Notre Dame Law Review
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e Demise of the Functionality Doctrine in
Design Patent Law
Perry J. Saidman
Saidman DesignLaw Group, LLC
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THE DEMISE OF THE FUNCTIONALITY DOCTRINE
IN DESIGN PATENT LAW
Perry J. Saidman*
I
NTRODUCTION
.................................................. 1471
R
I. L
ANGUAGE
M
ATTERS
...................................... 1472
R
II. F
UNCTIONALITY AND
I
NFRINGEMENT
........................ 1473
R
A. Egyptian Goddess .................................... 1473
R
1. Markman Claim Construction..................... 1473
R
2. The New Test for Infringement .................. 1474
R
B. Claim Construction, Scope & Functionality ............... 1475
R
C. Recent Significant Caselaw.............................. 1477
R
D. Industry Standard Utilitarian Features ................... 1479
R
III. F
UNCTIONALITY AND
V
ALIDITY
............................. 1480
R
A. Development of “Ornamental” and “Functional” ........... 1481
R
B. The Alternative Designs Test ............................ 1483
R
C. The Problem with the Alternative Designs Test ............. 1486
R
C
ONCLUSION
.................................................... 1490
R
I
NTRODUCTION
The so-called doctrine of functionality arises in both design patent valid-
ity and infringement analyses. Broadly stated, the doctrine seeks to ensure
that design patents do not monopolize that which should only be monopo-
lized with utility patents.
1
In general, a utility patent protects utilitarian con-
cepts embodied in a product, while a design patent protects only the specific
visual embodiment of such concepts, i.e., the product’s appearance.
2
©
2017 Perry J. Saidman. Individuals and nonprofit institutions may reproduce and
distribute copies of this Article in any format at or below cost, for educational purposes, so
long as each copy identifies the author, provides a citation to the Notre Dame Law Review,
and includes this provision in the copyright notice.
* Principal, Saidman DesignLaw Group, LLC, a law firm in Silver Spring, Maryland,
that specializes in legal issues involving designs and product configurations. The opinions
expressed herein are those of the author only and do not necessarily represent those of
any client of the firm.
1D
ONALD
S. C
HISUM
, C
HISUM ON
P
ATENTS
§ 23.03[4] (2006).
2 Id. § 23.01.
1471
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1472 notre dame law review [vol. 92:4
In establishing the scope of a design patent during Markman claim con-
struction,
3
the functionality doctrine has proven to be unworkable—and is in
fact unnecessary—as a precursor to determining infringement. In consider-
ing design patent validity, the so-called doctrine of functionality no longer
plays any meaningful role.
On the infringement side, lower courts during Markman have rather
consistently tried to “factor out” elements of the design that appear to be
“functional,” a meaningless exercise that if pursued to its natural end will
wind up with a claim to nothing.
4
Recent decisions from the Federal Circuit
have recognized this reality.
5
Concerns about claimed utilitarian features
that may comprise an industry standard or an essential component are taken
into account during normal infringement analysis.
On the validity side, the lower courts remain somewhat confused as to
how to determine whether a claimed design is impermissibly “functional.”
Most courts lose sight of the fact that a design can both have utilitarian fea-
tures and also have an overall appearance that is protectable. Currently, the
go-to validity test for functionality is whether there are alternative designs to
the one claimed in the design patent-in-suit that perform substantially the
same function; if there are, the design patent is said not to monopolize that
function.
6
Recent Federal Circuit cases affirm the primacy of the alternative
designs test, but omit analysis of the critically important and outcome-deter-
minative word: “function.”
7
This Essay will explore ramifications of the defi-
nition of “function.”
There have been significant developments since my earlier article
8
on
design patent functionality. This Essay will discuss these developments, and
present my perhaps startling conclusion: the doctrine of functionality, in
both the validity and infringement contexts, has outlived its usefulness, and
analyzing it is a waste of litigants’ and judicial resources.
9
I. L
ANGUAGE
M
ATTERS
One problem that runs throughout the cases is the confusing use of the
words “ornamental” and “functional.” The former is a requirement for a
3 See generally Markman v. Westview Instruments Inc., 517 U.S. 370 (1996) (establish-
ing that patent claims must be construed as a matter of law prior to a jury trial in an
infringement case).
4 See, e.g., Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1293 (Fed. Cir. 2010).
5 See, e.g., Sport Dimension, Inc. v. Coleman Co., 820 F.3d 1316 (Fed. Cir. 2016).
6 See, e.g., Best Lock Corp. v. Ilco Unican Corp., 94 F.3d 1563, 1566 (Fed. Cir. 1996).
7 See, e.g., Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 1329–30 (Fed.
Cir. 2015).
8 Perry J. Saidman, Functionality and Design Patent Validity and Infringement, 91 J. P
AT
. &
T
RADEMARK
O
FF
. S
OC
’
Y
313 (2009).
9 An earlier version of the thesis of this Essay was presented by the author at Design
Law 2014, George Washington University Law School (Nov. 21, 2014).
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2017] demise of the functionality doctrine 1473
design to constitute statutory subject matter under 35 U.S.C. § 171,
10
while
the latter is a creation of the caselaw.
11
It is challenging to understand what these terms mean when using them
to define each other. It is not helpful, for example, to say that a design that is
functional is not ornamental, or that a design that is ornamental is not
functional.
The word “functional” in particular is problematic because it has two
meanings. It can mean either de facto functional, i.e., a design or element
that performs a function, or de jure functional, i.e., a design that is impermis-
sibly legally functional.
12
Courts tend to use both meanings interchangeably,
which has led to quite a bit of confusion.
The same is true for the word “ornamental.” Since it is a statutory
requirement, it is not helpful to say things such as “the overall ornamental
appearance of the claimed design,” and similar phrases that are frequently
found in the caselaw.
13
In an attempt to address these difficulties, wherever possible in this Essay
the word “appearance” will be used rather than “ornamental” in instances
other than where de jure ornamental is meant. Likewise, the word “utilita-
rian” shall be used rather than “functional” to connote de facto functional
features in instances other than where de jure functional is meant. Of
course, no quotes from the caselaw will be altered.
II. F
UNCTIONALITY AND
I
NFRINGEMENT
A. Egyptian Goddess
The seminal 2008 Egyptian Goddess decision
14
had a profound effect on
the test for design patent infringement, particularly on how the scope of a
design patent claim is determined during Markman claim construction, as
well as on the subsequent comparison of the construed design patent claim
to the accused product when conducting the test for infringement.
1. Markman Claim Construction
One of the questions presented for en banc review in the Egyptian God-
dess case was whether claim construction should apply to design patents and,
if so, what role it should play in the infringement analysis.
15
10 35 U.S.C. § 171 (2012) (“Whoever invents any new, original and ornamental design
for an article of manufacture may obtain a patent therefor . . . .”).
11 See Saidman, supra note 8, at 317–18.
12 See In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 1337 (C.C.P.A. 1982) (recog-
nizing this language difficulty and providing the de facto and de jure definitions, which
very unfortunately were not adopted in subsequent court decisions).
13 See, e.g., Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1578 (Fed. Cir. 1995) (empha-
sis omitted).
14 Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (en banc).
15 Egyptian Goddess, Inc. v. Swisa, Inc., 256 F. App’x 357, 357–58 (Fed. Cir. 2007) (en
banc) (per curiam).
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1474 notre dame law review [vol. 92:4
Up until the time of that case, lower courts routinely construed design
patent claims by drafting extensive verbal descriptions of what was shown in
the design patent drawings.
16
This greatly advantaged accused infringers.
17
The Federal Circuit in Egyptian Goddess effectively put the practice to rest,
stating: “Given the recognized difficulties entailed in trying to describe a
design in words, the preferable course ordinarily will be for a district court
not to attempt to ‘construe’ a design patent claim by providing a detailed
verbal description of the claimed design.”
18
At the same time, the court, in discussing claim construction for a design
patent, stated that “a trial court can usefully guide the finder of fact by
addressing a number of . . . issues that bear on the scope of the claim. Those
include . . . distinguishing between those features of the claimed design that
are ornamental and those that are purely functional.”
19
Unfortunately, there
was no guidance as to how this should be done.
2. The New Test for Infringement
In Egyptian Goddess, the court also dispensed with the point of novelty
infringement test, which had been another refuge for accused infringers.
20
The court found that the sole test for determining whether a design patent
has been infringed is the “ordinary observer” test of Gorham Co. v. White
21
:
[I]f, in the eye of an ordinary observer, giving such attention as a purchaser
usually gives, two designs are substantially the same, if the resemblance is
such as to deceive such an observer, inducing him to purchase one suppos-
ing it to be the other, the first one patented is infringed by the other.
22
At the same time, the court also tweaked the ordinary observer test:
“[T]he ordinary observer is deemed to view the differences between the pat-
ented design and the accused product in the context of the prior art.”
23
Thus, a comparison of the claimed design, the accused product, and the
prior art became central to design patent infringement determinations.
The court provided the following guidelines on how to apply the new
Egyptian Goddess infringement test (i.e., how to take the prior art into
account). These guidelines have an indirect bearing on the doctrine of func-
tionality, as will be discussed below.
24
16 See Perry J. Saidman & Allison Singh, The Death of Gorham Co. v. White: Killing It
Softly with Markman, 86 J. P
AT
. & T
RADEMARK
O
FF
. S
OC
’
Y
792, 793 (2004).
17 See id.
18 Egyptian Goddess, 543 F.3d at 679.
19 Id. at 680.
20 See Perry J. Saidman, What Is the Point of the Point of Novelty Test for Design Patent
Infringement?, 90 J. P
AT
. & T
RADEMARK
O
FF
. S
OC
’
Y
401, 407–08 (2008).
21 81 U.S. (14 Wall.) 511 (1871).
22 Id. at 528.
23 Egyptian Goddess, 543 F.3d at 676 (emphasis added).
24 See infra Section II.C.
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• “[W]hen the claimed design is close to the prior art designs, small differ-
ences between the accused design and the claimed design are likely to be
important to the eye of the hypothetical ordinary observer.”
25
• “If the accused design has copied a particular feature of the claimed
design that departs conspicuously from the prior art, the accused design
is naturally more likely to be regarded as deceptively similar to the
claimed design, and thus infringing.”
26
• “If the claimed design consists of a combination of old features that cre-
ates an appearance deceptively similar to the accused design, even to an
observer familiar with similar prior art designs, a finding of infringement
would be justified.”
27
• “Where there are many examples of similar prior art designs . . . , differ-
ences between the claimed and accused designs that might not be notice-
able in the abstract can become significant to the hypothetical ordinary
observer who is conversant with the prior art.”
28
• “In some instances, the claimed design and the accused design will be
sufficiently distinct that it will be clear without more that the patentee
has not met its burden of proving the two designs would appear ‘substan-
tially the same’ to the ordinary observer . . . .”
29
B. Claim Construction, Scope, and Functionality
As explored in my earlier paper, the 1992 decision of Read Corp. v. Portec,
Inc., is perhaps the earliest case to use the utilitarian features of a patented
design as a factor in analyzing design patent infringement.
30
In discussing
the spoon and fork handles of Gorham Co. v. White, the Read court stated:
[A]ll elements forming the claimed design were ornamental. Where this is
not the case, that is, [when] a design is composed of functional as well as
ornamental features, to prove infringement a patent owner must establish
that an ordinary person would be deceived by reason of the common fea-
tures in the claimed and accused designs which are ornamental.
31
The Read case created the misbegotten notion that non-utilitarian and
utilitarian features of a patented design need to be identified so that the
subsequent infringement comparison occurs only between the appearance of
non-utilitarian features.
32
This parsing analysis was carried forward through several cases includ-
ing, as noted above, the Egyptian Goddess case.
33
25 Egyptian Goddess, 543 F.3d at 676.
26 Id. at 677.
27 Id. at 677–78.
28 Id. at 678.
29 Id. (quoting Gorham Co. v. White, 81 U.S. (14 Wall.) 511, 513 (1871)).
30 See Saidman, supra note 8, at 325–29.
31 Read Corp. v. Portec, Inc., 970 F.2d 816, 825 (Fed. Cir. 1992). This is an excellent
example of the confusing use of the words “functional” and “ornamental.” See supra Part I.
32 See Read, 970 F.2d at 825–26.
33 See Egyptian Goddess, 543 F.3d at 665; see also supra subsection II.A.1.
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1476 notre dame law review [vol. 92:4
The nadir of this thinking occurred in Richardson v. Stanley Works, Inc.,
involving a design patent on a construction tool combining the utilitarian
features of a hammerhead, crowbar, jaw, and handle.
34
The Federal Circuit
made the following statement that created a bit of chaos in the subsequent
caselaw: “The district court here properly factored out the functional aspects
of Richardson’s design as part of its claim construction.”
35
In my 2009 article, I explored the underlying rationale of the “factoring
out” exercise when analyzing infringement and concluded that it is the same
as in validity analysis: you cannot use a design patent as a utility patent to
protect utilitarian ideas.
36
This is very likely what Mr. Richardson tried to do:
enforce his relatively narrow design patent claim against Stanley Works who
had simply used the broad utilitarian concepts of Richardson’s product, but
not its design (appearance). The use of the broad utilitarian concepts of
Richardson’s claimed design by Stanley Works, and the conclusion that the
latter did not infringe the former, is almost immediately apparent by simply
looking at the plainly dissimilar designs:
37
F
IGURE
1
RICHARDSON STANLEY WORKS
38
Absent a utility patent claiming the combination of the handle, hammer-
head, jaw, and crowbar, those utilitarian features are in the public domain
and may be used by anyone, including Stanley Works.
39
The design patent
law simply says that Stanley Works’ tool cannot look substantially the same in
overall appearance as Richardson’s, which it did not.
40
No infringement.
41
End of story.
Although the Federal Circuit came down with the right decision on
infringement, its statement that “functional” features need to be factored out
before determining infringement did not sit well with design patentees, and
became a handy weapon for accused infringers.
42
34 See Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1290–91 (Fed. Cir. 2010).
35 Id. at 1293.
36 See Saidman, supra note 8, at 326–36.
37 See Richardson, 597 F.3d at 1291–92. These designs are sufficiently distinct such that
consideration of the prior art is unnecessary. See supra subsection II.A.2.e.
38 Richardson, 597 F.3d at 1291–92.
39 See id. at 1293.
40 Id. at 1293–95.
41 Id. at 1296.
42 Saidman, supra note 8, at 328. See generally Christopher V. Carani, Design Patent
Functionality: A Sensible Solution, 7 L
ANDSLIDE
19 (2014).
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2017] demise of the functionality doctrine 1477
After using the unfortunate “factoring out” language, the Federal Circuit
in Richardson correctly concluded:
By definition, the patented design is for a multi-function tool that has several
functional components, and we have made clear that a design patent, unlike
a utility patent, limits protection to the ornamental design of the article. If
the patented design is primarily functional rather than ornamental, the pat-
ent is invalid. However, when the design also contains ornamental aspects, it
is entitled to a design patent whose scope is limited to those aspects alone
and does not extend to any functional elements of the claimed article. . . .
. . . .
Richardson’s argument that the court erred in separating out functional
aspects of his design essentially is an argument for a claim scope that
includes the utilitarian elements of his multi-function tool. We agree with
the district court that it would indeed be improper to allow Richardson to do
so. The ’167 patent specifically claims “the ornamental design” for the
multi-function tool shown in the drawings. A claim to a design containing
numerous functional elements, such as here, necessarily mandates a narrow
construction. Nothing in our en banc Egyptian Goddess opinion compels a
different outcome.
43
C. Recent Significant Caselaw
The demise of the “factoring out” exercise has been made quite clear in
recent Federal Circuit caselaw, particularly the 2015 and 2016 Ethicon and
Sport Dimension cases.
44
Ethicon Endo-Surgery, Inc. v. Covidien, Inc.
45
involved the design of an
ultrasonic surgical device. One of the design patents at issue, D661,804,
claimed the combination of three elements: a U-shaped trigger, fluted torque
knob, and rounded activation button
46
:
F
IGURE
2
43 Richardson, 597 F.3d at 1293–94 (citations omitted) (first citing Lee v. Dayton-Hud-
son Corp., 838 F.2d 1186, 1188 (Fed. Cir. 1988); and then citing L.A. Gear, Inc. v. Thom
McAn Shoe Co., 988 F.2d 1117, 1123 (Fed. Cir. 1993)). The confusing use of “functional”
and “ornamental” is self-evident. See also supra Part I.
44 See Sport Dimension, Inc. v. Coleman Co., 820 F.3d 1316 (Fed. Cir. 2016); Ethicon
Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312 (Fed. Cir. 2015).
45 796 F.3d 1312 (Fed. Cir. 2015).
46 Id. at 1314, 1327.
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1478 notre dame law review [vol. 92:4
The lower court during claim construction “factored out” each of these
so-called “functional” elements, concluding therefore that the ’804 design
patent covered “nothing.”
47
The Federal Circuit reversed, saying that the
lower court failed to account for the particular appearance of the admittedly
utilitarian elements: “the district court ignored the facts that the trigger has a
particular curved design, the torque knob has a particular flat-front shape,
and the activation button has a particular rounded appearance.”
48
The Federal Circuit solidified its thinking from Richardson, namely that
it is only the broad underlying concepts that cannot be protected—i.e., need
to be “factored out” of a design patent claim—in order to avoid using the
design patent as a utility patent.
49
One is always left with the appearance
aspects of those same utilitarian features to compare to the accused product
in determining infringement.
This is a very significant analytical approach in determining the scope of
a design patent claim prior to determining infringement. Namely, all utilita-
rian elements have a particular appearance. And no matter how visually sig-
nificant the utilitarian element is, it is its particular appearance, in
combination with the appearance of all other claimed elements, that is com-
pared to the accused product in determining infringement. In other words,
the appearance aspects of all claimed elements, whether utilitarian or not,
are taken into account in determining infringement.
A short while later, this approach was confirmed by the Federal Circuit.
Sport Dimension, Inc. v. Coleman Co.
50
involved a design for a flotation device
that had several utilitarian features, including two armbands and a tapered
torso
51
:
F
IGURE
3
In discussing its earlier cases, the court stated
52
:
[The functional elements of the patented design in Richardson] were well
known in the art, and their basic design was dictated by their respective func-
tional purposes. But there were nevertheless ornamental aspects of the
design of those elements . . . . [T]he [lower] court’s construction properly
47 Id. at 1328, 1332–33.
48 Id. at 1334.
49 See Saidman, supra note 8, at 326–36.
50 820 F.3d 1316 (Fed. Cir. 2016).
51 Id. at 1318.
52 One must forgive, again, the court’s confusing use of “functional” and “ornamen-
tal.” See supra Part I.
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ensured that the claim provided protection, albeit narrow, over those aspects
of the tool that were ornamental.
53
In discussing Ethicon, decided the preceding year, the Sport Dimension
court noted: “While we agreed that certain elements of the [Ethicon] device
were functional, their functionality did not preclude those elements from
having protectable ornamentation.”
54
The court, using somewhat convoluted language, correctly concluded:
In OddzOn, Richardson, and Ethicon, we construed design patent claims
so as to assist a finder of fact in distinguishing between functional and orna-
mental features. But in no case did we entirely eliminate a structural ele-
ment from the claimed ornamental design, even though that element also
served a functional purpose.
55
It cannot be overemphasized. All designs by their very nature include
utilitarian features, the presence of which does not disqualify the design from
being protected by a design patent. Such utilitarian features are not pro-
tected as utilitarian features. Rather, it is the design, the associated appear-
ance, of those utilitarian features that are properly protected by a design
patent and are to be compared to an accused product when analyzing
infringement.
Thus, the statement in Egyptian Goddess that a court during claim con-
struction could be helpful to the fact-finder by identifying “functional” fea-
tures that need to be distinguished from “ornamental” features prior to
determining infringement was simply a very inelegant way of saying that a
design patent does not protect the utility of utilitarian features, only their
particular appearance. Thus, utilitarian features do not need to be identified
or “factored out” during Markman claim construction.
Omitting consideration of utilitarian features during claim construction,
as advocated in this Essay, will not result in monopolization of the utilitarian
aspects of such features, it will only result in the inability of competitors to
use substantially the same appearance as the combination of claimed utilita-
rian features in their products.
D. Industry Standard Utilitarian Features
If a particular design is dominated by a utilitarian feature that is either
an industry standard, i.e., in the prior art, or necessary for a product to oper-
ate at all, then the regular tests used to determine design patent infringe-
ment will take such concerns into account. Recall that in Egyptian Goddess,
the Court inter alia provided the following guidelines
56
:
53 Sport Dimension, 820 F.3d at 1321 (citations omitted).
54 Id.
55 Id.
56 See supra subsection II.A.2.
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1480 notre dame law review [vol. 92:4
• “[W]hen the claimed design is close to the prior art designs, small differ-
ences between the accused design and the claimed design are likely to be
important to the eye of the hypothetical ordinary observer.”
57
• “Where there are many examples of similar prior art designs . . . , differ-
ences between the claimed and accused designs that might not be notice-
able in the abstract can become significant to the hypothetical ordinary
observer who is conversant with the prior art.”
58
Since all elements of a design, whether utilitarian or not, have an associ-
ated appearance, if that appearance happens to be dominated by utilitarian
elements that are industry standards, i.e., of necessity similar to prior art
designs, then small differences between a claimed design and an accused
product which are normally not very noticeable will become visually more
significant, assuming greater importance to a hypothetical ordinary observer.
In other words, if a design is dominated by an industry standard utilitarian
feature, a competitor need only worry about making sure that other visual
elements of his product are sufficiently different from those of the claimed
design in order to avoid infringement.
Although a detailed comparison with functionality doctrines applied in
the EU’s Registered Community Design regime is beyond the scope of this
paper, the U.S. approach of taking functionality concerns into account—
albeit indirectly—during infringement analysis is similar to the approach in
Europe. As noted by one commentary, the EU’s degree of freedom rule is a
good tool for dealing with functionality concerns.
59
The degree of freedom
analysis essentially says that where utilitarian considerations do not leave
designers with much freedom to change the appearance of a product from
prior art products, then minor differences between a registered design and
an accused product may be sufficient to avoid infringement.
60
In contrast,
when the designer is not faced with utilitarian constraints, then the scope of
the registered design is broader, such that a competitor’s product needs to
be visually more different to avoid infringement. This approach in the EU is
quite similar to that mandated by Egyptian Goddess in its infringement guide-
lines discussed above.
III. F
UNCTIONALITY AND
V
ALIDITY
Statutory subject matter for design patents is governed by 35 U.S.C.
§ 171: “Whoever invents any new, original and ornamental design for an arti-
cle of manufacture may obtain a patent therefor, subject to the conditions
and requirements of this title.”
61
57 Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 676 (Fed. Cir. 2008) (en banc).
58 Id. at 678.
59 See Jason J. Du Mont & Mark D. Janis, Functionality in U.S. Design Patent & Community
Design Law (Ind. Univ. Maurer Sch. of Law, Research Paper No. 342, 2016), https://papers
.ssrn.com/sol3/papers.cfm?abstract_id=2773070.
60 See, e.g., Case T-41/14, Argo Dev. & Mfg. Ltd v. Clapbanner Ltd, 2015 E.C.R. R 981/
2012-3 ¶ 37–48.
61 35 U.S.C. § 171 (2012).
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In order to be patentable, therefore, a design must be “ornamental.”
Today, the common understanding is that a design which is “functional” can-
not be “ornamental.”
62
Therefore, a brief exploration of the origin of these
terms may be helpful.
A. Development of “Ornamental” and “Functional”
The first design patent statute, the 1842 Patent Act, defined the subject
matter of a valid design patent to be “any new and original design for a man-
ufacture . . . , or any new and original impression or ornament . . . , or any
new and original shape or configuration of any article of manufacture.”
63
The meaning of the term “ornament” was therefore not the same as the
meaning of the term “shape or configuration”; they were distinctly different
qualities.
64
This distinction between ornament and shape/configuration of a prod-
uct began to fade with the Patent Act of 1902 wherein the qualifying lan-
guage to obtain a design patent was condensed from several categories of
new and original designs to an “ornamental” design for an article of manu-
facture.
65
Significantly, the word “useful” from the 1842 Act disappeared
from the 1902 Act in favor of “ornamental.”
66
When “ornamental” became a requirement for design patentability
under the 1902 Act, a series of subsequent cases endeavored to define it.
More often than not, it was used to connote an aesthetic quality.
Typical of these cases was Rose Manufacturing Co. v. E. A. Whitehouse Man-
ufacturing Co., where, in a case involving the design of a license plate holder,
the court held that a design is ornamental if it “appeals to the aesthetic
faculty of the observer.”
67
Judge Learned Hand of the Second Circuit went a bit further in holding
that “ornamental” means that a design “has at least a rudimentary aesthetic
appeal.”
68
Thus, the quality of being “ornamental” presented a relatively low
bar for a product to qualify for a design patent.
69
62 See U.S. P
ATENT
& T
RADEMARK
O
FFICE
, M
ANUAL OF
P
ATENT
E
XAMINING
P
ROCEDURE
§ 1504.01(c) (9th ed., rev. Nov. 2015).
63 Act of August 29, 1842, ch. 263, § 3, 5 Stat. 543, 543–44.
64 See Gorham Co. v. White, 81 U.S. (41 Wall.) 511, 525 (1871) (Designs patentable
include “a new or original . . . ornament to be placed on any article of manufacture . . . or a
new and original shape or configuration of any article of manufacture—it is one or all of
these that the law has in view.”).
65 See Act of May 9, 1902, ch. 783, 32 Stat. 193.
66 Compare § 3, 5 Stat. at 543–44, with 32 Stat. at 193 (amending Revised Statutes, tit.
LX, ch. 1, § 4929 (1874)).
67 201 F. 926, 929 (D.N.J. 1913) (first citing Rowe v. Blodgett & Clapp Co., 112 F. 61
(2d. Cir. 1901) (per curiam); and then citing Williams Calk Co. v. Kemmerer. 145 F. 928
(3d Cir. 1906)); see also Majestic Elec. Dev. Co. v. Westinghouse Elec. & Mfg. Co., 276 F.
676 (9th Cir. 1921).
68 H.C. White Co. v. Morton E. Converse & Son Co., 20 F.2d 311, 312 (2d Cir. 1927).
69 This is similar to the standard for determining whether a work is sufficiently “origi-
nal” to qualify for copyright protection: “[T]he originality requirement [in copyright law]
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1482 notre dame law review [vol. 92:4
Other cases attempted to evaluate the aesthetic qualities of a product
design, and some began to compare it to the product’s utilitarian qualities.
There is no evidence that [the] form [of the product] appeals in any way to
the eye, or serves to commend it to purchasers and users as a thing of
beauty. There is not a scintilla of evidence that the sale of a single [product]
was ever induced by reason of any attractiveness in its appearance. Func-
tional utility entitled the patentee to the mechanical patent already dis-
cussed, but mere functional utility did not entitle him to a design patent for
the same article.
70
Over the years it has been recognized that when it comes to designs,
courts are rather poor arbiters of aesthetic qualities.
71
A 1920 case involving the design for a wall-mounted holder for soap
articulated an early rationale for the functionality doctrine. “[T]he same
device or article may exhibit patentable mechanical invention and a patenta-
ble design; but it is not true that the design can ever be used to appropriate
(per se) the mechanical function.”
72
The caselaw began to develop the notion that a design that was “func-
tional” was not “ornamental” and thus not entitled to a design patent. “The
appearance of the patent in suit is due to functional features entirely and
does not amount to patentable ornamental design.”
73
The terms “ornamental” and “functional” became opposite sides of the
same coin.
74
is not particularly stringent.” Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 358
(1991). The work must possess “at least some minimal degree of creativity.” Id. at 345.
The “creativity” element sets an extremely low bar that is cleared quite easily. It requires
only that a work “possess some creative spark, ‘no matter how crude, humble or obvious’ it
might be.” Id. (quoting 1 M. N
IMMER
& D. N
IMMER
, C
OPYRIGHT
§
1.08[C][1] (1990)).
70 Williams v. Syracuse & S.R. Co., 161 F. 571, 574 (C.C.N.D.N.Y. 1908) (quoting Brad-
ley v. Eccles, 126 F. 945, 949 (2d Cir. 1903)).
71 See G
RAEME
B. D
INWOODIE
& M
ARK
D. J
ANIS
, T
RADE
D
RESS AND
D
ESIGN
L
AW
316–18
(2010) (contrasting copyrights and industrial designs by writing: “design patents are con-
cerned with the industrial arts, not the fine arts” (quoting Contico Int’l, Inc. v. Rub-
bermaid Commercial Prods., Inc., 665 F.2d 820, 825 (8th Cir. 1981))). The Contico court
continued: “Perhaps it is too much to expect that a trash-can dolly be beautiful. It is
enough for present purposes that it is not ugly, especially when compared to prior
designs.” Contico, 665 F.2d at 825.
72 Baker v. Hughes-Evans Co., 270 F. 97, 99 (2d Cir. 1920).
73 Heyer v. Allen Elec. & Equip. Co., 37 F. Supp. 455, 457 (W.D. Mich. 1939), aff’d, 117
F.2d 739 (6th Cir. 1941) (mem.).
74 See Circle S Prods. Co. v. Powell Prods., Inc., 174 F.2d 562, 564 (7th Cir. 1949) (“It
has been held that a design patent cannot properly be obtained on the shape of a device
which necessarily results from its mechanical parts.”); id. (“[I]ts shape and configuration
are dictated by mechanical and functional requirements rather than those of design.”);
Smith v. Dental Prods. Co., 140 F.2d 140, 153 (7th Cir. 1944) (“It was certainly not the
intent of the law to grant monopoly to purely conventional design which is in itself little
more than a necessary response to the purpose of the article designed.” (quoting Applied
Arts Corp. v. Grand Rapids Metalcraft Corp., 67 F.2d 428, 430 (6th Cir. 1933))); Conn.
Paper Prods., Inc. v. N.Y. Paper Co., 39 F. Supp. 127, 134 (D. Md. 1941) (“It is well settled
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2017] demise of the functionality doctrine 1483
The stated policy underlying the doctrine of functionality was to draw a
bright line between protectable designs and those which impermissibly
monopolize the utilitarian features of the design.
75
This generally accepted policy did not translate immediately into any
coherent analytic framework. Some cases said that if a design was “primarily
functional” rather than “primarily ornamental,” it did not qualify for design
patent protection.
76
But there was no guidance on how to determine what
was “primarily functional” and what was “primarily ornamental.” Other cases
said that a claimed design that was “dictated by function,” “dictated by func-
tional considerations,” or “solely dictated by function” was invalid, although
again there was little guidance on how to apply those tests.
77
The Supreme Court, specifically addressing design patents, albeit in
dicta, agreed: ‘‘To qualify for protection, a design must present an aestheti-
cally pleasing appearance that is not dictated by function alone.”
78
B. The Alternative Designs Test
In developing the needed guidance to determine whether a design was
“ornamental” or “functional,” several courts latched onto the notion that if a
claimed design can be shown to have alternative designs that perform sub-
stantially the same function, it was evidence that the claimed design was not
monopolizing that function, and therefore “ornamental.”
One of the earliest cases to adopt this methodology was Bergstrom v.
Sears, Roebuck & Co.,
79
involving a design patent for a fireplace grate.
80
F
IGURE
4
that design patents should issue only upon ornamental or aesthetic features of a device,
and cannot dominate functional or utilitarian features. That is to say, when a design dif-
fers from the prior art merely through the addition of some feature placed there for purely
functional purposes, such design is not patentable.”), aff’d in part and rev’d in part, 127 F.2d
423 (4th Cir. 1942).
75 See C
HISUM
, supra note 1, § 23.03[4].
76 See, e.g., Power Controls Corp. v. Hybrinetics, Inc., 806 F.2d 234, 239 (Fed. Cir.
1986).
77 See Perry J. Saidman & John M. Hintz, The Doctrine of Functionality in Design Patent
Cases, 19 U. B
ALT
. L. R
EV
. 352, 353–55 (1989).
78 Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 148 (1989).
79 496 F. Supp. 476 (D. Minn. 1980).
80 Id. at 489.
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1484 notre dame law review [vol. 92:4
The court said:
The evidence undeniably establishes that there are numerous possible
design solutions for tubular fireplace grates which operate on convective
heat principles.
. . . . Considerations of function may very well dictate the general “C” shape
of the tubular fireplace grate. This does not mean that functional objectives
invariably dictate the configuration found in the Bergstrom design, or that
any tubular fireplace grate operating on convective heat principles will look
the same. . . . The myriad of alternatives in terms of the appearance of fire-
place grate designs, and the variables which exist in terms of the elements
which comprise the overall design, compel the conclusion that the Berg-
strom patent is not invalid for functionality.
81
There was also recognition by the courts that just because a design per-
formed a function did not disqualify it for design patent protection.
82
While it is true that Butler’s design embodies some functional features,
that fact alone does not make the design unpatentable. Here the court finds
that the Butler design patent is not dictated solely by function. Other
designs could easily fulfill the same function. The evidence at trial of Mr.
Kostanecki and Dr. Porter established to the court’s satisfaction that there
were a variety of alternative designs available which would have fulfilled the
same function as Butler’s design patent.
83
The Federal Circuit ran with a pair of sneaker cases both to affirm that
all industrial designs have utilitarian features and to adopt the alternative
designs test. In the 1988 seminal decision of Avia Group International, Inc. v.
L.A. Gear California, Inc.,
84
the court said:
There is no dispute that shoes are functional and that certain features of the
shoe designs in issue perform functions. However, a distinction exists
between the functionality of an article or features thereof and the function-
ality of the particular design of such article or features thereof that perform
a function. Were that not true, it would not be possible to obtain a design
patent on a utilitarian article of manufacture.
. . . “If the functional aspect or purpose could be accomplished in many
other ways that [sic] is involved in this very design, that fact is enough to
destroy the claim that this design is primarily functional.”
85
81 Id.
82 The USPTO today agrees. “The distinction must be maintained between the orna-
mental design and the article in which the design is embodied. The design for the article
cannot be assumed to lack ornamentality merely because the article of manufacture would
seem to be [de facto] primarily functional.” U.S. P
ATENT
& T
RADEMARK
O
FFICE
, supra note
62, § 1504.01(c).
83 John O. Butler Co. v. Block Drug Co., 620 F. Supp. 771, 777 (N.D. Ill. 1985) (cita-
tions omitted).
84 853 F.2d 1557 (Fed. Cir. 1988).
85 Id. at 1563 (alteration in original) (internal quotation marks omitted) (quoting
Pensa Inc. v. L.A. Gear Cal. Inc., No. CV-86-5549, 1987 WL 125071, at *5 (C.D. Cal. June
15, 1987)).
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The alternative designs test was affirmed several years later in L.A. Gear,
Inc. v. Thom McAn Shoe Co.
86
:
The district court remarked on the existence of a myriad of athletic
shoe designs in which each of the functions identified by Melville as per-
formed by the ’081 design elements was achieved in a way other than by the
design of the ’081 patent. When there are several ways to achieve the func-
tion of an article of manufacture, the design of the article is more likely to
serve a primarily ornamental purpose.
87
The principal case in which the Federal Circuit invalidated a design pat-
ent based on functionality is Best Lock Corp. v. Ilco Unican Corp.
88
The pat-
ented design was a key blade blank.
89
The court, after stating the alternative
designs test,
90
concluded that no other shape of this key blade design would
fit into its corresponding mating keyway/lock and thus the design patent was
invalid.
91
F
IGURE
5
86 988 F.2d 1117 (Fed. Cir. 1993).
87 Id. at 1123 (citing Avia, 853 F.2d at 1563).
88 94 F.3d 1563 (Fed. Cir. 1996).
89 Id. at 1564.
90 “A design is not dictated solely by its function when alternative designs for the arti-
cle of manufacture are available.” Id. at 1566 (citing Thom McAn, 988 F.2d at 1123).
91 See id.
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1486 notre dame law review [vol. 92:4
Judge Newman’s dissent in Best Lock pointed out that many products are
designed in tandem, to fit with one another, and that should not disqualify
them for design patent protection.
92
She said that the majority lost sight of
the difference between the utilitarian features of the product and the func-
tionality of the claimed design:
The parties to this litigation agree that there are myriad possible designs
of key profiles. All keys require, of course, mating keyways. In holding that
because the key must fit a keyway, the abstract design of the key profile is
converted to one solely of function, the court creates an exception to design
patent subject matter. An arbitrary design of a useful article is not statutorily
excluded from § 171 simply because in use it interacts with an article of com-
plementary design.
. . . . The design of the key profile was not dictated by the design of the
keyway, and indeed the two share the same arbitrary design.
In sum, the fact that the key blade is the mate of a keyway does not
convert the arbitrary key profile into a primarily functional design. It is not
the design of the key profile that is functional, but the key itself.
93
The following year the Berry Sterling case proposed that the alternative
designs test was only one of a number of factors that should be considered in
determining whether a design is impermissibly functional.
94
The factor-
based test of Berry Sterling has not been widely followed, and recent case law
attests to the primacy and importance of the alternative designs test.
95
In
Ethicon, the court said: “We have often focused . . . on the availability of
alternative designs as an important—if not dispositive—factor in evaluating
the legal functionality of a claimed design.”
96
In so holding, it appropriately relegated the Berry Sterling list of factors to
a back burner: “[W]hile the Berry Sterling factors can provide useful gui-
dance, an inquiry into whether a claimed design is primarily functional
should begin with an inquiry into the existence of alternative designs.”
97
C. The Problem with the Alternative Designs Test
Since the alternative designs test requires consideration of the patented
design’s function, the question becomes: How does one define “function?”
92 See id. at 1569 (Newman, J., dissenting).
93 Id. (citations omitted).
94 See Berry Sterling Corp. v. Pescor Plastics, Inc., 122 F.3d 1452, 1456 (Fed. Cir. 1997)
(“Consideration of alternative designs, if present, is a useful tool that may allow a court to
conclude that a challenged design is not invalid for functionality . . . . [A]lternative designs
join the list of other appropriate considerations for assessing whether the patented design
as a whole—its overall appearance—was dictated by functional considerations.”).
95 The similarity between Berry Sterling’s list of design patent functionality factors and
those considered during an analysis of trade dress functionality has been noted. See Said-
man, supra note 8, at 321–25.
96 Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 1329–30 (Fed. Cir.
2015) (emphasis added).
97 Id. at 1330.
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Surprisingly, no court has addressed that question, even though the defini-
tion of “function” in any given case is outcome determinative, as discussed
below.
More particularly, does “function” refer to the general function of the
claimed design, or the specific function of the claimed design? For example,
consider how to define the function of an electrical connector, such as that
covered by U.S. Patent No. D440,539, which was asserted in several design
patent litigations some years ago.
98
F
IGURE
6
99
The design patentee may well describe the claimed design as an electri-
cal connector that conducts electricity from a cable to another connector/
cable.
Obviously, this is a broad, general definition of the connector’s function,
and it is not difficult to imagine a myriad of alternate connector designs that
could perform that function, and that do not look substantially the same as
the ’539 claimed design, resulting in a finding of validity.
An accused infringer, on the other hand, would be likely to define the
function of the ’539 claimed design more narrowly (as occurred during the
various lawsuits involving the ’539 patent), such as:
[A]n electrical connector used to hand-terminate a cable during installation
thereof to a TV, the connector conducting electricity from a shielded coaxial
cable to a center-pin conductor with a hex tightening nut, where the electri-
cal signal is attenuated no more than 5%, the hex nut occupies no more
than 25% of the length of the connector, and the connector is crimped to
the cable during installation rather than soldered.
100
This is a very specific, narrow definition of the claimed connector’s function.
With such a narrow definition, the ’539 claimed electrical connector
could be found invalid based on functionality, because it is far less likely that
there are alternative designs that can perform substantially that same func-
98 See, e.g., John Mezzalingua Assocs., Inc. v. Int’l Trade Comm’n, 660 F.3d 1322 (Fed.
Cir. 2011). I served as an expert witness on behalf of the patentee in some of these
litigations.
99 U.S. Patent No. D440,539 (filed Apr. 28, 2000).
100 Saidman, supra note 8, at 318.
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1488 notre dame law review [vol. 92:4
tion. I took the position in my 2009 paper
101
that a specific, narrow defini-
tion of the function of a claimed design is improper because there would
never be any alternative designs that could perform substantially the same
function, and no design patent would then be valid.
102
However, as noted above for the ’539 connector, “function” may refer to
the broad, general function of a design.
103
Yet if the function of a claimed
design is defined in general, broad terms, there will always be alternatives
that can perform substantially the same function and not look like the pat-
ented design. This is true even for the simplest of designs.
The Best Lock case from the Federal Circuit frames the issue perfectly.
104
The court invalidated the design patent because it defined its function—
without explicitly saying so—very narrowly, namely, a key blade blank that fits
within its corresponding keyway of a mating lock.
105
In other words, the
length, width, height, shapes, and angles of ridges, valleys, notches, and
grooves of the claimed key blade blank had to be formed exactly as shown in
the design patent drawings in order to fit within its mating keyway/lock.
106
No other shape will work. This is a logical analysis, yet it is based on a very
narrow definition of the function of the claimed key blade blank, namely its
specific geometry. On the other hand, if the function of the design was
defined broadly, e.g., a key blade that can mate with a keyway in a lock, then
there are a large number of alternate key blade designs that would work to
perform substantially the same function, as noted in the Best Lock dissent,
107
which would result in a holding of validity.
Along the spectrum of definitions of “function” there is a wide range
between broad and narrow. The difficulty lies in the fact that there is no
“correct” definition of the “function” of a design, and there is no judicial
guidance about how to determine it. The ability of a patentee or an accused
infringer, respectively, to draft a broad or narrow definition of “function” for
any given design, and to have it adopted by the finder of fact, results in an
alternative designs test that is not meaningful. In other words, the alternative
designs test, thought to be the go-to litmus test for functionality, becomes
like a nose of wax, one that can be twisted and turned by litigants to make the
101 See id. at 318–21.
102 The narrow definition of the function of the electrical connector may be challenged
for another reason: it imports into the design patent limitations of the commercial product
that are clearly outside of the four corners of the design patent document. See PHG
Techs., LLC v. St. John Cos., 529 F. Supp. 2d 852, 863 (M.D. Tenn. 2007) (citing Berry
Sterling Corp. v. Pescor Plastics, Inc., 122 F.3d 1452, 1455 (Fed. Cir. 1997)).
103 See Saidman, supra note 8, at 318–21 for additional examples.
104 See Best Lock Corp. v. Ilco Unican Corp., 94 F.3d 1563 (Fed. Cir. 1996).
105 Id. at 1566.
106 The disclosure of the commercial mating lock was outside the four corners of the
patent document. See id.
107 Id. at 1567, 1569 (Newman, J., dissenting) (“[T]here are said to be ‘thousands’ of
alternative key blade profiles . . . . The parties to this litigation agree that there are myriad
possible designs of key profiles.”).
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2017] demise of the functionality doctrine 1489
same design patent either valid or invalid, depending upon whose definition
of “function” prevails.
108
Since the alternative designs test—thought to be the only objective test
that goes to the rationale of the functionality doctrine—is not meaningful, so
too is the functionality doctrine that relies on it. In other words, if the alter-
native design test is meaningless, then its underlying premise—that a doc-
trine of functionality is necessary to prevent a design patent from being used
as a utility patent—is false. Thus, an assessment of the functionality of a
design patent serves no purpose and ultimately is a waste of time, money, and
judicial resources.
If the doctrine of functionality for design patent validity is dispensed
with, the other statutory gateways to patentability nevertheless remain.
Namely, a design must still be novel and nonobvious under 35 U.S.C. § 102
and § 103 in order to be patentable.
109
Competitors can still design their
own products that function as do patented designs yet do not look like them.
There is no necessity for a competitor to copy a patentee’s design in order to
compete in the utilitarian aspects of the product.
The dispensation of the functionality doctrine for validity also makes
sense because, as noted in the previous sections on infringement, all designs
have utilitarian features.
110
They must, in order to qualify for design patent
protection as an article of manufacture.
111
All utilitarian features have an asso-
ciated appearance.
112
It is the overall appearance of all claimed features—
whether utilitarian or not—that matters in prior art validity determinations.
The remaining issue is then how the term “ornamental” should be evalu-
ated under 35 U.S.C. § 171. With due regard to the dangers of putting aes-
thetic judgments in the hands of the courts, the standard for establishing that
a product design is ornamental should be a fairly low bar.
113
It seems to this
author that Judge Learned Hand in H.C. White Co. v. Morton E. Converse &
108 This is reminiscent of the infirmities of the point of novelty test for infringement,
struck down for similar reasons by the Federal Circuit in Egyptian Goddess. See Egyptian
Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 671 (Fed. Cir. 2008) (“[T]he point of novelty test
has proved more difficult to apply where the claimed design has numerous features that
can be considered points of novelty, or where multiple prior art references are in issue and
the claimed design consists of a combination of features, each of which could be found in
one or more prior art designs . . . . [This] has led to disagreement over whether combina-
tions of features, or the overall appearance of a design, can constitute the point of novelty
of the claimed design.”).
109 A design must also be “original” to be patentable. 35 U.S.C. § 171 (2012). There is
scant case law interpreting “original.” The USPTO rejects designs for lacking originality
when inventors claim a naturally occurring article. U.S. P
ATENT
& T
RADEMARK
O
FFICE
,
supra note 62, § 1504.01(d) (citing In re Smith, 77 F.2d 514, 515 (C.C.P.A. 1935)).
110 See supra Section III.B (discussion of Avia Group).
111 See 35 U.S.C. § 171.
112 See supra Section II.C (discussions of Ethicon and Sport Dimension).
113 See supra note 69.
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1490 notre dame law review [vol. 92:4
Son Co. had it about right: an “ornamental” design is one that “has at least a
rudimentary aesthetic appeal.”
114
This concept is well accepted in copyright law. The low standard for
establishing “originality” is rationally accepted in copyright law; so, too,
should a low standard for establishing “ornamentality” be rationally accepted
in design patent law.
115
C
ONCLUSION
The doctrine of functionality has outlived its usefulness. Initially, it was
created by the case law to guard against using a design patent to protect
utilitarian features. When the courts realized that all product designs
include utilitarian features, they began to understand that they could not
invalidate design patents simply because the claimed design had one or more
functions associated with it. The purpose of the doctrine of functionality
evolved to mean that one cannot use a design patent to monopolize the utili-
tarian features of a product—to draw a clear line between design patent sub-
ject matter and utility patent subject matter. Over time, the courts realized
that utilitarian features of a product design cannot be monopolized by a
design patent if alternative designs—products that do not look like the prod-
uct in question—perform substantially the same function. Those alternative
designs were deemed to be proof that the design patent was not monopoliz-
ing those utilitarian features—only the particular appearance of one embodi-
ment of those features.
This Essay posits that because it is possible to vary or manipulate the
definition of the “function” of a design in the alternative designs test between
broad and narrow, the same design patent might be found valid or invalid.
Because of that, the alternative designs test itself is made meaningless, and
thus the doctrine of functionality that depended on analysis of that test is
rendered meaningless.
Regarding design patent infringement, it is now understood that the
notion of factoring out utilitarian features during Markman claim construc-
tion makes no sense. Moreover, conventional tests for design patent
infringement require a comparison of the overall claimed design—utilitarian
elements included—to the accused product, in light of the prior art. If the
prior art products are replete with utilitarian features that of necessity are
also found in the claimed design and accused product, i.e., so-called industry
standard utilitarian features, then the infringement inquiry will focus on
appearance features other than those necessary utilitarian features. The pos-
sibility of a design patent claim covering an accused product whose major
similarity to the claimed design is a necessary utilitarian feature is thereby
minimized.
It is perfectly appropriate that the functionality doctrine for both validity
and infringement be buried, since all designs have associated utilitarian fea-
114 H.C. White Co. v. Morton E. Converse & Son Co., 20 F.2d 311, 312 (2d Cir. 1927).
115 See supra note 71.
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2017] demise of the functionality doctrine 1491
tures incorporated therein, and all utilitarian features have an associated
appearance that, if claimed, can and should be taken into account in deter-
mining both validity and infringement. Moreover, competitors, as always, are
free to design products that use the same utilitarian features as long as they
do not look substantially the same as the patented design.
Thus, the doctrine of functionality, in both the realms of validity and
infringement, serves no purpose, and continued analysis of that doctrine is a
waste of resources.
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1492 notre dame law review [vol. 92:4
