Design Labled Functional by Federal Circuit

PHG Technologies, LLC v. St John Companies, Inc., [06-1169](November 17, 2006)[PROST, Michel and Dyk) The Federal Circuit vacated a preliminary injunction because it found that St. John raised a substantial question of the validity of the two patents in suit covering the appearance of a sheet of labels for medical use.
SIGINFICANCE: Design dictated by function is invalid
BRIEF: To overturn the grant of a preliminary injunction the Federal Circuit must find a clear error of judgment in weighing the relevant factors or that the decision was based on an error of law or clearly erroneous factual finding. LOF: Whether a patented design is functional or ornamental is a question of Fact. If the patented design is primarily functional rather than ornamental, the patent is invalid. 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. The Federal Circuit has considered a number of factors in determining whether the design as a whole is dictated by functional considerations, including
whether the protected design represents the best design
whether alternative designs would adversely affect the utility of the specified article
whether there are any concomitant utility patents
whether the advertising touts particular features of the design as having specific utility
whether there are any elements in the design or an overall appearance clearly not dictated by function
. The Federal Circuit found that the evidence presented by St. John raised a substantial question at to the functionality, and thus validity of the patent.