Design Patent Claim Construction: Navigating Written Description, Ornamentality, Functionality and More

Drafting Claims to Withstand Scrutiny and Avoiding Claim Limitation Attack

Recording of a 90-minute CLE webinar with Q&A

Conducted on Thursday, August 10, 2017
Recorded event now available

This CLE webinar will provide guidance to counsel for defining design patent claims. The panel will examine recent court treatment of claim construction issues and offer approaches for design patent claim construction and drafting.


By definition, design patents protect ornamental designs. The standard for determining whether a design or design feature is ornamental—and what effect that determination has—remains unsettled. Unlike utility patents, design patent applications are not published when the applicant files directly with the USPTO.

Further, the application’s prosecution history is not publicly available until the application issues unless it is a divisional or continuation application. Consequently, less information is available about design patent applications until the applications issue.

Counsel must find the proper balance when claiming designs. Applicants will often use portion claiming techniques, which helps protect the innovative portions of a design while making it more difficult to “design around” the patent. However, it may also make it harder to get the patent because it is more susceptible to the prior art.

In light of recent design patent decisions, including the Federal Circuit’s decision in Sport Dimension (2016), counsel should consider filing applications with multiple embodiments or filing multiple applications for a design concept with different degrees of scope.

Listen as our authoritative panel of patent attorneys examines key considerations when defining and drafting design patent claims and discusses how the courts are treating claim construction issues for design patents.


  1. Key considerations
    1. Portion claiming
    2. Divisional filings
    3. Ornamentality and functionality
    4. Written description
  2. Court treatment
    1. Sport Dimension Inc. v. The Coleman Co. Inc. (Fed. Cir. 2016)
    2. Ethicon Endo-Surgery Inc. v. Covidien Inc. (Fed. Cir. 2015)
    3. Samsung Electronics Co. Ltd. v. Apple Inc. (Fed. Cir. 2015)


The panel will review these and other key issues:

  • What key considerations should counsel keep in mind in design patent drafting?
  • What steps should counsel to patent owners take to factor out functional aspects during claim construction?
  • What guidance can be drawn from recent court decisions for design patent claim construction?


Christopher V. Carani, Shareholder
McAndrews Held & Malloy, Chicago

Mr. Carani is nationally recognized in the field of design law, regarding the protection and enforcement of product design through the use of design patents, trade dress and copyrights. A registered attorney before the USPTO, Mr. Carani’s secures the full panoply of Design IP rights for some of the world’s most design-centric companies and designers, securing over 2000 design rights, both in the U.S and in over 70 countries around the world. Mr. Carani has successfully litigated numerous disputes regarding design rights and has also served as a consultant and expert witness in numerous design law cases. He represented the AIPLA in the landmark design patent case Egyptian Goddess v. Swisa, where the positions set forth in his amicus briefs were ultimately adopted by the Federal Circuit thereby reshaping the law on design patents.

Robert S. Katz, Esq.
Banner & Witcoff, Washington, D.C.

In his practice, Mr. Katz has helped procure over 6,000 design patents in the U.S. and over 18,000 design patents/registrations outside the U.S., and has helped to successfully enforce over 100 design patents. Mr. Katz has also provided advice and prepared opinions regarding the patentability of inventions, patent infringement, patent validity, and trade secret protection to help clients properly assess the advantages and disadvantages of certain intellectual property and business decisions. He is a frequent speaker on industrial design-related topics and is a professor at George Washington University Law School teaching Design Law and at Georgetown University Law School teaching IP Pretrial Litigation Skills. Mr. Katz currently serves as Treasurer of FICPI's U.S. Section and as Vice Chair of INTA's Design Rights Committee.

Nathan B. Sabri, Partner
Morrison & Foerster, San Francisco

Mr. Sabri practices in the firm’s Intellectual Property Group. He focuses his practice on litigation, and has experience litigating in federal court and state court as well as managing global strategy in cases spanning multiple jurisdictions. His matters have included advice and patent litigation involving subject matters such as antibody development, noninvasive prenatal diagnostics, surgical robotics, smartphones, email software, and graphical user interfaces. Mr. Sabri was a member of the in-court trial team in high-profile smartphone cases leading to three jury verdicts totaling over $1 billion, among other matters.


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Patent Law Advisory Board

Charles S. Baker


Locke Lord

David S. Bloch


Winston & Strawn

Irah H. Donner



Ian N. Feinberg


Feinberg Day Alberti & Thompson

Anthony J. Fitzpatrick


Duane Morris

David Segal

Senior IP Counsel


Astrid R. Spain


Jones Day

Mark P. Wine



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