Possible Superior Functionality of Label Design Leads Federal Circuit to Reverse Design Patent Preliminary Injunction

Case: PHG Technologies, LLC v. St. John Companies, Inc., No. 06-1169 (Fed. Cir. 11/17/06)

The One Sentence Summary: A preliminary injunction in a design patent case that prohibited use of a medical label sheet design was vacated where there was a substantial question that the patents were invalid because the design was functional.


What They Were Fighting About: PHG sued St. John for infringement of design patents on medical label sheets that had large file labels at the top and wristbands at the bottom. The district court granted a preliminary injunction, finding that the designs were ornamental rather than functional because there were alternate designs available.

Federal Circuit Holdings:

• The panel reversed the preliminary injunction, finding that defendant had succeeded in presenting a substantial question as to invalidity of the design patents. An affidavit by plaintiff had discussed the benefits of a design where the patient wrist band labels were at the bottom of a label sheet for easy removal. This affidavit and statements by plaintiff in the prosecution history of a pending utility patent application indicates that other medical label designs would adversely affect the utility of the medical label sheet. Accordingly, the district court erred in finding a substantial likelihood of success for plaintiff and granting the preliminary injunction.