Federal Circuit Clarifies Test For Design Patent Infringement – Factoring Out Functional Elements

On March 9, 2010, the United States Court of Appeals for the Federal Circuit issued its opinion in Richardson v. Stanley Works, Inc. (Case No. 2009-1354) (Lourie, J.). In its opinion, the court clarified the claim construction process when the claimed design includes functional elements. In doing so, the court confirmed that the infringement analysis still involves a comparison of the overall designs.

In Richardson, the plaintiff/patentee filed an infringement action against tool manufacturer Stanley alleging that Stanley’s "Fubar" design infringes U.S. Patent No. D507,167 ("the '167 patent") for Richardson’s "Stepclaw" tool. The '167 patent claims the ornamental design of the tool depicted in figures 1 and 2, shown below:

Stanley obtained U.S. Patent No. D562,101 ("the '101 patent”) on the basic Fubar design. All versions of Stanley’s Fubar are built about Stanley’s patented design. Figures 1 and 5 of Stanley’s '101 patent are shown below:

After a bench trial, the district court entered judgment of noninfringement in favor of Stanley. In its order, and as part of claim construction, the district court distinguished the ornamental aspects from the functional aspects of Richardson's design and then determined that an ordinary observer, after discounting the functional elements of Richardson’s design, would not be deceived into thinking that the Fubar tools were the same as Richardson’s Stepclaw. Richardson appealed.

On appeal, Richardson claimed that the district court erred in its claim construction by separating the functional aspects of the design from the ornamental ones, rather than considering the design as a whole, citing Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008). Richardson contended that a design element is purely functional only when the function encompassed by that element cannot be performed by any other design. Further, Richardson contended that the overall design of the '167 patent is not dictated by the useful elements found in the tool, and that the functional parts of its design remain relevant to the scope of the patented claim.

The Federal Circuit disagreed with Richardson. The Federal Circuit affirmed the district court’s claim construction, holding that where a design contains both functional and non-functional elements, the scope of the claim must be construed in order to identify the non-functional aspects of the design as shown in the patent. In addressing Richardson’s interpretation of Egyptian Goddess, the Federal Circuit stated that in that case, which abandoned the point of novelty test, the ordinary observer test should serve as the sole test for infringement. Although Egyptian Goddess proposes that the preferable course ordinarily for a district court is not to attempt to construe a design patent claim, there are a number of claim scope issues on which the court's guidance is useful to the fact finder. Among them is the distinction between the functional and ornamental aspects of a design.

The Federal Circuit held that with respect to the ‘167 patent, the district court properly factored out the functional aspects of Richardson’s design as part of its claim construction. Recognizing that a multi-function tool, such as the Stepclaw, has several functional components, the court made clear that only the non-functional ornamental designs of the article are eligible for design patent protection. The design of several elements of the Stepclaw, such as the handle, hammer-head, jaw, and crowbar, are dictated by their functional purpose and thus are properly separated out during claim construction. Further, the court added that while drawings are of "decisive importance" in design patent cases, district court's may use the drawings to explain functional and ornamental features.

Applying that claim construction, the Federal Circuit held that the district court properly held that the Stanley Fubar did not infringe the ‘167 patent. The court rejected Richardson’s contention that had the district court conducted a three-way comparison between the prior art, the patented design, and the accused products, it would have found the accused product design to be substantially the same as the patented one. Rather, the Federal Circuit agreed with Stanley’s contention that the only similarities between the patented design and the accused Fubar tools were those of unprotectable functional elements. However, the court stated that for infringement, the test is whether deception arises as a result of the similarities in the overall design, not of similarities in ornamental features in isolation. With respect to the Fubar and the '167 patent, the court found the design (non-functional) elements of the Fubar are significantly different from the '167 patent's ornamental elements. Thus, the "accused products embody an overall effect that cannot be found in the '167 patent design and hence cannot cause market confusion."

A copy of the decision may be found by clicking [here].