*1 provision ‘salvage value’ would render 168(f)(9)) (section superfluous.” decision, “[s]ection Arkla in our own

we held depre

168(f)(9) the amount only affects is found to be once an asset deduction

ciation ... does depreciation [but] depreciation deduction

influence whether Arkla, Inc. v. place.” first in the

allowed (Fed.Cir.1994), States, — U.S. -, rt. ce (1995). Having care L.Ed.2d 287 remaining Washington’s ar

fully considered persuaded that we

guments, we are not analysis cogent

reject Fifth Circuit’s question at hand. reasons, the decision of foregoing

For the govern- of Federal Claims

the Court is affirmed.

ment’s favor

AFFIRMED. CORPORATION, LOCK

BEST

Plaintiff-Appellant, CORPORATION,

ILCO UNICAN

Defendant-Appellee.

No. 95-1528. Appeals,

United States

Federal Circuit.

Aug. Denied; Suggestion for

Rehearing

Rehearing In Banc Declined 29, 1996.*

Oct. Knebel, Thornburg, Barnes & Donald E. Indiana, plaintiff- argued, for

Indianapolis, Dwight him on the brief was appellant. With Lueck. D. Gross, Hill, & A. Steadman

Dennis Illinois, argued, defen- Chicago, Simpson, the brief was him on dant-appellee. With Robert M. Ward. Hundertmark, Roberts, &

Barry Roberts Chase, curiae. Maryland, for amicus Chevy ARCHER, Judge, Chief Before LOURIE, Judges. Circuit NEWMAN * appeal. Judge would rehear the Newman

LOURIE, Judge. key blank with the required combination to operate the lock. Corporation Best Lock appeals from the final decision of the United District Best Lock manufactures and sells locks for the Southern District of Indiana in keys and security used to maintain at indus- the court held which that Lock’s Best U.S. trial, commercial, and institutional facilities. 327,636 Design Patent was invalid. Best facilities, At these it is often feared v. Ilco Unican Corp., keys in their dupli- used locks readily be (S.D.Ind.1995). Be Consequently, key cated. and lock manufac- clearly finding the court did not cause err turers, Lock, including attempted Best have was functional and duplicate restrict unauthorized access to ornamental, hence we affirm. key by obtaining utility blanks

patent protection keys. By obtaining on the patent protection, company hopes to con- BACKGROUND trol the for duplicate key market blanks dur- This case involves a patent.1 life key bow, typical key “blade.” A consists of a assignee pat- is the key which allows the user to the two turn the lock, blade, corresponding ents were at and a issue before the which is the court, 5,136,869 portion key Patent Design inserted into U.S. and the lock’s U.S. 327,636. keyway. manufactured, key patent, When a The ’869 entitled “blank,” ie., “High Security key Key Cylinder blade is the blade Lock As- has not sembly,” improved key cut or claims an been “bitted” with the combination blade and cylinder required operate assembly provides lock corresponding lock. wider key profile Although key keys than blank standard operate blade will not and includes lock, profile other key features to deter picking. blade lock patent, The ’636 Key manufactured to fit into entitled “Portion corresponding of a Blank,” keyway. lock’s Blade Subsequently, claims the key the blank operative portion key blade is cut to match the corresponding blade blank. lock’s combination. In addition to patent, the ’636 design assignee Lock is the 33 other market, replacement key In the a lock- patents designs. It also is the smith or a retail store with a duplicating assignee of 34 patents directed to facility stocks blank blades with various keyways designed to mate with the key profiles. The locksmith or retailer claimed Best Lock’s 34 replacement makes a key by selecting first design patents. only The ’636 is the appropriate blank blade. This is appeal. at issue on by matching done profile with corresponding Then, lock Figures 1-5 of patent are locksmith retailer cuts the blade of the shown below: Key lock manufacturers thereby making also use other replace- consumer demand for methods to duplicate key restrict access to particular keys ment for that lock design so small example, For blanks. the some manufacturers limit replacement key manufacturers no have in- particular type sale of a of lock and to a duplicate centive blanks. single particular geographic region, customer or *3 trial, the district ten-day bench replace- After a duplicate and manufactures Ileo patent claims were that the ’869 court held existing locks. It sells ment blanks § 102 because invalid under 35 U.S.C. to locksmiths and replacement blanks its prior art. anticipated were claims cop- In Ileo key retailers. replacement Corp., 896 Ilco Corp. v. Unican Best Lock key, which had design of a Best Lock ied the shaped like the shown (S.D.Ind.1995). appealed has not subsequently distributed patent. the ’636 also held holding. The court shape at the blanks with partic In patent was invalid. the ’636 Associated Lock- convention of the annual Lock’s ular, that Best court found response, Best sued of America. smiths of ornamental “a matter were not alia, infringement of Ileo, alleging, inter at Id. or the user.” purchaser concern utility design patent and the ’869 the ’636 further 1534. The court counterclaimed, seeking a de- Ileo patent. was invalid be design patent that the found was invalidity and nonin- claratory judgment of the blank cause the ap- Id. Best Lock function. its patents. fringement of both peals, challenging court’s decision Figures blade as shown in 1-5 of the regarding patent. patent. did not claim a (1995) key.2 the entire See 37 C.F.R. 1.153 DISCUSSION (The claim of a “shall be in Under 35 U.S.C. formal terms to the ornamental “new, granted original shown, ... or as shown and and ornamental for an article of man described.”) added). (emphasis parties ufacture.” if dispute do not blade must be designed as shown in perform order to its manufacture, function of the article of intended correspond- function —to fit into its is invalid because the lock’s An attempt to create a *4 Boats, ornamental. See Bonito Inc. v. Thun key blade -with a design different would nec- Boats, Inc., 141, 148, der 489 U.S. Craft essarily fail key because no alternative blank 971, 976, 118, S.Ct. L.Ed.2d corresponding would fit the lock. (1989) (“To 1847, qualify protection, fact, Best Lock admitted that no other design present a aesthetically an pleas shaped key ing appearance blade would fit into by that is not the corre- dictated func alone, satisfy tion sponding keyway, and must the other criteria presented and it no evi- patentability.”); Carletti, see also In re Therefore, contrary. dence to the we find no 1094, 1020, 1022, C.C.P.A. 328 F.2d 140 clear in finding error the court’s (1964) (“[I]t USPQ 653, long has been design claimed solely was dictated configuration settled that when a is the result Any blade’s function. aesthetic only, of functional considerations the result appeal design shown in ing design patentable is not anas ornamental patent the ’636 is the inevitable result of design for the simple reason that it is not having a solely is ‘ornamental’ —was pur not created for the functional concerns. pose ornamenting.”). A is not dic solely by tated its function when alternative Further, Best Lock’s assertion that a vari- designs for the article of manufacture are ety possible shapes of interfaces between available. See L.A. Inc. v. Thom keys and locks exists does not compel a 1117, McAn Shoe Clearly, different result. different interfaces USPQ2d 1913, (Fed.Cir.), cert. between corresponding lock 510 U.S. 126 L.Ed.2d 240 keyways designed can permit be the com- (1993). We review for clear error the district bination to function as a lock and set. court’s determination that the claimed However, patent Best Lock’s does not claim patent in the ’636 is functional. See id. the combination of a corresponding lock and 1124, 25USPQ2d at 1917. Instead, key. the claim in the ’636 appeal, On argues that the patent blade, is limited to a which must holding court erred in the ’636 designed be as shown in patent the ’636 being invalid as solely directed to a functional perform order to its intended function. support, As it although asserts that particular key corresponding and its lock Moreover, the fact that Best Lock operate lock, must mate to an unlimited also patent has keyway on the number of blade and corresponding key- mates with the blade shown in way the ’636 designs are available. any Choice of patent particular design Thus, analysis. does not arbitrary. is alter our The exis maintains that may separate tence patent blade blank keyway on the any have number shapes of different and is irrelevant to the construction of the ’636 therefore solely by not dictated functional patent claim and to the ultimate determina concerns. tion disagree.

We shown in function. See Elmer v. Fabricating, ICC claim of the ’636 is limited 1571, 1577, to a blank held, predecessor previously Zahn, 2. As our "a facture....” In re may article of manufacture be (CCPA1980). embodied in less than all of an article of manu- that the de- court concluded design pat- The district (Fed.Cir.1995) (construing “a matter of D’636 was not sign of the article of limited ent as purchaser or the concern to the patent). in the and described” “as shown user,” was and thus held that be evaluated validity requires that The statute than on functional. it claims rather what based an ornamental subject of a be patents. multiple claims of totality of the object. “orna- design of a useful reasons, foregoing For always mean artistic or not mental” does design is finding that the claimed court’s eye. of Customs pleasing to the The Court by functional concerns solely governed early recognized that Appeals we affirm Consequently, clearly erroneous. requisite beauty and ornamentation “the patent is resulting conclusion its design patents such confined § 171 for failure under 35 U.S.C. invalid ” In or fine arts.’ in the ‘aesthetic found require- omamentality satisfy the statute’s Koehring, 17 C.C.P.A ment. (1930). AFFIRMED. Recognizing that ornamentation beholder, sought a the courts have eye of the NEWMAN, Judge, PAULINE *5 general rule objective standard more dissenting. purposes of design for is “ornamental” that design of this respectfully dissent. The I primarily not § 171 when it is U.S.C. 35 statutory criteria the profile meets Carletti, 51 C.C.P.A. In re See functional. subject The matter. of (1964) 1020, 1094, USPQ 140 653 328 F.2d subject matter as follows: this defines statute (“To protection, a qualify for designs Patents for 171 35 U.S.C. appearance aesthetically pleasing present an new, any original and invents alone.”). Whoever by function not dictated of manu- design for an article utility However, must have a article the itself therefor, patent sub- may obtain a facture patenta to be for its order features in requirements of ject the conditions L.A. 171. See 35 U.S.C. ble under title. this 1117, F.2d 988 Thom McAn Shoe Inc. v. (“A (Fed.Cir.) relating to 1913, 1123, of title provisions USPQ2d 1917 The 25 pat- apply appearance inventions shall to the patents for is directed pro- except as otherwise An article of designs, for article of manufacture. ents of an utilitarian necessarily serves vided. article is design of a useful and the purpose, D’636 Whether appear when the to be functional deemed example on the cri- for patentable, otherwise by’ design is ‘dictated of the ance non-obviousness, was or originality of teria article.”), cert. purpose of the or use and is not by the district not reached 291, 240 908, 126 L.Ed.2d 510 U.S. majority has panel before us. (1993). holding § 171 in misapplied 35 U.S.C. key profile is arbitrary design of the by the function If its match- it mates with “functional” manufacture, the article of performed ing keyway. Power Controls patentable. 238, 234, 806 F.2d Hybrinetics, Corp. v. key profile is not re- design of the The (Fed.Cir.1986). 774, See Bon- USPQ 777 be- design statute 231 access to the from moved Boats, Inc., Boats, Inc. v. Thunder matching keyway. That ito fits a cause Craft 971, 976, 103 S.Ct. 109 harmony does U.S. designed in 489 are two articles (1989) 1851 9 design L.Ed.2d deprive the of access (“To design must protection, a qualify for key profile is patent law. The appearance aesthetically pleasing an present by the function not determined alone, and by function not dictated at bar there are said In the case fit the lock. patentabili- satisfy other criteria “thousands” of alternative to be by function design is A “not ty.”). profiles. 1568 designs

alone” when there are alternative easy or not always bright to draw a line be- configurations available for the article of functionality tween and its manufacture, inas the ease before design, Reichman, us. as discussed J.H. De- Technologies: and the Protection New legal principles governing design pat- The Experience Transna- ents have their important foundation Perspective, (1989), tional 19 Balt. 6 L.Rev. White, Mfg. decision of Gorham Co. v. design patents appear quite often (14 Wall.) 511, (1871), U.S. 20 L.Ed. 731 See, mundane e.g., articles of manufacture. Supreme explained: wherein the Bros., Sysco Corp., Tone Inc. v. 28 F.3d appearance may pecu- result (Fed.Cir.1994) (bottle USPQ2d liarity configuration, or of ornament Klein, spices); 987 F.2d alone, but, conjointly, or of both in whatev- (Fed.Cir.1993) (roof USPQ2d 1133 siding way produced, er it is thing, the new shingle); KeyStone Retaining Sys., Wall Inc. product, regards. which the law Westrock, Inc., USPQ2d 997 F.2d U.S. 525. Courts have measured the (Fed.Cir.1993) (concrete block re- term “ornamental” non-functionality wall); Webb, taining In re distinguishes (Fed.Cir.1990) (femoral hip utility patent, from a recogniz while Cho, prosthesis); 378,1 stem In re of a useful article is not (Fed.Cir.1987) (bottle cap); utility insulated from the of the article. A Mfg. Furniture Co. v. Preview Fur- Pacific patentable designs general review illus Corp., niture USPQ trates the mixture of functional non (Fed.Cir.1986) (upholstered armchair); Lit- patented functional features embraced in the Sys., ton Whirlpool Corp., Inc. v. See, e.g., Winner Int’l v. Wolo (Fed.Cir.1984) (micro- *6 Mfg. Corp., 15 1076 oven); wave In Koehring, re 17 C.C.P.A. (Fed.Cir.1990) (design of steering wheel (1930) (concrete truck). mixing 421 lock); Dayton-Hudson Lee v. Corp., 838 The of the blade profile is (Fed.Cir.1988) F.2d 5 1625 primarily non-functional, as the and (design patent massage device); for FMC recognized Trademark Office in granting the Indus., Inc., Corp. Hennessy v. F.2d 836 patent in The Manual of suit. Patent Exam- (Fed.Cir.1987) (design patent ining “design” Procedure defines as follows tires); changer for for tubeless Unette purposes § of 171: Co., v. Pack USPQ Unit object The of an of the (Fed.Cir.1986) (container consists dispensing visual aspects displayed characteristics or liquids); (Bd. Igarashi, In USPQ object. the It is appearance pre- the Interf.1985) (tire Pat.App. & design); tread object sented the which a visual creates Mfg. Corp. Trans-World Nyman v. Al & impact upon the mind of the Sons, observer. Inc., (Fed.Cir.1984) Since a is (design appear- manifested display eyeglass rack). ance, the matter of design application may configuration relate to the An effective recog must law object, of an to the surface orna- nize distinction functionality the between of object, mentation on an or both. particular the and of article the of the Design inseparable object is from the article or features thereof. L.A. See applied which it and cannot (the exist alone supra, tongue, moustache, sneaker delta merely aas scheme of surface ornamenta- mesh, wing, and side parts were of useful definite, tion. preconceived abe. sneaker, but the overall of these fea thing, capable reproduction of and not tures and shoe was not dictated func merely the chance result of a alone). method. tion This interaction form of and (6th does not ed.1995). function remove the § from the MPEP See also D. statutory scope law, Chisum, of (1996) (“[A] Patents 1.04[2][a] de- statutory defeat patentability pri appearance rests on created by the con- marily design although article, non-functional figuration it is surface ornamenta- — configuration tion, combination or a omitted). (footnote ornamentation.”) CORPORATION NORTHERN GREAT Containers, and Fibreform agree litigation to this parties Plaintiffs/Cross-Appellants, designs of myriad possible are there course, mating require, of keys All profiles. holding that because keyways. PRODUCTS, HENRY MOLDED abstract keyway, the fit a Defendant-Appellant. INC., func- to one converted key profile is exception to tion, creates the court 95-1517, 95-1518. Nos. arbitrary design An subject matter. statutorily excluded a useful Appeals, States Court United in use it interacts simply from Circuit. Federal design. Al- complementary an article with Aug. 1996. contrary to sparse, it though precedent Alexander Inc. v. holding. In Motorola this Sept. Rehearing Denied 808, USPQ2d 1573 Mfg. 1991), case

(N.D.Iowa only aware, the are which we point of this bat- considered portable for use housing intended

tery fit had to battery housing

phone. Since charger, battery phone

into function argued that infringer

accused disagreed: The court

dictated battery housing was design of the battery by the charger not exist did

charger because de- designed. The housing was

when the concurrently was done phone

sign of Therefore, the housing. battery

with *7 fairly housing battery cannot by the “dictated” to have been

be said phone. reason- 812, USPQ2d at 1577. This

Id. case. The apt equally de- was not dictated key profile two share and indeed keyway, design. arbitrary same is the sum, the fact arbi- keyway does not convert

mate primarily functional into a

trary key profile is not functional, key itself. but the that is

profile from the must, dissent respectfully, I

Thus majority that the panel

ruling of patentable profile mating requires a key blade