{"id":4057,"date":"2011-05-28T12:51:56","date_gmt":"2011-05-28T18:51:56","guid":{"rendered":"http:\/\/www.717madisonplace.com\/?p=4057"},"modified":"2011-05-28T21:37:18","modified_gmt":"2011-05-29T03:37:18","slug":"oral-argument-of-the-month-allstar-tire-and-wheel-inc-v-wheel-pros-inc","status":"publish","type":"post","link":"https:\/\/www.717madisonplace.com\/?p=4057","title":{"rendered":"Oral Argument of the Month: AllStar Tire and Wheel, Inc. v. Wheel Pros, Inc."},"content":{"rendered":"

The oral argument of the month for the month of May is AllStar Tire and Wheel, Inc. v. Wheel Pros, Inc.<\/span>, 2011-1015 (Fed. Cir. May 12, 2011).\u00a0 This\u00a0oral argument raised interesting issues concerning functionality in design patent infringement cases.\u00a0\u00a0<\/p>\n

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\u00a0design patent) possessed functional traits.\u00a0 The accused infringer relied on that testimony to prevail on summary judgment that the design patent was merely functional.\u00a0 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\u00a0because it\u00a0is extrinsic evidence of last resort for consideration only when a claim is ambiguous.\u00a0 Moreover, the plaintiff-appellant argued that the inventor’s testimony was about a commercial embodiment, as opposed to the design\u00a0patent itself.\u00a0<\/p>\n

During the oral argument the panel raised a number of interesting issues\u00a0as to\u00a0whether summary judgment was appropriate in this case.\u00a0 Judge Linn noted that the\u00a0contour of a wheel cover design\u00a0might not be functional but rather\u00a0ornamental.\u00a0 And, if the design element (i.e., the\u00a0contour of the wheel cover)\u00a0was ambiguous as to whether it was ornamental or functional, was it appropriate to decide such an ambiguous issue\u00a0on summary judgment.\u00a0<\/p>\n

The panel also asked\u00a0if functionality is a question of fact that should\u00a0be 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).\u00a0 The panel\u00a0asked about PHG Technologies, LLC v. St. John Companies, Inc.<\/a>,\u00a0which stated that whether a design element is functional\u00a0is a matter of fact; and\u00a0how should\u00a0that case be applied in view of the court’s unanimous en banc<\/em> opinion in\u00a0Egyptian Goddess, Inc. et al. v. Swisa, Inc. et al.<\/a><\/span>, which\u00a0stated that functionality is a matter\u00a0of\u00a0claim construction.\u00a0 The panel\u00a0queried whether Egyptian Goddess<\/span> had overruled PHG Technologies<\/span>.\u00a0 Also, the panel\u00a0inquired if Egyptian Goddess<\/span> has not expressly overruled PHG Technologies<\/span>, should the en banc<\/em> opinion of Egyptian Goddess<\/span> be given more weight than the earlier decided PHG Technologies<\/span> decision.<\/p>\n

You can listen to the discussion of those issues here: [Listen<\/a>].<\/p>\n

\u00a0The panel also asked about an inconsistency in the district court’s opinion.\u00a0 At one point the district court’s opinion apparently\u00a0stated that the wheel cover design included both functional and non-functional elements.\u00a0 The district court then went on to discuss only\u00a0the functional elements.\u00a0 Judge Clevenger asked whether that suggests that the district court was incorrect in deciding the issue on summary judgment.\u00a0 You can listen to the discussion of\u00a0that issue here: [Listen<\/a>].<\/p>\n

A third issue was raised by Judge Linn concerning whether the ordinary observer standard has any role to play in determing functionality\u00a0in the context\u00a0of\u00a0interpreting claim scope.\u00a0\u00a0 At that point, Judge Linn said “this is\u00a0the\u00a0gift that keeps on giving here; this question, it\u00a0gets more and\u00a0more involved and convoluted every minute.” [Listen<\/a>].<\/p>\n

\u00a0The 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.<\/p>\n

After the panel raised\u00a0these interesting issues and questions,\u00a0it promptly issued a Rule 36 decision affirming the summary judgment\u00a0. . . .<\/p>\n

You can listen to the entire oral argument here: [Listen<\/a>].<\/p>\n

You can view the court’s Rule 36 decision here: [Read<\/a>].<\/p>\n","protected":false},"excerpt":{"rendered":"

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).\u00a0 This\u00a0oral argument raised interesting issues concerning functionality in design patent infringement cases.\u00a0\u00a0 For background, it appears that the inventor was deposed and through his testimony gave the impression […]<\/p>\n","protected":false},"author":1,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[4,5],"tags":[],"_links":{"self":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/4057"}],"collection":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/users\/1"}],"replies":[{"embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=4057"}],"version-history":[{"count":20,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/4057\/revisions"}],"predecessor-version":[{"id":4079,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/4057\/revisions\/4079"}],"wp:attachment":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=4057"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=4057"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=4057"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}