Sport Dimension, Inc. v. the Coleman Company, Inc.
820 F.3d 1316
Fed. Cir.2016Background
- Coleman owns U.S. design patent D623,714 claiming the ornamental design of a personal flotation device (two armbands connected to a torso piece with tapered sides).
- Sport Dimension accused product is Body Glove Model 325, which has two armbands but a torso that extends upward into shoulder-covering vest portions.
- Sport Dimension sued for declaratory judgment of noninfringement and invalidity in the Central District of California.
- The district court excluded Coleman’s industrial-design expert, Peter Bressler, because he had no substantive experience with personal flotation devices.
- The district court construed the design-patent claim to exclude the left/right armbands and the side-torso tapering as purely functional and entered a stipulated judgment of noninfringement; Coleman appealed.
Issues
| Issue | Coleman’s Argument | Sport Dimension’s Argument | Held |
|---|---|---|---|
| Proper claim construction for a design patent with mixed functional/ornamental elements | Court should not eliminate structural elements (armbands, tapered torso); claim protects overall ornamentation including those elements to the extent they contribute ornamentally | Armbands and side-torso tapering are functional and should be excluded from the claimed ornamental design | Court vacated the district court’s construction and judgment; held that while armbands and tapering have functional aspects, they cannot be wholly removed — claim must be construed to cover overall ornamentation (narrow scope) and factfinder should assess contribution to overall ornamentation |
| Exclusion of Coleman’s expert (qualification/reliability under Rule 702/Daubert) | Bressler is an experienced industrial designer qualified to opine on design/functionality | Bressler lacked substantive experience with wearable buoyancy devices and admitted he was not an expert in personal flotation devices | Court affirmed the district court’s exclusion as non-abuse of discretion: Bressler lacked the requisite specialized experience for the contested subject matter |
Key Cases Cited
- Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312 (Fed. Cir. 2015) (design-patent construction should remove functional aspects but preserve ornamental scope of elements)
- Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (design patents are best represented by illustrations; courts should avoid over-specific verbal constructions)
- OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396 (Fed. Cir. 1997) (distinguishing functional vs. ornamental features without eliminating structural elements)
- Richardson v. Stanley Works, Inc., 597 F.3d 1288 (Fed. Cir. 2010) (discounting functional elements must not convert infringement test to element-by-element comparison)
- PHG Techs., LLC v. St. John Cos., 469 F.3d 1361 (Fed. Cir. 2006) (factors for determining when a design is dictated by function)
- Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579 (1993) (trial courts act as gatekeepers to ensure expert reliability)