Richardson v. Stanley Works, Inc.
597 F.3d 1288, 2010 U.S. App. LEXIS 4895, 93 U.S.P.Q. 2d (BNA) 1937 (2010)
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Rule of Law:
When a design patent contains both ornamental and functional elements, the scope of the claim is limited to the ornamental aspects of the design. In an infringement analysis, a court must first distinguish the functional elements from the ornamental ones and then apply the ordinary observer test to the overall ornamental design.
Facts:
- David Richardson owns U.S. Patent D507,167, a design patent for a multi-function carpentry tool called the 'Stepclaw'.
- The Stepclaw's design combines a conventional hammer, a stud climbing tool, and a crowbar.
- Stanley Works, Inc. ('Stanley') manufactures and sells a line of multi-function demolition and construction tools called the 'Fubar'.
- The Fubar tool, sold in five versions, is built around a basic design for which Stanley obtained its own design patent, U.S. Patent D562,101.
- Both the Stepclaw and Fubar tools contain utilitarian components, such as a hammerhead, a handle, a jaw, and a crowbar, whose shapes are dictated by their function.
- The Fubar tools possess a distinct visual theme, featuring a streamlined, rounded appearance with a tapered hammer-head and smoothly contoured handle, which differs from the more angular and blunt-edged design of the Stepclaw.
Procedural Posture:
- David Richardson filed a complaint against Stanley Works, Inc. in the U.S. District Court for the District of Arizona, alleging patent infringement and unfair competition.
- Stanley filed a motion to dismiss, which the district court granted as to the unfair competition claim.
- Richardson filed an untimely request for a jury trial.
- The district court granted Stanley's motion to strike the jury demand as untimely.
- Following a bench trial on the patent infringement claim, the district court entered a judgment of non-infringement in favor of Stanley.
- Richardson, as appellant, appealed the district court's judgment to the U.S. Court of Appeals for the Federal Circuit, with Stanley as the appellee.
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Issue:
In a design patent infringement analysis for an article with both functional and ornamental features, does a court err by first construing the claim to filter out the unprotectable functional elements before applying the 'ordinary observer' test to the remaining ornamental design?
Opinions:
Majority - LOURIE, Circuit Judge.
No. In a design patent infringement case for an article containing both functional and ornamental elements, a court does not err by first identifying and factoring out the unprotectable functional elements as part of its claim construction before applying the ordinary observer test. A design patent's scope is limited to the ornamental aspects of the article alone. The court's reasoning was that precedent, specifically OddzOn Prods., Inc. v. Just Toys, Inc., mandates that where a design has both functional and non-functional elements, the claim must be construed to identify the non-functional aspects. The court clarified that its more recent en banc decision in Egyptian Goddess, Inc. v. Swisa, Inc., which established the ordinary observer test as the sole test for infringement, did not overrule this principle and in fact contemplated that courts would assist the fact-finder by distinguishing functional from ornamental features. Allowing a patentee to claim the functional elements of a design would improperly extend the design patent's scope to that of a utility patent. After correctly factoring out the functional aspects of Richardson's tool (the handle, hammerhead, jaw, and crowbar), the district court properly concluded that the overall ornamental appearance of Stanley's Fubar tool was not substantially similar to Richardson's Stepclaw, and therefore an ordinary observer would not be deceived.
Analysis:
This decision reaffirms and clarifies the methodology for analyzing design patent infringement for utilitarian articles after the landmark Egyptian Goddess case. It solidifies a two-step analytical framework where a court must first 'filter out' the purely functional elements of a patented design before an 'ordinary observer' comparison is made. This prevents design patents from being used as a backdoor to protect the functional aspects of an invention, thereby maintaining the critical distinction between design patents (for ornamental appearance) and utility patents (for function). The ruling provides clear guidance that the overall similarity in function or general shape of two products is insufficient for infringement if the protected ornamental features are different.
