Design Patent Case Study for Attorneys: Avoid Rejections by Excluding Functional Elements

⚖️ Over-Claiming Kills Design Patents: What Attorneys Must Know

Design patents are judged by their drawings—and claiming the wrong lines can lead straight to invalidation.

Here’s a case every attorney should know:
Sattler Tech. v. Humancentric Ventures, PGR2019-00030.

In this PTAB challenge, a simple bracket was at stake.
But the takeaway was massive: functionality kills ornamentality—especially when it’s drawn in solid lines.

🔍 Case Summary: The Pitfall of Claiming Functionally Dictated Parts

In U.S. Design Patent No. D823,093 (a “VESA mount adapter bracket”), the patentee included:

• 3 tabs
• 8 grommet heads
• A bracket perimeter (dashed = disclaimed)

The patent was challenged in a Post-Grant Review (PGR) for lacking ornamentality.
PTAB agreed the bracket’s claimed features were “dictated by function.”

Key PTAB reasoning included:

• Spacing and placement of grommets mirrored VESA mechanical specs.
• Height and diameter of parts followed functional standards.
• Nothing ornamental was claimed beyond these functional dimensions.

⚠️ Why This Matters for Patent Attorneys

As a patent attorney, your clients count on you to:

• Prevent invalidity challenges.
• Draft defensible, enforceable claims.
• Maximize the lifespan and scope of design rights.

But if you let solid lines include functional geometry—even unintentionally—you weaken the entire design.

💡 Actionable Lessons for Attorneys

✅ 1. Use Phantom Lines to Disclaim Functional Elements

Any part dictated by fit, size, or performance?
Draw it with dashed lines to avoid claiming it.

Think like litigation counsel: If you had to defend this design in court, could you argue it’s purely ornamental?

✅ 2. Evaluate Standards-Compliance Carefully

If dimensions follow industry specs (like VESA), they’re probably not protectable ornamentation.

🔍 Run a “standards check” before finalizing your drawings.

✅ 3. Push Back on Overzealous Detail

Don’t let drafters include everything visible in the CAD.
The goal isn’t to show what the product is—only what’s protectably ornamental.

💬 Tip: Use a two-tier drawing strategy.

• Tier 1: Submit ornament-only claims.
• Tier 2: File a broader version only if ornamentality is clear.

✍️ Final Thought

The Sattler case is a wake-up call for attorneys filing design patents:
Drawings can bury or bulletproof your claims.

If it’s functional—disclaim it.
If it’s ornamental—claim it cleanly.

The best defense isn’t a great argument—it’s a great drawing.

🎯 Want Design Drawings That Stand Up in Court?

STIPPLES by IP DaVinci helps you file smarter design patents with:

• 🛑 Automatic detection of functional elements
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