IP Law Daily, PATENT—Fed. Cir.: Federal Circuit declines en banc review of design patent noninfringement ruling, (Aug 13, 2026)

By Saurabh Kashyap, B.A., M.A., LL.B., LL.M.

The court left intact its ruling that sufficiently distinct designs may be found noninfringing as a matter of law without requiring a jury determination.

The U.S. Court of Appeals for the Federal Circuit has denied a handheld massage device design patent owner’s petitions for appellate court rehearing and rehearing en banc, leaving intact a divided appellate court decision affirming summary judgment of noninfringement of a design patent covering a handheld massage device. The court declined to reconsider whether design patent infringement may be resolved as a matter of law when the claimed and accused designs are sufficiently distinct or whether functionality determinations made during design patent claim construction should instead be left to a jury (Range of Motion Products, LLC v Armaid Company, Inc., No. 23-2427 (Fed. Cir. Aug. 11, 2026)).

Massage devices. Range of Motion Products develops and sells handheld massage devices and owns U.S. Design Patent No. D802,155 (the D’155 patent). Armaid Company Inc. markets competing handheld massage products. Range of Motion accused Armaid’s Armaid2 device of infringing the D’155 patent, leading to litigation in the federal district court in Maine.

The D’155 patent depicts a handheld massage device with opposing curved arms, massage elements positioned between them, and a lower handle and base structure. The district court compared the patented design with the accused Armaid2 device and concluded that no reasonable jury could find infringement. Although the two designs looked similar “at a conceptual level,” the court identified differences producing distinct overall visual impressions. It also considered the earlier Armaid1 device as prior art. The Federal Circuit affirmed summary judgment of noninfringement in Range of Motion Products, LLC v. Armaid Co., 166 F.4th 981 (Fed. Cir. 2026).

Range of Motion then petitioned for en banc rehearing. Several intellectual property and industrial-design organizations and practitioners were permitted to file amicus briefs. After the petition was referred first to the original appellate court and then to the active Federal Circuit judges, a requested poll failed. The court consequently denied both rehearing before the appellate court and en banc rehearing.

Ordinary observer. The dispute centered principally on the ordinary-observer test governing design patent infringement. Under Gorham Co. v. White, 81 U.S. 511 (1872), infringement turns on whether, in the eye of an ordinary observer giving the attention normally given by a purchaser, the claimed and accused designs are substantially the same.

The Federal Circuit’s en banc decision in Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008), further explained that some claimed and accused designs may be sufficiently distinct that it is clear, without more, that the patent owner cannot establish substantial similarity. That principle permits courts to resolve appropriate design patent cases without requiring a full comparison against the prior art.

The appellate court had applied that framework in affirming summary judgment for Armaid. The district court considered both similarities and differences between the D’155 design and Armaid2 and also conducted a three-way comparison involving the prior art. Under either approach, the appellate court concluded, no reasonable jury could find infringement.

Summary judgment. The denial of rehearing leaves that approach undisturbed. The court did not adopt a rule requiring every design patent infringement dispute to proceed to a jury merely because comparison of visual designs involves factual considerations.

The existing framework permits summary judgment when there is no genuine dispute of material fact and no reasonable jury could find the claimed and accused designs substantially the same. The court previously applied that principle in Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312 (Fed. Cir. 2015), affirming summary judgment where the designs were plainly dissimilar.

The case also presented a related dispute over the allocation of responsibility between courts and juries when determining which features of a design are functional rather than ornamental. Existing Federal Circuit law treats claim construction as a task for the court and permits the court, when defining the scope of a design patent, to distinguish functional from ornamental features.

Under Egyptian Goddess, claim construction in design patent cases can include explaining drafting conventions, considering prosecution-history representations, and distinguishing ornamental features from purely functional ones. Those determinations guide the ultimate infringement analysis rather than themselves deciding whether an accused design produces substantially the same overall visual impression.

The rehearing denial therefore leaves intact both the appellate court’s noninfringement judgment and the Federal Circuit’s broader framework permitting judges to construe design patent claims and resolve infringement at summary judgment where the evidence permits only one reasonable conclusion.

Concurring opinion. In a separate concurrence, two judges defended the appellate court decision and the existing design patent framework. They rejected the contention that Egyptian Goddess improperly shifted the inquiry from substantial similarity toward identifying differences. Determining whether designs are substantially the same necessarily requires consideration of both similarities and differences, they reasoned, and Gorham itself contemplated consideration of differences while making the designs’ overall effect controlling. If district courts improperly grant summary judgment despite genuine factual disputes, the appropriate response is reversal in those cases rather than abandoning settled design patent law.

The concurrence also maintained that this case was a poor vehicle for reconsidering Egyptian Goddess because the district court had actually conducted the prior-art comparison urged by the dissent and reached the same noninfringement conclusion. It further rejected the argument that functionality determinations should be transferred to juries. Drawing on Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996), the concurrence reasoned that claim construction remains a legal question for courts even where subsidiary factual determinations are necessary. Design patent claim construction similarly defines the boundaries of the patent right, including by identifying functional aspects that affect claim scope. A jury decides infringement where reasonable minds could differ, but it must first know the legal boundaries of the claimed design.

Dissenting opinion. Two judges dissented in a separate opinion, while two additional judges dissented from the denial of rehearing without opinion. The written dissent argued that Federal Circuit precedent had improperly transferred quintessential factual questions in design patent infringement cases from juries to judges. In its view, determining whether particular aspects of a visual design are functional or ornamental is fundamentally factual and should form part of the jury’s infringement determination rather than judicial claim construction.

The dissent also contended that Egyptian Goddess inadvertently distorted Gorham by allowing courts to ask whether designs are “plainly dissimilar” or “sufficiently distinct” instead of keeping the focus on whether their overall appearances are substantially similar to an ordinary observer. The images reproduced in the dissent—including a side-by-side comparison of the D’155 design, Armaid2 and the prior-art Armaid1 device—were used to illustrate why the dissent believed reasonable jurors could differ over substantial similarity. It warned that what began as a shortcut for unusually clear cases had expanded into a mechanism for deciding factual infringement disputes at summary judgment. The dissent would have restored the jury’s responsibility for questions of aesthetic appearance, ornamentality, functionality, and substantial similarity, while still allowing summary judgment where no genuine factual dispute existed.

The Case is No. 23-2427.

Judge: Per Curiam.

Attorneys: Alexandra Bursak (Orrick, Herrington & Sutcliffe LLP) for Range of Motion Products, LLC. Joshua John Fougere (Sidley Austin LLP) for Armaid Co. Inc.

Companies: Range of Motion Products, LLC; Armaid Co. Inc.

Cases: Patent FedCirNews