The Court's Proper Role in Construing the Claim of a Design Patent: Should a Picture Be Worth a Thousand Words?

The Federal Circuit has held that, as with utility patents, design patents must be construed by the court. See Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1577 (Fed. Cir. 1995). This apparently simple mandate has proven difficult in practice. The single claim in a design patent typically consists only of a series of drawings depicting the patented design. The basic premise of Markman ' that a judge's experience with the interpretation of documents will likely allow him or her to produce a more accurate and consistent claim interpretation ' does not intuitively extend to design patents, nor is it apparent that a judge's interpretation of the drawings will be any more proper and uniform than a jury's interpretation.

Moreover, the design patent infringement tests performed by a jury ' the “ordinary observer” and “point of novelty” tests ' require the jury to compare the drawings of the patented design to the accused device and only find infringement where the accused design appropriates the novel features of the design patent. Neither of these tests requires the jury to have a description in words of the drawings for comparison with the accused design.

Not surprisingly, district courts have encountered some difficulty when performing a Markman claim construction on a design patent claim. The primary difficulty has been in determining whether the interpretation of the claim should result in a detailed description in words of the patent drawings or just a simple reference to the drawings as depicting the scope of the design patent claim. Requiring a detailed description of the design appears to contradict the fundamental reason for granting a patent for a design ' that the design itself is worthy of protection and will be best depicted in graphic form, as opposed to words. Specifically, each design patent application may only include a single claim, M.P.E.P. '1503.03, which must refer to the ornamental design for the article as shown in the drawings. 37 C.F.R. 1.153 (emphasis added). Furthermore, an applicant is given an opportunity to include a written description of the design if he or she so desires, but a description is not required. M.P.E.P. '1503.01.

The rationale behind having the drawings represent the claim of a design patent is that, more often than not, the “illustration is the best description” of what is to be patented. M.P.E.P. '1503.01. It therefore seems inconsistent to issue a patent on the basis of a claim consisting of drawings, but to then require the invention to be reduced to words (per Markman) in order to enforce that patent.

A secondary question arises as to what other issues must be addressed by the judge in the course of interpreting a design patent claim. The second step of a design patent infringement analysis calls for the jury to compare the nonfunctional and novel aspects of the patented design with the accused design. Catalina Lighting, Inc. v. Lamps Plus, Inc., 295 F.3d 1277, 1286 (Fed. Cir. 2002). This leads to the question: Should the judge be responsible for identifying those nonfunctional and novel features as part of a claim construction analysis, or should the jury be charged with this task during its infringement analysis?

Black & Decker, Inc. v. Pro-Tech

Several district courts have run head-on into these issues and have dealt with them in various ways. One approach was exemplified by the District Court for the Eastern District of Virginia in Black & Decker Inc. v. Pro-Tech Power Inc., 47 U.S.P.Q.2d 1843, 1845-46 (E.D. Va. 1998). At the Markman hearing, the defendant argued for a verbal interpretation of every visual element pictured in the patent, while the plaintiff argued that the court need only define the claim as the “overall ornamental visual impression” depicted in the drawings.

The court concluded, based on the PTO's rules of practice, that the “illustration is its own best description,” and the proper claim construction is simply a reference to the drawings, without an attempt to define the claim in words. Id., at 1845. Other district courts have similarly held that the drawings of the design are the best description for claim construction purposes. See Street Flyers LLC v. Gen-X Sports Inc., 2003 WL 21998960, *14 (S.D.N.Y. Aug. 22, 2003); ADC Telecomms., Inc. v. Panduit Corp., 200 F. Supp. 2d 1022, 1033 (D. Minn. 2002); Hsin Ten Enter. USA, Inc. v. Clark Enters., 149 F. Supp. 2d 60, 64 (S.D.N.Y. 2001).

The court in Black & Decker also battled with whether a court should identify the design's nonfunctional features for purposes of the ordinary observer infringement test. Under the ordinary observer test, a design patent is only infringed where an ordinary observer would be deceived by reason of nonfunctional features appearing in both the claimed and accused designs. Acknowledging that the logic of Markman simply did not extend to determining which aspects of a design patent are nonfunctional, the court found that identifying functional features is a question of fact for the jury to determine during its infringement analysis. Black & Decker, 47 U.S.P.Q.2d at 1847. The court elaborated that determining functional features should be a question of fact because:

• the Federal Circuit treats design patent invalidity determinations due to functionality as a question of fact;
• treating functionality as a question of fact for design patent infringement is consistent with the treatment of the same issue for trademarks and trade dress; and
• deciding which features of the design are functional will generally come down to the credibility of expert witnesses, a factual assessment reserved for the jury.

Finally, the Black & Decker court considered the extent to which claim construction should address the second part of the design patent infringement test ' the point of novelty test. Under the point of novelty test, a jury can only find design patent infringement if the accused design appropriates the novel ornamental features of the patented design that distinguish it from the prior art. Catalina Lighting, 295 F.3d at 1286-87. Recognizing that what the prior art teaches is a question of fact, and what the prior art teaches is at the heart of the point of novelty determination, the court concluded that designating the points of novelty of a design patent should also be a question of fact for the jury. Black & Decker, 47 U.S.P.Q.2d at 1847.

Minka Lighting, Inc. v. Craftmade

Faced with the same issues, the District Court for the Northern District of Texas arrived at a far different result. Minka Lighting, Inc. v. Craftmade Int'l, Inc., 2001 WL 1012685 (N.D. Tex. 2001). The Minka court recognized that requiring a lengthy written description for design patent claim construction has the potential to lead to a complete rewriting of the claim ' a violation of the cardinal rules of claim construction. Consequently, the court distinguished between rewriting the claims and resolving disputes in the meaning of claims, as called for by Markman. In the Minka court's view, the first role of a district court in construing a design patent claim should be to determine the extent to which a patented design requires an explanation in words to define the design that has been patented. Id. at *17-18.

The Minka court also considered how an interpretation of a design patent claim affects a jury's ability to properly perform the infringement tests. In one respect, simply referring to the drawings may have the effect of misleading the jury into believing that it need not consider other necessary factors, eg, that the common features must be nonfunctional and the accused design must appropriate the novel attributes of the patented design. In another respect, handing the jury a detailed list of elements may result in removing the traditional infringement tests from the jury and leading it to simply compare the extensive list of features of the patented design with the appearance of the accused design. The court cautiously observed that any description provided by the court to the jury should simply assist the jury in understanding the legal effect of the claim, but not require the jury to compare the court's description to the accused product.

Turning to the Federal Circuit's Durling v. Spectrum Furniture Co. and OddzOn Prods. Inc. v. Just Toys, Inc. cases for guidance, the court decided that a “reasonably detailed description of the various ornamental features of the claimed design … was appropriate in order to properly evoke, in words, the visual image of the overall appearance.” The court ultimately concluded that a court's claim construction of a design patent must be in the form of a description sufficient to assist the jury in understanding the legal effect of a patented design, and produced a lengthy written description of the design. Id. at *21. This sentiment is shared with other courts as well. See Lamps Plus, Inc. v. Dolan, 2003 WL 22435702, *4 (N.D. Tex. Aug. 26, 2003); Five Star Mfg., Inc. v. Ramp Lite Mfg., Inc., 44 F. Supp. 2d 1149, 1155 (D. Kan. 1999).

The court in Minka also considered whether identifying a design patent's nonfunctional features should be a part of claim construction. The court again looked to OddzOn for guidance, and observed that the Federal Circuit directly answered this question when it stated: “Where a design contains both functional and nonfunctional elements, the scope of the claim must be construed in order to identify the nonfunctional aspects of the design as shown in the patent.” Although the Federal Circuit was not explicitly clear whether the judge or jury should be the one to construe the claim, the court in Minka found that “it would seem most consistent with the Markman rationale that trial courts should, as OddzOn suggests, identify the nonfunctional aspects of the patented design as part of the court's claim construction.” Minka Lighting, 2001 WL at *24.

Finally, the court found that designating a design patent's novel points is a question of fact to be determined by the jury for the same reasons identified by the court in Black & Decker. Id. at *24-25. The fact that these two courts held consistently on this issue, however, does not mean the issue is resolved. Other courts have found that designating the points of novelty in a design patent is a question of law for the court to decide during its claim construction. See Hsin Ten Enter. USA, Inc. v. Clark Enters., 149 F. Supp. 2d 60 (S.D.N.Y. 2001) and Metrokane, Inc. v. Wine Enthusiast, 185 F. Supp. 2d 321 (S.D.N.Y. 2002).

Conclusion

Black & Decker and Minka are only two out of many cases that have dealt with the issue of design patent claim construction, but both illustrate the difficulties in this seemingly simple process.

The Federal Circuit has held that, as with utility patents, design patents must be construed by the court. See Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1577 (Fed. Cir. 1995). This apparently simple mandate has proven difficult in practice. The single claim in a design patent typically consists only of a series of drawings depicting the patented design. The basic premise of Markman ' that a judge's experience with the interpretation of documents will likely allow him or her to produce a more accurate and consistent claim interpretation ' does not intuitively extend to design patents, nor is it apparent that a judge's interpretation of the drawings will be any more proper and uniform than a jury's interpretation.

Moreover, the design patent infringement tests performed by a jury ' the “ordinary observer” and “point of novelty” tests ' require the jury to compare the drawings of the patented design to the accused device and only find infringement where the accused design appropriates the novel features of the design patent. Neither of these tests requires the jury to have a description in words of the drawings for comparison with the accused design.

Not surprisingly, district courts have encountered some difficulty when performing a Markman claim construction on a design patent claim. The primary difficulty has been in determining whether the interpretation of the claim should result in a detailed description in words of the patent drawings or just a simple reference to the drawings as depicting the scope of the design patent claim. Requiring a detailed description of the design appears to contradict the fundamental reason for granting a patent for a design ' that the design itself is worthy of protection and will be best depicted in graphic form, as opposed to words. Specifically, each design patent application may only include a single claim, M.P.E.P. '1503.03, which must refer to the ornamental design for the article as shown in the drawings. 37 C.F.R. 1.153 (emphasis added). Furthermore, an applicant is given an opportunity to include a written description of the design if he or she so desires, but a description is not required. M.P.E.P. '1503.01.

The rationale behind having the drawings represent the claim of a design patent is that, more often than not, the “illustration is the best description” of what is to be patented. M.P.E.P. '1503.01. It therefore seems inconsistent to issue a patent on the basis of a claim consisting of drawings, but to then require the invention to be reduced to words (per Markman) in order to enforce that patent.

A secondary question arises as to what other issues must be addressed by the judge in the course of interpreting a design patent claim. The second step of a design patent infringement analysis calls for the jury to compare the nonfunctional and novel aspects of the patented design with the accused design. Catalina Lighting, Inc. v. Lamps Plus, Inc., 295 F.3d 1277, 1286 (Fed. Cir. 2002). This leads to the question: Should the judge be responsible for identifying those nonfunctional and novel features as part of a claim construction analysis, or should the jury be charged with this task during its infringement analysis?

Black & Decker, Inc. v. Pro-Tech

Several district courts have run head-on into these issues and have dealt with them in various ways. One approach was exemplified by the District Court for the Eastern District of Virginia in Black & Decker Inc. v. Pro-Tech Power Inc., 47 U.S.P.Q.2d 1843, 1845-46 (E.D. Va. 1998). At the Markman hearing, the defendant argued for a verbal interpretation of every visual element pictured in the patent, while the plaintiff argued that the court need only define the claim as the “overall ornamental visual impression” depicted in the drawings.

The court concluded, based on the PTO's rules of practice, that the “illustration is its own best description,” and the proper claim construction is simply a reference to the drawings, without an attempt to define the claim in words. Id., at 1845. Other district courts have similarly held that the drawings of the design are the best description for claim construction purposes. See Street Flyers LLC v. Gen-X Sports Inc., 2003 WL 21998960, *14 (S.D.N.Y. Aug. 22, 2003); ADC Telecomms., Inc. v. Panduit Corp., 200 F. Supp. 2d 1022, 1033 (D. Minn. 2002); Hsin Ten Enter. USA, Inc. v. Clark Enters., 149 F. Supp. 2d 60, 64 (S.D.N.Y. 2001).

The court in Black & Decker also battled with whether a court should identify the design's nonfunctional features for purposes of the ordinary observer infringement test. Under the ordinary observer test, a design patent is only infringed where an ordinary observer would be deceived by reason of nonfunctional features appearing in both the claimed and accused designs. Acknowledging that the logic of Markman simply did not extend to determining which aspects of a design patent are nonfunctional, the court found that identifying functional features is a question of fact for the jury to determine during its infringement analysis. Black & Decker, 47 U.S.P.Q.2d at 1847. The court elaborated that determining functional features should be a question of fact because:

• the Federal Circuit treats design patent invalidity determinations due to functionality as a question of fact;
• treating functionality as a question of fact for design patent infringement is consistent with the treatment of the same issue for trademarks and trade dress; and
• deciding which features of the design are functional will generally come down to the credibility of expert witnesses, a factual assessment reserved for the jury.

Finally, the Black & Decker court considered the extent to which claim construction should address the second part of the design patent infringement test ' the point of novelty test. Under the point of novelty test, a jury can only find design patent infringement if the accused design appropriates the novel ornamental features of the patented design that distinguish it from the prior art. Catalina Lighting, 295 F.3d at 1286-87. Recognizing that what the prior art teaches is a question of fact, and what the prior art teaches is at the heart of the point of novelty determination, the court concluded that designating the points of novelty of a design patent should also be a question of fact for the jury. Black & Decker, 47 U.S.P.Q.2d at 1847.

Minka Lighting, Inc. v. Craftmade

Faced with the same issues, the District Court for the Northern District of Texas arrived at a far different result. Minka Lighting, Inc. v. Craftmade Int'l, Inc., 2001 WL 1012685 (N.D. Tex. 2001). The Minka court recognized that requiring a lengthy written description for design patent claim construction has the potential to lead to a complete rewriting of the claim ' a violation of the cardinal rules of claim construction. Consequently, the court distinguished between rewriting the claims and resolving disputes in the meaning of claims, as called for by Markman. In the Minka court's view, the first role of a district court in construing a design patent claim should be to determine the extent to which a patented design requires an explanation in words to define the design that has been patented. Id. at *17-18.

The Minka court also considered how an interpretation of a design patent claim affects a jury's ability to properly perform the infringement tests. In one respect, simply referring to the drawings may have the effect of misleading the jury into believing that it need not consider other necessary factors, eg, that the common features must be nonfunctional and the accused design must appropriate the novel attributes of the patented design. In another respect, handing the jury a detailed list of elements may result in removing the traditional infringement tests from the jury and leading it to simply compare the extensive list of features of the patented design with the appearance of the accused design. The court cautiously observed that any description provided by the court to the jury should simply assist the jury in understanding the legal effect of the claim, but not require the jury to compare the court's description to the accused product.

Turning to the Federal Circuit's Durling v. Spectrum Furniture Co. and OddzOn Prods. Inc. v. Just Toys, Inc. cases for guidance, the court decided that a “reasonably detailed description of the various ornamental features of the claimed design … was appropriate in order to properly evoke, in words, the visual image of the overall appearance.” The court ultimately concluded that a court's claim construction of a design patent must be in the form of a description sufficient to assist the jury in understanding the legal effect of a patented design, and produced a lengthy written description of the design. Id. at *21. This sentiment is shared with other courts as well. See Lamps Plus, Inc. v. Dolan, 2003 WL 22435702, *4 (N.D. Tex. Aug. 26, 2003); Five Star Mfg., Inc. v. Ramp Lite Mfg., Inc., 44 F. Supp. 2d 1149, 1155 (D. Kan. 1999).

The court in Minka also considered whether identifying a design patent's nonfunctional features should be a part of claim construction. The court again looked to OddzOn for guidance, and observed that the Federal Circuit directly answered this question when it stated: “Where a design contains both functional and nonfunctional elements, the scope of the claim must be construed in order to identify the nonfunctional aspects of the design as shown in the patent.” Although the Federal Circuit was not explicitly clear whether the judge or jury should be the one to construe the claim, the court in Minka found that “it would seem most consistent with the Markman rationale that trial courts should, as OddzOn suggests, identify the nonfunctional aspects of the patented design as part of the court's claim construction.” Minka Lighting, 2001 WL at *24.

Finally, the court found that designating a design patent's novel points is a question of fact to be determined by the jury for the same reasons identified by the court in Black & Decker. Id. at *24-25. The fact that these two courts held consistently on this issue, however, does not mean the issue is resolved. Other courts have found that designating the points of novelty in a design patent is a question of law for the court to decide during its claim construction. See Hsin Ten Enter. USA, Inc. v. Clark Enters., 149 F. Supp. 2d 60 (S.D.N.Y. 2001) and Metrokane, Inc. v. Wine Enthusiast, 185 F. Supp. 2d 321 (S.D.N.Y. 2002).

Conclusion

Black & Decker and Minka are only two out of many cases that have dealt with the issue of design patent claim construction, but both illustrate the difficulties in this seemingly simple process.