Graphic Packaging International, LLC v. Inline Packaging, LLC

Background

Graphic Packaging International, LLC owns three design patents for microwave susceptor sleeves: U.S. Patent Nos. D694,106, D694,124, and D727,145. The sleeves are paperboard products used to heat and carry food products, including “Hot Pockets.” Graphic alleged that Inline Packaging, LLC infringed the three design patents.

The case originally included a related utility patent, U.S. Patent No. 8,872,078. After inter partes review, all 53 claims of that utility patent were determined to be unpatentable as obvious. The three design patents remained at issue.

The parties’ proposed constructions

The parties sought claim construction, which is the court’s legal determination of the meaning and scope of patent claims. Graphic proposed that each design patent cover “the overall ornamental appearance” shown in the patent’s drawings. Inline argued that the patents should have no scope because the sleeves’ designs were primarily functional.

The court explained that design patents protect the overall ornamental design, or appearance, of an article of manufacture. A design patent cannot protect a purely functional design, but functional elements can still have protectable ornamentation. The court also considered the availability of alternative designs, one of the factors used to assess whether a design is primarily functional. Graphic identified alternative designs, and the record contained evidence that the sleeve configuration involved aesthetic considerations as well as functional ones.

Court’s reasoning

The court rejected Inline’s view that “ornamental” and “functional” are opposites. The court stated that a feature may serve a function and still contribute to protectable ornamentation. The court also observed that constructions giving a design patent “no scope” appear to be rare and that the Federal Circuit had reversed such a construction when it failed to account for the claimed design’s particular ornamentation.

The court concluded that the presence of alternative designs and evidence of aesthetic considerations showed that these were not designs whose appearance was dictated solely by function. The court further determined that a detailed verbal description was neither necessary nor helpful. Describing individual features could improperly emphasize them and cause a factfinder to focus on separate features instead of the overall design.

Ruling

The court adopted these constructions:

This order decided the scope of the three design-patent claims. It did not decide whether Inline’s accused products infringed those properly construed claims.