DISTRICT COURT WINS GOLD MEDAL IN ITS MISINTERPRETATION OF SPORT DIMENSION

In Range of Motion Products, LLC v. The Armaid Company Inc., a district court in Maine on August 6, 2021 denied plaintiff’s motion for a preliminary injunction based largely on the alleged failure of plaintiff to show a likelihood of success on the merits.  This was based on the court’s flawed analysis of claim construction and infringement.

The district court in its claim construction relied heavily upon Sport Dimension v. Coleman in separating so-called functional features from ornamental features.  It said:

“… the task at this stage of the analysis is to identify the features of the claimed design that are ornamental (and therefore part of the protected design)  and those that are functional (and therefore not protected).”

Slip op. at 12.

However, Sport Dimension did not say that.  The Federal Circuit, in its extensive review of its prior decisions, did say:

 “In OddzOn, Richardson, and Ethicon, we construed design patent claims so as to assist a finder of fact in distinguishing between functional and ornamental features. But in no case did we entirely eliminate a structural element from the claimed ornamental design, even though that element also served a functional purpose.”

The district court in Range did exactly the opposite.  It identified the so-called functional elements and eliminated them from the claim construction.  The  court then performed the super-gymnastic feat (it would have won a gold medal in the new Olympic event: Convoluted Claim Construction) of comparing what was left – the ornamental elements – to  the accused design – in determining infringement.  In so doing, it managed to discount the most probative factor of non-functionality – the existence of alternative designs – by saying (in another medal-worthy analysis) that the alternative presented by the patentee differed in functional aspects.

In its analysis of infringement, the court relied on the highly-flawed Lanard case from the Federal Circuit (see my previous blog), again concluding that the “common basic shape [of the patented and accused designs] is driven by purely functional considerations.”

Rather than dig into the minutiae of the court’s analysis, it would be more helpful, I think, to remind readers of the Federal Circuit’s well-accepted claim construction functionality analysis from Sport Dimension.  The following excerpts should suffice:

“[E]ven though we agree that certain elements of Coleman’s design serve a useful purpose, we reject the district court’s ultimate claim construction. The district court eliminated the armbands and side torso tapering from the claim entirely, so its construction runs contrary to our law. Here, as in Ethicon, “the district court’s construction of the Design Patents to have no scope whatsoever fails to account for the particular ornamentation of the claimed design and departs from our established legal framework for interpreting design patent claims.” Ethicon Endo-Surgery, 796 F.3d at 1334.”

“Although the design patents do not protect … general design concepts of utilitarian elements… they nevertheless protect the particular appearance of the elements.”

In summary: all claimed elements, whether utilitarian or not, must be taken into account in determining infringement,

Said another way:  since all claimed functional elements have an associated appearance, such appearance is part and parcel of the claimed design. 

As I said at the Berkeley conference (BCLT Symposium on Functionality) earlier this year, you can’t ignore utilitarian features simply because they perform some function.  Indeed, all elements of a vast majority of designs perform some sort of function, and if they were to be eliminated there would be nothing left to analyze.

This is so basic that any court decision – such as Range – that does otherwise commits clear error.