FEDERAL CIRCUIT PERPETUATES FUNCTIONALITY MESS, AND DISRESPECTS THE PTO’S REEXAMINATION REGARDING OBVIOUSNESS

In Golden Eye Media v. EVO Lifestyle, the Federal Circuit, in a non-precedential opinion, affirmed the lower court’s grant of summary judgment. In so doing, it continued to muddle the once-clear doctrine of functionality in design patents, and de novo refused to honor the PTO’s reexamination process regarding design patent obviousness.

EVO owns D779,828 (figures shown below) for a reusable and foldable shopping bag that fits within a shopping cart.

The Court clearly stated its solid and long-standing precedent on functionality, including Rosco v. Mirro Lite which said that for a design to be protected by a design patent “the design much not be governed solely by function, i.e., that this is not the only possible form of the article that could perform its function.” Indeed, Rosco is perhaps the high-water mark for the doctrine of functionality; that is, the existence of alternate designs is proof positive that the design patent is not monopolizing any of its functional elements – which is the underlying purpose of the doctrine.

In the lower court, EVO presented clear evidence of multiple alternate designs, which the court essentially ignored, relying on the misbegotten 4-factor test from the Federal Circuit’s Berry Sterling case (these so-called 4 factors were clearly dicta in Berry Sterling; they were mentioned in the last paragraph of the Court’s opinion, without any citation to prior cases). First, the court said that the horizontal straight round poles of the claimed design “were necessary for the purpose of the bag to fit in a cart while standing upright”. But could the poles be other than straight? Could they be curved? Could they be flat? Could they have hooks on the end for holding it upright? Clearly, alternates exist to the claimed straight round poles. Then the court said that the poles [and other features] would “adversely affect the functionality of the bag system”, without explaining how. Could the bag have accordion sides without affecting its function? Could the handles of the bag be rigid, i.e., made of poles, rather than flexible straps as claimed? Then it went off on the patentee’s advertising that touted the functions of the bag. Well, how does the court suggest that advertising be anything other than about how the bag functions? Was there nothing in the patentee’s advertising that showed how the bag looked? And what’s the relationship of this advertising “factor” to whether the bag was solely dictated by function as mandated by Rosco? It’s simply not relevant whether a design performs a function, or whether such functions are advertised. All designs have utilitarian features, otherwise they would not be design patentable subject matter (that is, under 35 USC 171, a design must be “for an article of manufacture” in order to be design patentable).

These so-called four factors, elevated by the Court from dicta in Berry Sterling to “settled law” in the subsequent cases of PHG and Sport Dimension, are eerily similar to factors for determining trade dress functionality in the seminal CCPA Morton-Norwich decision. Should not the Court address the question of why the test for design patent functionality should/should not be the same as that for trade dress functionality? These two areas of the law protect different things – design patents protect the unique ornamental appearance of a design, while trade dress protects consumers from being confused as to the source or origin of the goods. Not only that, but trade dress rights can be perpetual, while design patents expire after 15 years, suggesting that trade dress rights should be subject to a stricter standard for determining functionality, i.e., it should be more difficult for a trade dress owner to prove its design is non-functional.

Even so, through this misbegotten analysis, again (yes, it bears repeating) spawned by dicta in Berry Sterling (perhaps the result of careless law clerk research), the Court opened much wider the door for accused infringers to successfully assert a functionality defense, rendered the solid precedent of Rosco almost toothless.

Moving on to obviousness, the ‘828 patent had been re-examined by the USPTO which determined that it was not obvious over the prior art Doyle patent:

The PTO during re-examination (appn. No. 90/019,000) found the following differences between the ‘828 patent and Doyle, sufficient for it to conclude that the two designs were not basically the same in overall appearance:

*The semi-circular handles are a different appearance than the handles in the ‘828 patent

*There are no seams along the sides

*The handle straps extend the entire height and beneath the bag

*The rods have a different appearance and are shorter than the ‘828 patent

*There is no hook-and-loop fastener between the handles and the trim

The Federal Circuit itself noted a number of differences between the ‘828’s design (on the right) and Doyle (on the left): different handle designs, the rods differed in length and design, and the bags were different shapes [n.b., the images below include the Brennan secondary reference (in the middle), which is only considered if there’s a proper primary reference].

Query: if all five features of the claimed design were not found in a single prior art patent (Doyle), how could Doyle be considered “basically the same”, a prerequisite for a primary reference, as the claimed design? The Court brushed aside those differences, saying they were “slight”, citing its own Spigen case as precedent.

But as explained in a prior blog post, in Spigen the Federal Circuit reversed summary judgment that the ‘218 reference was a proper primary reference against Spigen’s ‘607 patent, based simply on the fact that a reasonable jury could find either way. In other words, Spigen did not stand for what the Court said it stood for: it only held that the question of whether the prior art was a primary reference was too close to call despite the multiple significant differences between Spigen the prior art. So wasn’t the issue of whether the Doyle patent a proper primary reference a question of fact for the jury to decide?

The non-precedential nature of this decision is a blessing.