Perry will be making a presentation at the All-Ohio Annual Institute on Intellectual Property (AOAIOIP) next month as part of the patent breakout session in the afternoon.  His topic is:  The Latest and Greatest:  How Design Patent Litigation Informs Prosecution. 

The session will be in Cincinnati on September 18th, moving to Cleveland on September 19th. 

Full program information can be found here.


The U.S. International Trade Commission (ITC) handed down an Initial Determination that a certain line of sofas – the Amelio line manufactured by the Respondent Krug, Inc. – did not infringe U.S. Pat. No. D716,576 (the ‘576 patent) owned by the Complainant Sauder Manufacturing Company.  See In the Matter of Certain Convertible Sofas and Components Thereof, Inv. No. 337-TA-1122 (USITC, July 12, 2019).

Following are FIGS. 3 and 8 of the ‘576 design patent that illustrates a sofa with two upholstered seating areas, each bordered with a vertical armrest, and separated by a flat table member.





And following is a photo of an exemplary accused product:


In its extensive analysis, the ITC got one or two things right.  For example, in analyzing infringement, it cited the Federal Circuit’s Ethicon case, 796 F.3d 1312, 1327 (2015), for the proposition that “functional elements cannot be entirely factored out of a patented design when performing an infringement analysis”, noting that the “fact finder cannot ignore the depicted ornamental aspects of functional elements appearing in the design claim”.

However, it also micro-examined similarities and differences between the patented and accused designs.  It spent 7 full pages noting just about every single difference between the claimed design and the accused design, such as the seat cushion of the ‘576 design wraps in front of the arm, whereas in the accused design the arm extends to the front face of the seat.   

After its exhaustive micro-examination of just about every element of the sofas, it concluded that “the two designs at issue here are plainly dissimilar”. 

But, it did not consider any prior art.  At all.

I have often noted that a conclusion that two designs are “plainly dissimilar” robs the finder of fact from the possibility of concluding that they are substantially the same in view of the prior art.  The ITC ignored its own earlier pronouncement where it quoted the seminal Egyptian Goddess case:  “For purposes of design patents, an ‘ordinary observer’ is one who is familiar with the prior art.  Egyptian Goddess, 543 F.3d at 677.”

This is in spite of the fact that the Respondent Krug in its Verified Response to the Complaint alleged that the ‘576 design was anticipated or made obvious by DE Pat. No. 1790544U (DE ‘544).   The DE ‘544 patent was the only prior art asserted in Krug’s Response that showed a retractable table between two seating surfaces that can also be used for a sleeping surface. Clearly, Krug believed that the DE ‘544 patent was quite close to the ‘576 design. 

What if the ITC had actually considered the prior art DE ‘544 patent in determining infringement, as mandated by Egyptian Goddess?

Shown below are representative figures comparing the ‘576 patented design, the accused Krug design, and the DE ‘544 patent.


’576 Patented Design


Accused Krug Design


Prior Art DE ‘544

Clearly, and without any doubt, the appearance of the ‘576 patented design and the accused design are closer to each other – much closer – than either is to the DE ‘544 patent.  Under normal circumstances, a reasonable finder of fact could easily conclude that the accused design was substantially the same in overall appearance as the patented design. 

One must keep in mind that in an infringement determination the comparison of the patented and accused design is made by “an ordinary observer”.  This is because, as noted by the seminal 1871 Supreme Court case of Gorham v. White, if the comparison was made by an expert, no design patent would ever be infringed, since experts will see many more details than an ordinary observer.  Apparently, the ITC put itself in the role of an expert, noting every jot and tittle in its comparison of the patented and accused designs.  This was directly contrary to Gorham v. White and Egyptian Goddess.

Maybe the fault lies with the Respondent.  The pleadings in this case are mostly confidential, and not accessible.  Thus, it’s not clear whether Respondent failed to raise this issue, or this was simply an error by the Commission.

It’s too bad that after all these years, the prior art can be ignored in analyzing design patent infringement.


The AIPLA is holding a program that will introduce attendees to design rights, including design patents, trade dress and copyrights.  The program will extend over 2 full days, August 5-6, 2019, at the Chicago-Kent Center for Design, Law & Technology in Chicago, IL.

          Perry Saidman will open the first session with “Introduction to Design Patents”, that will include tips on how to handle the “Article of Manufacture” issue that is a hot topic regarding design patent damages.

          The full program and registration information can be found at:,%20IL&FundraisingEvent=0&evt_guest_limit=0


In Tactical Medical Solutions, Inc. v. Dr. Ronald Karl and EMI Emergency Medical International a/k/a Emergency Medical Instruments (ND Ill., June 11, 2019), the court denied EMI’s motion for summary judgment (MSJ) of design patent invalidity based on functionality.

The court’s opinion missed the mark in holding that the issue of functionality in this case needs to be decided by the jury, saying material facts were in dispute.

The author posits that the issue of functionality was clear cut; the claimed design was not functional as a matter of law.

Below is the plaintiff TMS’s U.S. Pat. No. D649,642, next to images of the accused design.

FIG. 1 - U.S. Pat. No. 649,642

FIG. 1 - U.S. Pat. No. 649,642

FIG. 2 - U.S. Pat. No. D649,642

FIG. 2 - U.S. Pat. No. D649,642

TMS case 2.jpg


Note that the claimed design is confined to the shape of the beveled ends, shown in solid lines.

The court relied on the Federal Circuit’s 2015 Ethicon decision, which is the go-to case for design patent functionality.

The district court began on the wrong foot in misquoting Ethicon where it said: “The existence of alternative designs is an important but not dispositive factor [in determining functionality].” (Slip. op. at 14).

The Federal Circuit actually said just the opposite: “…the availability of alternative designs [is] an important – if not dispositive – factor in evaluating the legal functionality of a claimed design.” Ethicon at 1329-1330.

In other words, the Federal Circuit elevated the importance of alternative designs by saying it was very likely a dispositive factor, while the district court reduced the importance of alternative designs by saying that it was not dispositive. This led the district court to analyze the discredited Berry Sterling “factors” (which were dicta in that case), such as “whether the protected design is the best design.” One might as well ask why this factor should matter. Does this factor incentivize the patentee to prove its design is less than the best, or to intentionally make an inferior product? Do witnesses need to testify about the excellence or poor aesthetics of a design? Or, worse yet, the excellence or poor utilitarian aspects of a design? Does this make any sense? As this author has previously written, the functionality factors in Berry Sterling are eerily (and improperly) similar to the factors for determining trade dress functionality (perhaps the result of a law clerk’s sloppy research).

Further, the availability of alternative designs is always dispositive of the issue of design patent functionality. The purpose of the functionality doctrine is to prevent the patentee from using a design patent as a utility patent, i.e., using a design patent to monopolize the function embodied by the claimed design. Thus, if there are alternative designs to the one claimed, that perform substantially the same function, it is proof positive that the claimed design is not monopolizing that function, and therefore is not functional as a matter of law. Period. End of analysis.

In other words, the alternative designs test trumps other considerations, as it should.

The district court compounded its shaky analysis when it examined the “functional purpose” of the beveled ends of the design, forgetting that it’s not the purpose or utilitarian aspects that matter, but rather the appearance aspects. As pointed out in Ethicon: “Articles of manufacture necessarily serve a utilitarian purpose, but design patents are directed to ornamental designs of such articles”, Id. at 1328. Stated differently, all products have utilitarian features, but it’s the appearance of those features that are protected by a design patent.

When the district court finally looked at alternative designs, which clearly existed, it discounted them, saying: “…it is not clear [that] those alternative designs would work as well”, echoing another piece of misguided dicta from Berry Sterling. Having concluded that the issue of functionality could go either way, the court left the issue for the jury.

Let’s hope that design patent litigants – and eventually the courts – will someday “get” how the issue of functionality should be properly analyzed, and avoid wasting court resources.