, that will spell check as you type, no matter the web site.

    I noticed that IE is up to version 8. Surely it has that option by now.

  33. 17

    Dear Malcolm,

    “A moot point if the Examiners don’t enforce the law, which they don’t and won’t.”

    With all due respect, I wonder if that could have anything to do with your phucking attitude?

    * * * * *

    Dear broje,

    You might consider composing your comments in Word and cutting and pasting into Prof. Crouch’s comment box.

    Also, I sympathize with your typing deficiency — I’ve switched to Dragon Naturally Speaking which converts voice to text. I still need to proofread though.

  34. 16

    “… the non-functionality requiremnt as stated in Mr. Croch’s comment …”

    Sorry, Dennis. I did not mean to call you “Mr. Croch.” That must have caused flashbacks from grade school.

    Is there any way to get a spell checker installed? It’s not that I can’t spell. It’s a typing deficiency combined with a proofreading deficiency.

  35. 15

    Dennis : “Paul – these are good points. While the court did not hold that KSR applies to design cases, the dicta indicates that it does apply.”

    A moot point if the Examiners don’t enforce the law, which they don’t and won’t.

  36. 14

    My interpretation of the non-functionality requiremnt as stated in Mr. Croch’s comment above at 9:52 am is that:

    it matters not whether the design has an impact on function or is perceived as an improvement over a previous design. It only matters whether it is the only possible design or the optimal design.

    For tire tread patterns, there is more than one possible tire tread pattern. If it can be shown that one of these options is the optimally functional one, then that one cannot be the subject of a design patent, and the others can be design patented. If there is not one that can be shown to be optimal, then they can all be design patented.

    Does anyone take a different view?

  37. 13

    “when speaking of functionality in the design patent realm, the proper inquiry is whether the design as a whole is “dictated solely by function.” ” I guess SOLELY is the key. For example, are there other ways to configure a tire tread???

  38. 12

    Tire tread patterns have long been the subject of design patents–something I have never understood, since, as others have pointed out here, almost NO tire manufacturer publicly takes the position that their tread patterns are functionally insignificant. On the contrary, every tire manufacturer would have you believe that every minute variation in their tread design improves performance. I have never understood the rationale behind tire tread pattern design patents, but all the major manufacturers have long been getting such patents.

  39. 10

    The Court did clearly say that “Design patents are subject to the nonobviousness requirement of 35 U.S.C. § 103. See 35 U.S.C. § 171.” [I.e, the exact same statutory 103 test as for any other patent]. {Of course in reality that is complicated by the statutory limitation of design patents to a novel and unobvious “ORNAMENTAL DESIGN”, etc.]

    The Court here also said that it did NOT see any obvious reason why the Sup. Ct. KSR 103 decision would NOT apply to design patents. Albiet they said that it would not have made any difference in this case [so that they did not need to decide that in this case.] [There is no indication or basis here for assuming that they would not have to apply KSR in the future.]

  40. 9

    In response to the functionality comments, the fact that an article of manufacturer performs a “function” does not disqualiy it from protection under 35 U.S.C. 171. (This is the statute conferring protection to designs which are required to be applied to “articles of manuacture.”) When speaking of functionality in the design patent realm, the proper inquiry is whether the design as a whole is “dictated solely by function.” (See Rosco)(emphasis on word “design”). In other words, the question is whether there any other designs that could perform the same function as the design in question. If no, the design patent is invalid, as a matter of law, under the functionality doctrine. Applying this test to Titan, the inquiry is whether there are other tire designs that could perform the tire’s same function. This is a fact question that analyzes the entire design, not individual aspects of the design. (See Five Star, Hupp).

    While we are speaking of functionality, it is worth noting that the issue of functionality is a validity issue, not a claim construction issue. There is much confusion in the design patent jurisprudence on this issue, as court’s try to apply functionality during claim construction on a aspect-by-aspect basis. In short, court’s should not endeavor to determine if individual aspects are functional/ornamental, and then instruct the fact-finder to siphon off (i.e. ignore) the functional aspects while fact-finding under the ordinary observer test. This “siphoning off approach” is de ja vu all over again in relation to the point of novelty debacle. Almost all the reasons supporting abrogation of the point of novelty test (which occured in EG) apply equally to prohibiting application of the “siphoning off approach.”

    First, dissecting designs into its individual components ignores the reality that designs are the visual impact of the whole, not the impact of its individual features. Second, the “siphoning off approach” creates an unwanted watered-down back-door attack on the validity of a design patent. By this, I mean that it avoids the elevated clear and convincing burden of proof and the other safeguards confronting validity challenges, including functionality challenges. Third, determining whether something is functional or ornamental is a fact question and thus inappropriate for claim construction, which is question of law. Fourth, the test is unworkable and impratical for a fact-finder to apply. Imagine the mind-boggling task a juror would have to go through to visually compare two items while being instructing to ignore certain components.

    Yes, it is true that Egyptian Goddess made a passing reference to the “siphoning off approach” in its opinion, but it was in dicta and only stated as something a court “can” do, not “must” do. To be sure, the issue was not thoroughly vetted in the briefing or the opinion. The issue is, however, likely to come to the forefront in the near future. Indeed, in the recent oral argument for Bernardo Footwear(post-EG), the Panel stated that its understanding of the functionality doctrine was that it only applied to designs as a whole, not individual aspects. Stay tuned….

  41. 8

    “patentees have been harmed by their own advertising that touts the functional benefits of a particular design.”


    I know of a case where one party was alleging trade dress infringement on a product and they had a utility patent application on that same product. The patent application is littered with functional language about the exact same features that the alleged trade dress covers.

  42. 7

    6, thanks for the comment. I’ll look into this — the comments are still in the system, but for some reason (unknown to me), they are not appearing for that post.

  43. 5

    Max & PatentPilot referred to the functional nature of the tire design.

    The nonfunctionality requirement is a confusing point in intellectual property law, and attorneys must be careful because the law is varies between design patent, copyright, and trademark (trade dress). In design patent law, the underlying article of manufacture can certainly be functional. However, the ornamental design must be primarily non-functional. To determine whether a design is primarily functional, a court would look to whether the particular design is the “best” design to achieve the underlying function of the article; whether there are alternative designs that are equally useful; and whether one or more of the elements are not dictated by function. On occasion, patentees have been harmed by their own advertising that touts the functional benefits of a particular design.

  44. 4


    The patent law provides that the scope of protection afforded a design patent is to be determined by referencing only the drawings or photographs in the patent file; and in cases where a design feature is incorporated in a product, the drawings or photographs of the patent application must show the design feature together with the product.

  45. 3

    The archetype design that is nothing but function is an aircraft wing exterior shape. As an aircraft drives its way through the air, so a tractor drives its way through soft ground. How can this thing be anything but 100% functional? Or do American farmers buy tractor tyres with below-par pulling power, because they like the look of them?

  46. 1

    We all belong to a respectable society and it is our sole responsibility to maintain the rules and regulations made by the society in which we live. A lawyer is a person who helps us in maintaining the law of conduct in the society itself.
    Angel Thomas

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