The oral argument of the month for the month of May is AllStar Tire and Wheel, Inc. v. Wheel Pros, Inc., 2011-1015 (Fed. Cir. May 12, 2011). This oral argument raised interesting issues concerning functionality in design patent infringement cases.
For background, it appears that the inventor was deposed and through his testimony gave the impression that the commercial embodiment (not necessarily the claim of the design patent) possessed functional traits. The accused infringer relied on that testimony to prevail on summary judgment that the design patent was merely functional. The plaintiff-appellant argued on appeal that the claim was not ambiguous on its face and that there was no reason to turn to the inventor’s testimony because it is extrinsic evidence of last resort for consideration only when a claim is ambiguous. Moreover, the plaintiff-appellant argued that the inventor’s testimony was about a commercial embodiment, as opposed to the design patent itself.
During the oral argument the panel raised a number of interesting issues as to whether summary judgment was appropriate in this case. Judge Linn noted that the contour of a wheel cover design might not be functional but rather ornamental. And, if the design element (i.e., the contour of the wheel cover) was ambiguous as to whether it was ornamental or functional, was it appropriate to decide such an ambiguous issue on summary judgment.
The panel also asked if functionality is a question of fact that should be given to a jury if a jury trial has been requested (or resolved by the court acting as a fact finder if there is no jury). The panel asked about PHG Technologies, LLC v. St. John Companies, Inc., which stated that whether a design element is functional is a matter of fact; and how should that case be applied in view of the court’s unanimous en banc opinion in Egyptian Goddess, Inc. et al. v. Swisa, Inc. et al., which stated that functionality is a matter of claim construction. The panel queried whether Egyptian Goddess had overruled PHG Technologies. Also, the panel inquired if Egyptian Goddess has not expressly overruled PHG Technologies, should the en banc opinion of Egyptian Goddess be given more weight than the earlier decided PHG Technologies decision.
You can listen to the discussion of those issues here: [Listen].
The panel also asked about an inconsistency in the district court’s opinion. At one point the district court’s opinion apparently stated that the wheel cover design included both functional and non-functional elements. The district court then went on to discuss only the functional elements. Judge Clevenger asked whether that suggests that the district court was incorrect in deciding the issue on summary judgment. You can listen to the discussion of that issue here: [Listen].
A third issue was raised by Judge Linn concerning whether the ordinary observer standard has any role to play in determing functionality in the context of interpreting claim scope. At that point, Judge Linn said “this is the gift that keeps on giving here; this question, it gets more and more involved and convoluted every minute.” [Listen].
The plaintiff-appellant responded on rebuttal that in view of the number of open questions highlighted by the discussion, that it was clear that the district court should not have granted summary judgment.
After the panel raised these interesting issues and questions, it promptly issued a Rule 36 decision affirming the summary judgment . . . .
You can listen to the entire oral argument here: [Listen].
You can view the court’s Rule 36 decision here: [Read].