Abstract: In the world of design patents, looks trump all. That’s because a design patent protects only an article’s ornamental aspects — not its functional aspects. In one case involving carpentry tools, the Federal Circuit offered a reminder that this limited scope of protection can undermine a patent owner’s infringement claims against even extremely similar products.
LOOKS ARE EVERYTHING WHEN IT COMES TO DESIGN PATENTS
In the world of design patents, looks trump all. That’s because a design patent protects only an article’s ornamental aspects — not its functional aspects. In Richardson v. Stanley Works, Inc., the Federal Circuit offered a reminder that this limited scope of protection can undermine a patent owner’s infringement claims against even extremely similar products.
CONSTRUCTING A CASE
David Richardson owns a design patent for the “Stepclaw,” a multifunctional carpentry tool that combines a hammer with a stud climbing device and a crowbar. Because it’s a design patent, the patent covers only the tool’s ornamental design. In 2005, Stanley introduced a line of tools under the name “FuBar” that it sold in five versions.
In 2008, Richardson sued Stanley, alleging that the FuBar tools infringed his patent. After a bench trial, the district court entered a judgment of noninfringement in Stanley’s favor. It found that an ordinary observer considering the ornamental aspects of the designs wouldn’t think any of the FuBar tools were the same as the Stepclaw.
RETOOLING AN ARGUMENT
On appeal, Richardson argued that, rather than consider the design as a whole, the court wrongly separated the functional aspects of his design from the ornamental aspects. Richardson contended that the Federal Circuit’s 2008 decision in Egyptian Goddess v. Swisa, Inc. required that the patented design be compared in its entirety with the accused design from the perspective of an ordinary observer.
In Egyptian Goddess, the court abandoned the point of novelty test for design patent infringement and held that the ordinary observer test was the sole test. But, as it pointed out in Richardson, the court noted the distinction between the functional and ornamental aspects of a design.
In Richardson, the court reiterated that a design patent limits protection to the ornamental design of the covered article, specifically, “If the patented design is primarily functional rather than ornamental, the patent is invalid.” Even when the design contains both functional and ornamental elements, the design patent is limited to the ornamental aspects.
SCOPING OUT A CLAIM
Turning to the tools at issue, the court found that the Stepclaw includes several elements that are purely functional — including the handle, hammerhead, jaw and crowbar. It described Richardson’s argument as one for a claim scope that includes those elements and agreed with the district court that scope should be restricted to the ornamental aspects. The court added that nothing in Egyptian Goddess compelled a different outcome.
The Federal Circuit affirmed the district’s finding that, if one ignores the functional elements of the tools, the two designs are significantly different. Each of the FuBar tools has a streamlined visual theme running throughout the design. The court determined that, overall, the FuBar tools clearly have a more rounded appearance and fewer blunt edges than Richardson’s design.
HAMMERING IT HOME
Ultimately, the Federal Circuit concurred with the district court that the only similarities between the tools are of unprotectable functional elements. Thus, this case illustrates that similarity to a patented article’s functional aspects alone won’t support a claim of design patent infringement.