Design Patent: Invalid as Unduly Functional

by Dennis Crouch

Golden Eye Media USA v. Evo Lifestyle Products (Fed. Cir. 2022) (nonprecedential).

Evo’s design patent claims an “ornamental design for a foldable bag” as shown in the figures above.  This style of bag is known as a “trolly bag” in the UK and is used in shopping carts (trollies) to maintain order in reusable fashion.

After receiving a threat letter, Golden Eye filed a declaratory judgment action and won on summary judgment. In particular, the S.D.Ca. district court held the patent invalid as both functional and obvious; and also not infringed.

Functionality: Design patents focus on ornamentality rather than utility.  But, this divide quicky become confusing. Although the design must be ornamental, it is simultaneously a “design for an article of manufacture.” I.e., typically a design for a useful item.  The Federal Circuit has attempted to police this divide in a number of cases — trying to discern whether the design is unduly functional (and thus unpatentable as an ornamental design). Certainly, a design falls on the unduly functional side if its patent excludes all possible forms of the article of manufacture in question.  A step further, the court has concluded that a design “dictated by the utilitarian purpose of the article” is not protectable by a design patent. High Point Design LLC v. Buyer’s Direct, Inc., 730 F.3d 1301 (Fed. Cir. 2013).   In several cases, the court has recited a list of additional factors to consider:

  • Does the patent cover the “best design;”
  • Would alternative designs adversely affect the article’s utility;
  • Are there parallel utility patents;
  • Does the advertising tout features as having utility;
  • Are there any elements that are clearly ornamental – i.e., “clearly not dictated by function.”

See Berry Sterling Corp. v. Pescor Plastics, Inc., 122 F.3d 1452 (Fed. Cir. 1997).  Although functionality is a question of fact, the Federal Circuit affirmed that summary judgment was appropriate — finding “no issues of material fact precluding summary judgment.”

Of these factors, the most important appears to be the availability of alternative designs.  The quirk with that key factor is that the burden will be placed on the patentee to present those alternative designs even though the patent is presumed valid.

Obviousness: The court also affirmed on obviousness grounds — finding that an Irish patent filing by Trolly Cart founder (Doyle) created the same overall impression and that the only real difference in cloth handle length that was shown in other prior art bags.

Again, the appellate panel found that summary judgment of obviousness was appropriate. Obviousness is a question of law based upon underlying factual conclusions and summary judgment is appropriate when “the content of the prior art, the scope of the patent claim, and the level of ordinary skill in the art are not in material dispute.”



16 thoughts on “Design Patent: Invalid as Unduly Functional

  1. 4

    OT, but interim PTO Fintiv discretionary IPR petition denial guidelines have just been announced, with significant changes.

  2. 3

    “ it is simultaneously a “design for an article of manufacture.” I.e., typically a design for a useful item.”

    Is that true? Was it always true? Are most designs for “articles of manufacture” in fact designs for ornamental articles (e.g., hood ornaments), as opposed to articles that have a non-ornamental or non-decorative function (e.g., a container)?

    Seems like something the PTO should keep track of and perhaps consider examining differently in some respects.

    Also, some honesty about obviousness in this field would be greatly appreciated. Any “ornamental design” for a liquid container is going to have to be incredibly detailed and radical in order to be non-obvious in view of what’s known to have existed in the history of humanity to date. That should go without saying. Of course, the idea that the PTO should actually examine design patents with some semblance of rigor should also go without saying.

    1. 3.1

      What do you mean by, “ Seems like something the PTO should keep track of and perhaps consider examining differently in some respects.

      On the other thread I offered a remark on functionality in view of tire treads.

      The remark indicates that there is NO (and never has been) strict separation of aspects of an item.

      Just because functionality may be involved does not preclude aspects of design from also being involved.

      Those looking for any type of “strict separation” tend to NOT be inte11ectually honest in their aims.

    2. 3.2

      On your last point, In re Surgisel throws a rather large wrench into your “universalist” views.

    3. 3.3

      The quote here is directly from the statute — “Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.” 35 USC 171.

      Good point though. Originally almost all design patents involved very clear ornamentality; today it is much more difficult to discern what aspects of a design are ornamental vs useful. Unlike copyright, there is no separability requirement in the statute.

      1. 3.3.1

        The fact is that ALL designs have utilitarian elements, and ALL utilitarian elements have an associated appearance. And it is THAT appearance, i.e., the so-called “ornamental” appearance, that is protected by the design patent. The “ornamental” appearance of a utilitarian element may narrow the claim, but its presence does not invalidate it. See the recent Ethicon and Sport Dimension CAFC cases.

  3. 2

    One of the parties could do design patent law a favor by requesting a change in the designation of this decision from nonprecedential to precedential. Especially since the Fed. Cir. reviewed and confirmed de novo the District Court grants of summary judgment here for both functionality and obviousness.

  4. 1

    Not nearly as important as fixing the mess of the Gordian Knot of subject matter eligibility, but please Congress, do something about the mess of trying to show-horn the non-functional protection of Design Patents into a utility protection system.

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