overlapping arches and blanket base combination"). Therefore, the question is whether a design made up of two soft-looking, overlapping arches that are attached to the corners of a blanket base is primarily functional or primarily ornamental. Stated differently, the question is whether the utilitarian purpose of providing a soft base on which a baby could lie while looking up at hanging toys dictates such a design.
The blanket base clearly furthers the utilitarian purpose by providing a cushioned support surface for resting a baby, and also by receiving and anchoring the ends of the diagonal arches at the respective corner pockets. The corner pockets further this purpose by receiving the ends of the diagonal arches and keeping the ends of the arches secured to the blanket. The diagonal arches provide the structure from which the toys are hung. In addition, as discussed previously, because the flexible rods are bent to form the arches, the arches provide tension that keeps the blanket taut while the baby is lying on it. The arches crisscross in order to prevent them from falling down. The diagonal arches also rotate so that they can be folded together to provide for easy portability, The snaps on the periphery of the blanket are used to keep the blanket folded in half when it is placed in the portable position. Lastly, the grommets depicted in the patent are used to hang the toys. See, e.g., Tr. at 448, 449, 466-70 (testimony of Denny Conley, Tyco's expert on toy design, wherein he testified regarding the functional aspects of the design claimed in the Tiny Love patent as embodied in the GYMINI Gym).
Thus, it is clear that all of the components of the design further the utilitarian purpose. However, this conclusion does not end the inquiry. The fact that the design in the Tiny Love patent furthers the purpose of providing a baby mattress/activity gym does not necessarily mean that the Tiny Love design was dictated by primarily functional considerations. See L.A. Gear, 988 F.2d at 1123. "The elements of the design may indeed serve a utilitarian purpose, but it is the ornamental aspect that is the basis of the design patent." Id. (citation omitted). If there are several ways to achieve the same functions or utilitarian purpose as that achieved by the Tiny Love Patent, then it is "more likely" that the specific design claimed in the patent serves a primarily ornamental purpose. See id.
There is conflicting evidence before the court regarding whether there are alternative designs that would serve the same utilitarian purpose as the Tiny Love Patent. Tiny Love's expert in designing products for aesthetics, Michael Cousins, testified that there were a number of alternative designs that would perform the same functions. See Tr. at 122-29, 137-38; Defendants' Exs. 16-18, 20. Some of Mr. Cousins' alternative designs were quickly drawn during the hearing itself and some were prepared prior to the hearing. See Defendant's Exs. 16-18. With respect to the designs that Mr. Cousins created prior to the hearing, he stated that they were "certainly not " the result of "an extensive design project." Tr. at 137 (emphasis added). Mr. Cousins' office only spent "several hours" developing alternative designs. Id. Because Mr. Cousins admittedly did not engage in an extensive design project and appears to have only somewhat cursorily explored alternative designs, I find his testimony on this issue unpersuasive.
Mr. Clutton, Tyco Preschool's vice-president of marketing, testified that Tyco also explored a number of alternative designs that performed the same functions. Tyco concluded from this research that the alternative designs did not function as well as a design that was based on overlapping arches connected to the corners of a blanket or were too costly to manufacture. Most of the alternative designs had both defects. See Tr. at 272-78; Plaintiff's Exs. 4, 20-22. Mr. Clutton explicitly and persuasively described the defects with the designs that appear in Plaintiff's Exs. 22-22. Id. Mr. Clutton testified that the "driving force" behind Tyco's using a design for the Cozy Quilt that incorporated overlapping arches attached to a blanket were that it functioned better and cost less than the alternative designs. Tr. at 278. In addition, Mr. Conley, who testified as Tyco's expert on toy design, also opined that none of the elements of the Tiny Love product could be replaced without an impact on function, cost, or efficiency. Tr. at 449. I find Mr. Clutton's and Mr. Conley's testimony to be persuasive. Thus, I find that Tyco is likely to demonstrate by clear and convincing evidence that the design claimed by Tiny Love in its patent, i.e., two soft-looking, overlapping arches attached at the ends of the arches to the corners of a blanket, is primarily functional. Therefore, Tiny Love has failed to demonstrate that it is likely to succeed on the merits of its design patent infringement claim.
ii) Obviousness or Nonobviousness
In the alternative, I also conclude that Tiny Love has failed to establish a probability of success on the merits of its design patent claim because Tyco is likely to prove by clear and convincing evidence that the Tiny Love Patent is invalid because it is obvious.
A patented design must meet the substantive criteria of patentability, including nonobviousness in accordance with the law of 35 U.S.C. § 103. See 35 U.S.C. § 171 ("The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided."). See also Avia, 853 F.2d at 1563 ("Design patents must meet a nonobvious requirement identical to that applicable to utility patents."). Section 103 of the patent statute provides, in part, that
[a] patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.