Hupp v. Siroflex of America, Inc., s. 95-1268

• Decision Date: 04 September 1997
• Docket Number: Nos. 95-1268,95-1289,s. 95-1268
• Citation: 43 USPQ2d 1887,122 F.3d 1456
• Parties: Jack T. HUPP and Walkmaker, Inc., Plaintiffs-Appellants, v. SIROFLEX OF AMERICA, INC., Defendant/Cross-Appellant.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1456

122 F.3d 1456

43 U.S.P.Q.2d 1887

Jack T. HUPP and Walkmaker, Inc., Plaintiffs-Appellants, v. SIROFLEX OF AMERICA, INC., Defendant/Cross-Appellant.

Nos. 95-1268, 95-1289.

United States Court of Appeals Federal Circuit.

Sept. 4, 1997.

Nick A. Nichols, Jr., Gunn & Associates, P.C., Houston, TX, argued, for plaintiffs-appellants.

William C. Norvell, Jr., Beirne, Maynard & Parsons, L.L.P., Houston, TX, argued, for defendant/cross-appellant.

Before NEWMAN, Circuit Judge, SMITH, Senior Circuit Judge, and CLEVENGER, Circuit Judge.

PAULINE NEWMAN, Circuit Judge.

Jack T. Hupp and Walkmaker, Inc. (collectively "Hupp") sued Siroflex of America, Inc. in the United States District Court for the Southern District of Texas, for infringement of United States Design Patent No. 342,528 (the D'528 patent) and for trade dress infringement. The jury answered special interrogatories on all disputed issues, and in accordance with these findings the court entered judgment that the D'528 patent is invalid and not infringed, that the patent is unenforceable due to inequitable conduct in the Patent and Trademark Office, and that Hupp's trade dress is functional, not inherently distinctive, and not infringed. The district court entered judgment accordingly, ¹ and Hupp appeals. Siroflex cross-appeals the district court's decision not to award it the amount of the injunction bond.

We affirm the judgment of non-infringement of the patent and the trade dress, and the ruling concerning the injunction bond. We reverse the judgment of patent invalidity and unenforceability.

I PATENT VALIDITY

Hupp's patent is for the design of a mold that is used to make a simulated stone pathway by molding concrete. The ribs of the mold fix the shapes of the concrete stones and the spaces between the stones. Following are two of Hupp's mold designs as shown in the D'528 patent:

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

Several grounds of patent invalidity were presented by Siroflex at trial. The judgment of invalidity must be affirmed if there was substantial evidence, on the record as a whole, to support the findings of fact needed to sustain the jury verdict, Sun Studs, Inc. v. ATA Equipment Leasing, Inc., 872 F.2d 978, 982, 10 USPQ2d 1338, 1341 (Fed.Cir.1989); Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 613, 225 USPQ 634 (Fed.Cir.1985), absent reversible error at trial, see Magnivision Inc. v. Bonneau Co., 115 F.3d 956, 961, 42 USPQ2d 1925, 1930 (Fed.Cir.1997).

A. Ornamental v. Functional Design

To be patentable a design must be for an article of manufacture, must meet the criteria of being new, original, and ornamental, and must satisfy the other relevant requirements of Title 35:

35 U.S.C. § 171. Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.

The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided.

A design or shape that is entirely functional, without ornamental or decorative aspect, does not meet the statutory criteria of a design patent. L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1123, 25 USPQ2d 1913, 1917 (Fed.Cir.1993). See Lee v. Dayton-Hudson Corp., 838 F.2d 1186, 1188-89, 5 USPQ2d 1625, 1627 (Fed.Cir.1988) (the design patent protects the non-functional aspects of a useful article); In re Rosen, 673 F.2d 388, 391, 213 USPQ 347, 350 (CCPA 1982).

Although the design patent is directed to the ornamental aspect of a useful article, that the design of a particular article is related to the article's use may not defeat patentability. When the design is primarily ornamental, although it also serves a utilitarian purpose, this design patent condition is met. As explained in Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 148, 109 S.Ct. 971, 976, 103 L.Ed.2d 118, 9 USPQ2d 1847, 1851 (1989), to qualify for design patent protection, a design must have an ornamental appearance that is not dictated by function alone. The jury found that the D'528 design was "not ornamental." Hupp argues that this finding was not supported by substantial evidence, stating that there was no evidence that this mold design was dictated by function alone. See also L.A. Gear v. Thom McAn, 988 F.2d at 1123, 25 USPQ2d at 1917 ("An article of manufacture necessarily serves a utilitarian purpose, and the design of a useful article is deemed to be functional when the appearance of the claimed design is 'dictated by' the use or purpose of the article.") (quoting In re Carletti, 51 C.C.P.A. 1094, 328 F.2d 1020, 1022, 140 USPQ 653, 654 (1964)).

Siroflex stated at trial, and repeats on appeal, that because the D'528 mold served a function the design was primarily functional and can not be ornamental. That is incorrect, for the fact that the article of manufacture serves a function is a prerequisite of design patentability, not a defeat thereof. The function of the article itself must not be confused with "functionality" of the design of the article. Avia Group Int'l, Inc. v. L.A. Gear California, Inc., 853 F.2d 1557, 1563, 7 USPQ2d 1548, 1553 (Fed.Cir.1988) (distinguishing the functionality of the feature from the design of the feature).

In determining whether the statutory requirement is met that the design is "ornamental," it is relevant whether functional considerations demand only this particular design or whether other designs could be used, such that the choice of design is made for primarily aesthetic, non-functional purposes. L.A. Gear v. Thom McAn, 988 F.2d at 1123-24, 25 USPQ2d at 1917 ("When there are several ways to achieve the function of an article of manufacture, the design of the article is more likely to serve a primarily ornamental purpose."); In re Carletti, 51 The mold whose design is the subject of the D'528 patent serves the function of producing a simulated rock walkway, while the particular design of the mold is primarily ornamental. As the prior art shows, a variety of structures and tools, including molds, have been used to make concrete shapes, including walkways, of various designs. Since other designs have the same general use, and the aesthetic characteristics of Hupp's design are not dictated by the function of the article, Hupp's design is primarily ornamental within the meaning of the design patent law. There was no significant contrary evidence. Indeed, two of Siroflex's witnesses testified that the mold design was ornamental. On the correct view of the law, there was not substantial evidence to support the finding that the patented design was not ornamental. Since that finding must be reversed, the judgment of invalidity can not be supported on this ground.

C.C.P.A. 1094, 328 F.2d 1020, 1022, 140 USPQ 653, 654 (1964) (determining whether the appearance is "directed by" the use of the article).

B. Anticipation

The jury answered "yes" to an interrogatory asking whether the claimed design was described in a printed publication or in public use or on sale more than a year before the patent filing date. The interrogatory did not distinguish among these three issues, each of which is a bar to a valid patent. The record shows that the printed publication part of this interrogatory was based on a newspaper advertisement for a ceramic floor tile structure whose overall design was similar, but not identical, to one of Hupp's mold designs, while the on-sale issue may have been based on either the ceramic floor tile advertisement or on Hupp's submission of his idea to an invention agency, as discussed post.

In determining whether a design patent is invalid based on a description in a printed publication, 35 U.S.C. § 102(a), the factual inquiry is the same as that which determines anticipation by prior publication of the subject matter of a utility patent; see 35 U.S.C. § 171. The publication must show the same subject matter as that of the patent, and must be identical in all material respects. The ceramic floor tile advertised in the Houston newspaper is not identical to Hupp's mold for a concrete walkway, and the record shows no other publication on which the jury might have relied. Thus the jury answer to this interrogatory can not be supported on the ground that Hupp's patented subject matter is anticipated by the ceramic floor tile or its advertisement.

C. On Sale

Turning to the "on sale" component of the same interrogatory, evidence was presented concerning Hupp's submission to the Invention Submission Corporation of sketches of various proposed mold designs, some of which appear in the D'528 patent. Although it was debated at trial whether and what was submitted and when, the jury could have found, as a matter of credibility, that the submission was made and that this event took place more than a year before the patent's filing date.

The jury instructions described the on-sale bar as arising from "an offer for sale of the design of the design patent." However, organizations that invite inventors to submit their ideas in order to obtain patent services and assistance in development and marketing are not ordinarily "customers" whereby contact with such an organization raises the on-sale bar. An inventor's quest for aid and advice in developing and patenting an invention is not an on-sale event as contemplated by 35 U.S.C. § 102(b). The jury's "yes" can not be supported on this ground.

There was not substantial evidence to support a verdict of invalidity based on publication, public use (there was no evidence relating to any purported public use), or on-sale, more than a year before Hupp's patent application filing date. The jury's answer to this interrogatory can not stand, and thus the judgment of invalidity can not be based thereon.

D. Obviousness

The jury held the D'528 patent to be invalid for obviousness. We review whether there was substantial evidence whereby...