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Federal Circuit Case Law |
PHG Technologies, LLC v. St. John Companies, Inc.
A “full inquiry” into functionality of a design patent requires questioning whether “alternative designs would adversely affect the utility of the specified article.”
PHG sued St. John at the U.S. District Court for the Middle District of Tennessee for allegedly infringing design patents for medical label sheets. Judge Robert Echols granted a preliminary injunction after deciding that the arrangement of medical records on a single sheet was “primarily ornamental because there are other ways to arrange different sizes of labels…” St. John appealed to the Federal Circuit.
The Federal Circuit reversed because the district court failed to provide an “explicit finding…whether the alleged alternatives are in fact functionally equivalent.” The court pointed out that a specific “ornamental” arrangement of medical records on a sheet of paper may allow easier removal of specific records from the page bottom, which raises a substantial validity question.
Design patents by definition are trivially easy to design around and are less helpful protection for a product that is not based on a fanciful design.
In Re. Stereotaxis, Inc.
Decided October 27, 2005
Judge Friedman with Judges Rader and Dyk
* ""The Trademark Office may require a disclaimer … if the mark is merely descriptive for at least one of the products or services."
The PTO agreed to register Stereotaxis’s requested trademark (a logo next to "Stereotaxis, Inc.") only if the company specifically disclaimed the term "Stereotaxis." The PTO deemed this term merely descriptive for the product, which stereotaxically allows positioning of medical devices. Stereotaxis appealed to the Federal Circuit, arguing that the PTO had failed to specify the products and services that are described by the disputed term.
The Federal Circuit affirmed, based on a dictionary definition for STEREOTAXIS, which "immediately describes, without conjecture or speculation" some or most of Stereotaxis’s product.
Stereotaxis lost because it could not "show that its proposed definition would be understood by the relevant public …to be the only meaning of the term." A company that wants to select and trademark a name should consider something that does not merely restate what the company does or sells.
The case summaries and other
information here represent the contemporary, private views of
Marvin Motsenbocker and are intended to be informative only and
not to give legal advice or opinions. Any views expressed or
implied are subject to change and are not necessarily those of
any law firm, its attorneys or clients.