WHEN IT COMES TO DESIGN PATENT FUNCTIONALITY, PROFESSOR PETER MENELL IS PUNCH DRUNK
Professor Peter Menell once again has come out swinging at design patents. But, like many of the great Muhammad Ali’s opponents, he’s gonna get knocked out.
The Professor organized a design patent conference about a year ago, hosted by the School of Law at the University of California, Berkeley, based on his thesis that design patent law has an “identity crises” that focused on the doctrine of design patent functionality. Peter invited the speakers, of which I was one, to submit papers that were recently published in Vol. 36 of the Berkeley Technology Law Journal in its issue called the “Design Patents Symposium”.
Apparently my paper “A Primer on Design Patent Functionality”, 36 Berkeley Tech. L.J. 147 (2021), did not make much of an impression on Peter. In his rebuttal “The Design Patent Emperor Wears No Clothes: Responding to Advocates of Design Patent Protection for Functionality”, 36 Berkeley Tech. L.J. (2021), he failed to respond to the most fundamental principle in my paper which was written as a primer so even a rookie boxer could understand it.
Of course, I am one of the “advocates” Peter is swinging at (and missing). The other advocate is the distinguished design lawyer Christopher Carani of McAndrews, Held & Malloy. Chris is an internationally recognized expert in the law of design patent functionality. His conference paper “All or Nothing at All: Design Patent’s Ornamentality Requirement and the Failings of Feature Filtration”, 36 Berkeley Tech. L.J. 213 (2021), addresses another of Peter’s misguided notions.
I feel compelled to go a few rounds with Peter to demonstrate his rookie boxing technique. This will be the first round, and a short one, lasting as long as it takes to review this blog, maybe a minute or two. I cannot cover all of his missteps in a single, short blog. There may be more rounds coming up as I slog through his article to address other of his design patent shibboleths, provided I get a satisfactory answer to the basic principle discussed below. In this first round, I will not have to resort to the Ali shuffle; I can stand immobile in the ring and Peter will still miss. The referee should simply declare a TKO and hold up my hand now, negating the need for further rounds and saving Peter a beating.
The basic principle that knocks down virtually all of Peter’s arguments is this: design patents do not protect how utilitarian/functional features or components work, only how they look, their appearance. I’ve never seen any response to this statement from the Professor, or anyone else.
It almost goes without saying that since a design patent protects only how a design looks, not how it works, there is no concern – none – that claimed designs are somehow monopolizing how functional/utilitarian features work. There is absolutely no basis for saying that the utility patent system is being usurped by the design patent system.
The statute that defines design patentable subject matter (35 U.S.C. 171) requires a design to be “for an article of manufacture”. These words also appear as a requirement for design patentability in the 1902 Patent Act (upon which Peter relies heavily in asserting design patents somehow monopolize functional/utilitarian features). An article of manufacture by definition includes functional/utilitarian features. If it was the case, as the good Professor asserts, that design patents that claim functional/utilitarian features do not qualify for design patent protection, there would be no design patents. Is this the goal of Prof. Menell? Probably.
But no modern court has ever said that a design patent is invalid if it simply illustrates, i.e., claims the appearance of, utilitarian components/features. It is the overall appearance of the claimed design, including all utilitarian/functional features, that defines the visually protected subject matter. Post Federal Circuit courts have recognized this simple, basic fact. It is not necessary to delve into the unsophisticated reasoning of ancient cases.
All utilitarian components/features have an appearance, a look. It is their appearance that matters in a design patent, not how they work. I agree with the good Professor that if an inventor wants to protect the function of how such components/features work, i.e., what they do, they must get a utility patent.
As repeatedly [repeat: repeatedly] emphasized in my paper, since a design patent does not protect how utilitarian/functional elements work, it is manifestly true that anyone is free to use the so-called functional/utilitarian elements disclosed in a design patent to perform their functions as long as their product doesn’t LOOK LIKE the overall appearance of the claimed design. The Lee v. Dayton Hudson case, discussed on pp. 154-155 of my paper, is an excellent example of this.
In conclusion, and I don’t know how many times I have to say this before it sinks in: DESIGN PATENTS DO NOT PROTECT THE FUNCTION OF ANY ELEMENTS THAT ARE PART OF THE DESIGN PATENT CLAIM. THEY ONLY PROTECT THE WAY THEY LOOK. ANYONE IS FREE TO USE UTILITARIAN ELEMENTS THAT ARE PART OF THE CLAIMED DESIGN IN THEIR OWN PRODUCTS THAT PERFORM EXACTLY THE SAME FUNCTION, AS LONG AS THEIR PRODUCTS DON’T LOOK LIKE THE OVERALL APPEARANCE OF THE PATENTED DESIGN. The good Professor has, throughout all of his writings, never addressed this basic issue, avoiding it like the plague, because (a) it’s true; and (b) it undercuts every single argument he makes.
In short, this bout should be over on a TKO, before even round two begins, stopped by the referee before Menell is seriously hurt. I need not even enter the ring to contest the rest of Peter’s screed, since I’ve already won. If he is unable to respond to my basic principle, and so far he has not, then the rest of his arguments get TKO’ed as did Joe Frazier in the Thrilla in Manila.
So I call on Peter to once and for all respond to that very simple and basic principle, namely, that a design patent does not protect the function of any of the functional/utilitarian features claimed as part of an overall design; it only protects the appearance of the entire claimed design. I’m honestly tired of saying this, but here goes: ANYONE IS FREE TO INCORPORATE IN THEIR OWN PRODUCT THE FUNCTION OF THE FUNCTIONAL/UTILITARIAN FEATURES SHOWN AS PART OF AN OVERALL CLAIMED DESIGN AS LONG AS THEIR PRODUCT DOES NOT LOOK LIKE IT.
The boxing world awaits. Meanwhile, I graciously accept my championship belt, until such time as the Professor gets up the nerve to challenge my basic principle, re-enters the ring, and actually connects with a swing.