Analysis of overall appearance determines whether patented design is dictated by function

            In PHG Technologies, LLC v. St. John Companies, Inc., the Federal Circuit vacated the preliminary injunction of the district court finding St. John raised a substantial questions of validity of the two patents-at-issue.

            At issue were two design patents owned by PHG: the '405 and '197 patents.  The '405 and '197 patents depend from a utility patent for patient identification labels.  The '405 patent claims an ornamental design for the medical label sheet and the '197 patent claims the ornamental design for a label pattern for a medical label sheet.  The difference between the two patents is that the border is part of the design claimed in the '405 patent but not part of the design claimed in the '197 patent.   St. John also sold medical patient identification labels.  Prior to PHG's design patents issued, PHG notified St. Johns's that the design of St. John's medical label sheet infringed the pending PHG patents.  St. John did not respond to PHG's letter and continued to sell its medical label sheet.  After PHG's patents issued, it filed suit against St. John alleging infringement moving for a preliminary injunction against St. John's continued sale of its accused medical label sheet.  The district court granted PHG's motion for a preliminary injunction finding PHG's patents valid in that the design claimed was not dictated by function, and that St. John's  accused design appropriated the novelty of PHG's patented design.  The district court concluded that PHG demonstrated a likelihood of success on the merits, established that it would be irreparably harmed if an injunction did not issue, and showed that the balance of hardships and public interest weighed in favor of enjoining St. John continuing to sell its accused design.

             In vacating the district court's preliminary injunction, the Federal Circuit found, with respect to St. John's challenge of the likelihood of success on the merits that the district court erred, based on the evidence of record, in not making a full inquiry with respect to the design of the label as it affects the utility of the label.

To read the complete decision, click here.