Court Says Design Patents Can Include Functional Elements

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By Peter Leung

April 19 — A Federal Circuit ruling has placed Coleman Co. in a stronger position to sue a competitor for infringement of its design patent relating to personal flotation devices.

The trial court too narrowly interpreted the scope of Coleman's design patent on the ornamental aspects of a flotation device with two buoyant arm bands connected to a torso piece, the U.S. Court of Appeals for the Federal Circuit said April 19 (Sport Dimension Inc. v. Coleman Co. Inc., 2016 BL 123335, Fed. Cir., 2015-1553, 4/19/16).

While design patents can't cover purely functional designs, they can include features that are both ornamental and functional, the court explained. What's more, design patents should be interpreted as an overall design, not an collection of elements.

Interest in design patents has increased, particularly after Apple successfully asserted its design patents associated with the iPhone against Samsung's smartphones (55 PTD, 3/22/16).

The patent in question is Coleman's U.S. Patent No. D623,714 covering personal flotation devices. Sport Dimension Inc. (SDI) sells its Body Glove flotation devices with two buoyant arm bands connected to a torso section that form a vest on a user. The drawings in Coleman's patent (below) do not include a vest-like torso piece.

(Click on image to enlarge.)

court says design patents can include functional elements

SDI sued for a judgment from the district court declaring that its products do not infringe the patent, after Coleman threatened to sue.

When the trial court interpreted the scope of the design patent, it eliminated several features, including the armbands, because they were functional rather than purely ornamental.

Based on this claim construction, the trial court gave a judgment of noninfringement.

The Federal Circuit said this was in error. Even though it rejected Coleman's claims that the eliminated features were not functional, the court said that it was improper to completely remove them from the patent claim.

The trial court should have looked at the overall design disclosed in the patent and examine what the functional elements contribute to the overall ornamentation of the design, it said.

While design patents protect ornamental aspects and can't cover purely functional designs, a design can contain both functional and ornamental features, it said. in fact, this will often be the case because design patents cover “articles of manufacture” which necessarily will have some useful purpose.

When construing a design patent then, the court needs to limit the scope to identify the non-functional aspects.

Design patents “protect the overall ornamentation of a design, not an aggregation of separable elements,” the court explained. Eliminating individual pieces, as the lower court did here, improperly changed the focus to the individual elements.

Judges Kimberly A. Moore, Todd M. Hughes and Kara F. Stoll heard the case, with Stoll writing the opinion. Manatt, Phelps & Phillips LLP represented SDI and Husch Blackwell LLP represented Coleman.

To contact the reporter on this story: Peter Leung in Washington at

To contact the editor responsible for this story: Mike Wilczek in Washington at

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