Whether function must be disregarded in defining the scope of comparison prior art relevant to design patent infringement

QUESTIONS PRESENTED The questions presented are: (1) Whether function must be disregarded in defining the scope of comparison prior art relevant to design patent infringement; and (2) Whether comparison prior art can be considered in evaluating design patent infringement even if it is not the exact “same article” and thus could not anticipate for purposes of determining validity. The Patent Act establishes that design patents are directed to ornament, not function: “[w]hoever invents any new, original and ornamental design for an article of manufacture may obtain a_ patent therefor .” 35 U.S.C. § 171 (emphasis added). As this Court has explained, “[t]he object of the [utility patents] may solely be increased utility, while the object of [design patents] may solely be increased gratification to a cultivated taste addressed through the eye.” Gorham Co. v. White, 81 U.S. (14 Wall.) 511, 523 (1872) (emphasis added). In addition, this Court long ago established that prior art can be relevant to design patent infringement. Smith v. Whitman Saddle Co., 148 U.S. 674, 681-82 (1893) (finding no infringement of design patent directed to a saddle after comparing the accused design to the prior art). Prior art used in this way is referred to as “comparison prior art.” In this case, a jury found that Petitioner’s fabric did not infringe Respondent’s design patent directed to a repeating wave patten on “heat reflective material.” The jury reached this decision after being presented with three prior art patents disclosing ii fabrics with repeating wave patterns. The Federal Circuit vacated that verdict because the district court had declined to limit comparison prior art based on (i) the function performed by the prior art design and (ii) the “same article” standard used in determining whether a design patent is invalid for anticipation. App. 24a. The Federal Circuit did so noting “the proper scope of comparison prior art that may be used in an infringement analysis is an issue of first impression for this court.” Jd. at 22a. The issue in this Petition is what constitutes permissible comparison prior art.