United States District Court, S.D. West Virginia, Bluefield
A. Faber Senior United States District Judge
Order entered on April 26, 2017, the court denied
defendant's motion to construe the patent as invalid or,
in the alternative, motion to adopt defendant's claim
construction. (ECF No. 59). The reasons for that decision
filed the instant action for patent infringement on December
15, 2015. Hafco owns the patent for a Rock Dust Blower, U.S.
Design Patent No. D681, 684S. See Complaint ¶
9. Within the scope of the Rock Dust Blower Patent,
“Hafco makes, offers for sale and sells a rock dust
blower . . . within the Southern District of West Virginia
and throughout the United States.” Id. at
¶ 12. In 2014, Hafco entered into an agreement with
Pioneer Conveyor, alleged to be a GMS affiliate, by which
Pioneer Conveyor was to distribute Hafco rock dust blowers to
mining customers. See id. at ¶ 13. The
distribution agreement between Hafco and Pioneer Conveyor was
terminated in early May 2015. See id.
According to Hafco, following termination of the
aforementioned distribution agreement, GMS began selling
infringing rock dust blowers within the Southern District of
West Virginia. See id. at ¶ 14.
35 U.S.C. § 171, "[w]hoever invents any new,
original, and ornamental design for an article of manufacture
may obtain a patent therefor. . . ." The United States
Patent and Trademark Office (“USPTO”) is charged
with the task of examining patent applications and issuing a
patent if it appears that the applicant has met the
requirements for issuance of a patent. Microsoft Corp. v.
i4i Ltd., 564 U.S. 91, 95-96 (2011). Once issued, a
design patent is entitled to a presumption of validity.
See 35 U.S.C. § 282 (“A patent shall be
presumed valid.”). Therefore, “overcoming this
presumption requires clear and convincing evidence."
Alcon Research Ltd. v. Barr Labs., Inc., 745 F.3d
1180, 1188 (Fed. Cir. 2014); see also Microsoft
Corp., 564 U.S. at 95 (“We consider whether §
282 requires an invalidity defense to be proved by clear and
convincing evidence. We hold that it does.”); Ariad
Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1354
(Fed. Cir. 2010) (en banc) (“A patent is presumed to be
valid, and this presumption can only be overcome by clear and
convincing evidence to the contrary.”) (internal
citations and quotations omitted).
burden of establishing the invalidity of the patent rests on
the party asserting invalidity. See 35 U.S.C. §
282(a); Microsoft Corp., 564 U.S. at 100
(“Thus, by its express terms, § 282 establishes a
presumption of patent validity, and it provides that a
challenger must overcome that presumption to prevail on an
patents on [ ] primarily functional rather than ornamental
designs are invalid.” Ethicon Endo-Surgery, Inc. v.
Covidien, Inc., 796 F.3d 1312, 1328 (Fed. Cir. 2015).
GMS argues that the design patent at issue in this case is
invalid because of functionality, i.e., that the design is
dictated by function. The Federal Circuit “appl[ies] a
stringent standard for invalidating a design patent on
grounds of functionality: the design of a useful article is
deemed functional where the appearance of the claimed design
is dictated by the use or purpose of the article.”
Rosco, Inc. v. Mirror Lite Co., 304 F.3d 1373, 1378
(Fed. Cir. 2002) (internal citations and quotations omitted).
In making this determination, the United States Court of
Appeals for the Federal Circuit has offered some guidelines:
Articles of manufacture necessarily serve a utilitarian
purpose, but design patents are directed to the ornamental
designs of such articles. 35 U.S.C. § 171. If a
particular design is essential to the use of an article, it
cannot be the subject of a design patent. . . . We have found
designs to be essential to the use of an article when the
claimed design is dictated by the use or purpose of the
article. . . .
In determining whether a claimed design is primarily
functional, “[t]he function of the article itself must
not be confused with `functionality' of the design of the
article.” Hupp v. Siroflex of Am., Inc., 122
F.3d 1456, 1462 (Fed. Cir. 1997). . . . We explained that a
claimed design was not invalid as functional simply because
the primary features of the design could perform functions.
As with its analysis on other validity grounds, the district
court used too high a level of abstraction in assessing the
scope of the claimed design.
* * *
We have also instructed that the overall appearance of the
article--the claimed design viewed in its entirety--is the
basis of the relevant inquiry, not the functionality of
elements of the claimed design viewed in isolation. . . .
[W]e explained that the utility of each of the various
elements that comprise the design is not the relevant inquiry
with respect to a design patent because whether a design is
primarily functional or primarily ornamental requires a
viewing of the claimed design in its entirety. . . .
We have not mandated applying any particular test for
determining whether a claimed design is dictated by its
function and therefore impermissibly function. We have often
focused, however, on the availability of alternative designs
as an important--if not ...