Validity Of Patented Design Questionable Where Feature Affecting Utility Is Included

At issue before the Federal Circuit in PHG Technologies, LLC v. St. John Companies, Inc. , (No. 06-1169, November 17, 2006), is whether the district court abused its discretion by granting PHG a preliminary injunction. PHG filed suit against St. John claiming infringement of its medical label design patents that depict the novel design of having two rows of wristband labels at the bottom of a label sheet. St. John argued that the design patents are invalid since the placement of the wristband labels at the bottom of the label sheet has functional advantages over the prior art.

The Federal Circuit, which relied on statements made during the prosecution of a pending related utility patent application, finds that the district court did abuse its discretion since there is a substantial question as to whether the overall appearance of the patented design is dictated by the medical label sheet's use and purpose. Despite declaring that its holding is based on the overall appearance of the patented design, the Federal Circuit is seemingly most persuaded by the argument that the utility of the medical label sheet would be affected by alternating the design to not include the wristband labels at the bottom of the sheet.