Design Patents: Functionality and a Trade Dress Gap Filler

Bissell Homecare v. Wildwood Industries (W.D. Mich. 2009)

This case is not likely to move much beyond the pleadings because the accused infringer (Wildwood) has declared bankruptcy. Wildwood sells replacement filters for Bissell vacuums. Earlier this year, Bissell sued Wildwood for infringement of its design patent (D565818) as well as trademark infringement for advertising “Bissell style” filters. [Link]. Of course, the validity of this design patent is questionable because the shape appears to be almost completely dictated by a need for the removable filter to fit within the standard compartment. “[I]t has long been settled that when a configuration is the result of functional considerations only, the resulting design is not patentable as an ornamental design for the simple reason that it is not “ornamental” – was not created for the purpose of ornamenting. In re Carletti, 328 F.2d 1020 (C.C.P.A. 1964); Hueter v. Compco Corp., 179 F.2d 416; Best Lock Corp. v. Ilco Unican Corp., 94 F.3d 1563 (Fed. Cir. 1996); Static Control Components, Inc. v. Lexmark Int’l, Inc., 487 F. Supp. 2d 830 (E.D. Ky. 2007).

In recent years (and in the wake of Wal-Mart v. Samara), design patents have begun be more aggressively asserted by manufacturers in place of (or alongside) trade dress claims. See Coach, Inc. v. Brown Shoe Company, Inc., 09-cv-05051 (S.D.N.Y., Complaint Filed May 29, 2009) (handbag); Hubbell v. Dynamic Lighting (light fixture); Deckers v. Bon-Ton (Kona Boot); NetGear v. Tong Ho Fong (wireless router); Nufix v. Bacterin Int’l. (surgical implant); Oakley v. Pacific Trade (sunglasses); Nike v. Not for Nothi’n (Air Jordan shoes); Poof-Slinky, Inc. v. Ja-Ru, Inc. (toy rocket); Lowes Co Inc, et al v. Pelican Products Inc (flashlight); Williams-Sonoma, Inc. v. Linen Source Inc (lamp – Indian design patents asserted in US court); Olivet International, Inc. v. Skyway Luggage Company (luggage wheel rims); Cartier et al v. Egana of Switzerland (watch); Plantronics, Inc. v. Wireless Connections NY, Inc. (earloop receiver); BELL HELICOPTER TEXTRON INC. et al v. ISLAMIC REPUBLIC OF IRAN et al (helicopter design).


32 thoughts on “Design Patents: Functionality and a Trade Dress Gap Filler

  1. 32

    There is an interesting nexus here between design patents and method claims of utility patents. Bilski, for instance, was concerned about preempting the use of a fundamental principle contained within the method claim. Likewise, the unpatentable aspect of a design patent is its functionality. If an item’s design parameters preempt its function (as a key slot configuration would seem to do), then it should not receive design patent protection. Therefore, a proper determination of patentability for a design must take into account the functional use of the device.

    It seems irrelevant whether a particular device that interfaces with the claimed device is disclosed in the application. The analysis should revolve around functionality, not patent drafting. A unique shape of the nonfunctional aspect of the device (e.g. the head portion of the key) should be proper material for protection as opposed to a particular slot shape that is required for the key to operate a lock. Staking a claim to the slot shape would be a clear attempt to protect something more properly within the realm of a utility patent (but presumably not worthy of utility patent protection).

    As the note above explains, the shape of this filter is almost entirely dictated by the need to fit within a standard vacuum filter compartment, and is therefore functional in nature. Any new device that copies the function of this device would of necessity look almost exactly the same. In addition, aren’t design patents intended to protect the ornamental or surface appearance of an article? Does anyone really care what the filter looks like when it cannot be seen anyway because it is contained within a compartment? (Maybe it would matter for marketing purposes.) A company logo or insignia (i.e. something “ornamental”) on the device should be protectable. But in this case, it is clear enough that Bissell is attempting to corner the market on replacement filters by claiming functionality under the guise of ornamentation.

  2. 29

    You know, I haven’t in fact read the article. I didn’t feel I necessarily needed to.

    Until your comment, that is…

  3. 27

    Well Perry, still waiting on your “proper response”.

    Please tell me that you weren’t just posturing.

  4. 26

    The question on everyone’s mind:

    How funny was Ariad’s argument?

    Well, I’m here to report to you that there were only a few points in time that were real gut busters, whelan came off as sounding kind of like an insane person at times though. The gov. guy was energetic and forceful, but didn’t sound crazy. Lilly’s guy was rather meek to start off and ended up trying to add some punch later.

    Lilly’s guy was the most level of the heads involved in the arguing, and was likely persuasive. The gov guy was very persuasive. Whelan was kind of persuasive, but meh, it was persuasive only in so far as his reading wasn’t completely insane. He basically succeeds in convincing people that he’s not totally off his rocker.

    I think everyone concedes to Whelan that he is correct in so far as he is not completely off his rocker, but he was unpersuasive as to the question on which he will win/lose the case. There was a time when the justices accused him of agreeing with his opposition. That nearly made me bust out laughing, but others stayed mostly quiet so I tried to keep it down.

    I must admit I enjoyed Newman’s contribution today. She spoke of substance and spoke well.

    Linn started us out showing his colors off in full splendor, begging to be shown why his position was wrong. I think that by the end he was at least a little bit concerned that he very well was.

    What this all seemed to perhaps have boiled down to was a failure of the people who understand the WD requirement, what it is and why it exists, to explain such to those who don’t. Particularly, Linn et al. It is a shame that such things cannot be explained to these folks in terms that they will understand but it doesn’t appear that things will change on that front anytime soon. In the mean time, cases like this will be an easy win.

    The shakedown looks like it will probably be 2 against, Linn, Rader (unless someone can show him a case where the WD req killed a case where it wasn’t a priority issue) and the rest for.

  5. 25

    To all disappointed posters, I was out of town and swamped Nov. 20-23, so I apologize for the delay. I need some space on my calendar, e.g., the upcoming Thanksgiving weekend, to properly respond to this so-called “attack”, which is unfortunately typical of the thinking out there on functionality and points to the huge job ahead of re-educating everyone…

  6. 22

    In recent years (and in the wake of Wal-Mart v. Samara), design patents have begun be more aggressively asserted by manufacturers in place of (or alongside) trade dress claims. This is right..

  7. 21


    Maybe by “simple”, Perry meant “elegant”.

    Like in any creative enterprise, a major activity in design is editing. You start out with something, refine and edit it, and you end up (hopefully) with something that contains all the expression of, and conveys all the meaning contained within, the original, yet more clearly, more quickly, more universally, or by using less to produce the same effect.

    Of course, this is an obvious and unedited comment, relatively easy to come up with.

  8. 20

    Hi Perry–

    Sorry, work actually took precedence over blogging!

    I’m having difficulty buying into your argument concerning Best Lock.

    “…import[ing] into a design patent claim undisclosed features of commercial products…”?

    Since design patent preambles are famously something like “I claim the ornamental design of a ( ), substantially as shown and described”, nothing is imported into the claim by considering the features of other objects, as the claim limitations are defined by the appearance as depicted in the drawings. Nothing that is not an appearance can be imported into a design patent claim. Even the naming of a particular article in the preamble is strictly unnecessary. The consideration of another co-operating or complementary device does nothing to change the claimed appearance.

    “…a court should not consider whether a patented design can be used with any particular undisclosed part when there are no such limitations within the design patent itself.”

    -As a preliminary matter, your proposition is tautological–nothing undisclosed in the patent app forms a “part” of the invention. Your use of the word “part” is misleading–it should be changed to something like “object”.

    -Further, why shouldn’t a court consider if a claimed design can be used with a particular undisclosed object? In fact, the court MUST consider this, in any functionality test. The “functionality test” is no different from the “obviousness test” or the “anticipation test”, where evidence extrinsic to the claims is adduced in support of a test arising from a statutory requirement.

    In Best Lock, the lock and key are not claimed as a system. The key is just that–a key. It has a specific utility dictating its overall form–the effective articulation with a particular lock configuration.

    For instance, let’s say that a design patent was filed that included the overall outline of the key in dashed lines (not claimed), but DID claim some laser-etched image or pattern applied to the surface of the material of which the key is made. THAT could be patentable, and could survive the functionality test as it would bear no functional relation to any object extrinsic to the key itself.

    Maybe if the applicant had claimed both the key and lock together as a system, or as something like a “security device”, it could have reasonably made the argument that any shape would do. This approach was hinted at by Lourie J. in the opinion. But it could not reasonably make that argument when the key was claimed separately from the lock. The fact that the “device” would be disassemblable into two or more components would be irrelevant–many designs are claimed in the overall appearance of devices disassemblable into a plurality of components.

    In that case, even a party that made only either the lock or the key could still be found to be infringing, under a theory of contributory infringement, producing a component specifically adapted to be used exclusively with the other non-produced component.

    So, to determine functionality, courts MUST consider if a claimed design can be used with a particular undisclosed object, and such consideration imports NOTHING into the claim.

    Sorry to be so inarticulate, I’m still busy. What do you think?

  9. 19

    Perry: To: Inviting Body Punches – I am inviting body punches,

    Oh, in that case please defend your earlier assertion to the effect that “simple designs are more difficult to come up with than complex designs” which is why companies hire large teams of designers. I don’t recall you addressing that bit of ridiculousness.

    Or you can just admit that it sounded nice but it’s actually bogus.

  10. 16


    I do not at all agree with your argument concerning Best Lock.

    The majority had it right. More later.

  11. 15

    Thanks for this. I am going to rethink my attitude towards design patents a bit. I admit I only tend to think of them when it becomes apparent we can’t get utility patent protection.

  12. 12

    Functionality is easily the most misunderstood area of design patent law, an area that the Federal Circuit did not address in Egyptian Goddess except to further muddy the waters by reinforcing the misbegotten view that during Markman claim construction a court needs to identify, i.e., parse, ornamental and functional features of the patented design before giving the case to the trier of fact to determine infringement.

    An awful lot of confusion in this area of law stems from the simple misunderstanding of the fact that all designs consist of de facto functional features – that is what qualifies such articles of manufacture for design patent protection, not disqualifies them. Only a very few de facto functional features are also de jure functional, i.e., cannot be designed in any other way to work for their intended function, thereby improperly monopolizing the broad function.

    To address Prof. Couch’s initial thesis, the Federal Circuit’s 1996 Best Lock case has been the “go to” test for functionality of a claimed design that allegedly must be shaped the way it is shaped in order to mate with an unclaimed, indeed undisclosed, part (in the Best Lock case, the claimed design was a key blade blank that was held de jure functional on the ground that no other shape would fit into its undisclosed mating keyway). I believe that the better view is expressed by Judge Newman’s dissent in that case, as brought to light in the recent case PHG Tech’s, LLC v. St. John Co’s, Inc., 529 F.Supp.2d 852 (M.D. Tenn. 2007), where the court rejected a similar argument that the particular layout of labels on the claimed label sheet was dictated by the fact that the undisclosed software used to print the labels would not work with any other label sheet layout. The court rejected this view, citing the Federal Circuit’s earlier Berry Sterling case that stood for the proposition that a court cannot impose limitations on the claimed design taken from the commercial product that it is intended to cover. In other words, a court should not consider whether a patented design can be used with any particular undisclosed part when there are no such limitations within the design patent itself. In effect, to hold otherwise would improperly import into a design patent claim undisclosed features of commercial products. It is not hard to imagine that the extension of such a standard would adversely affect the validity of all design patents.

    I refer the interested reader to my article “Functionality and Design Patent Validity and Infringement”, 91 Journal of the Patent and Trademark Office Society (JPTOS) 313, May, 2009.

  13. 11

    Take that wheel above. Not a very broad claim at all. The tire portion should all be in dashed lines. I would argue that the shading in the orifices should be gone, as well. I would draft a much broader claim.

  14. 10

    Design patents are great primarily because of the damages. You get the profits of the infringer. Who could ask for more. Saves lots of money during litigation for damages by making the case pretty much one about infringement with virtually little or no costs to determine damages. The biggest issue with design patents is that many patent attorneys do not draft broad claims. They are confused about the environment compared to the claimed subject matter. It is really frustrating at times.

  15. 9

    Here’s a question…

    If Apple has a design patent for the look of the iPhone shape, then they should likely be able to use it to prevent competitors from selling a phone that looks the same. However, if a replacement parts company is selling just the outside shell of the iPhone as a replacement part, shouldn’t the parts company be able to sell the replacement shell? In one case the design patent seems to be enforceable and in another case it is not.

    Does a design patent’s validity depend on how it is being enforced?

  16. 8

    JA – You asked about design patents being asserted by non-manufacturers.

    I’m working with some data on design patent litigation. There are a few examples of non-manufacturers asserting design rights (e.g., Tony Colida), but the vast majority of cases are manufacturers asserting that the accused infringer is involved in creating knock-offs or something similar.

  17. 7

    Once more into the “never-neverland” between functionality, ornamentality, trade dress, and trademark. Let’s get the opinion of our design expert. Perry Saidman-what say you?

  18. 6

    In recent years (and in the wake of Wal-Mart v. Samara), design patents have begun be more aggressively asserted by manufacturers in place of (or alongside) trade dress claims.

    Is there any evidence supporting an increase in design patents being asserted by non-manufacturers?

  19. 4

    I agree that design patents are undervalued (primarily by patent attorneys). This is especially true if you consider their low cost.

    Buy one today!

  20. 3


    My experience is typical–not one rejection for 101, 102, 103, 112.

    I have received objections to drawings, and restriction requirements, but that is it–other than that, a rather expensive registration system.

    You should see what the “examiners” cite as prior art–it is often so far off as to be laughable–like they were trying to put in the file a critical number of references to make it look like they did some work.

  21. 2

    RE: Design patents being undervalued.

    PA – I agree that design patents are undervalued (primarily by patent attorneys). This is especially true if you consider their low cost. My analysis of design patent PAIR data shows that the PTO is operating as a de facto registration system more than ninety-eight percent (98%) of the patents in my study being issued without the Patent Office challenging their inventiveness.

  22. 1

    I think design patents are a so undervalued and under followed… it’s a quick and cheap way to get some protection. Granted, it’s not for every product, but there are so many products, that, for example, aren’t ripe for utility patents for one reason or another that could be protected with design patents, but aren’t. It won’t stop a person from selling another mug, but it will stop them from directly copying yours.

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