Ornamental Elements, Not Functional Elements, Are Protected in a Design Patent
March 09, 2010
Last Month at the Federal Circuit - April 2010
Judges: Lourie (author), Dyk, Kendall (District Judge sitting by designation)
[Appealed from: D. Ariz., Judge Wake]
In Richardson v. Stanley Works, Inc., No. 09-1354 (Fed. Cir. Mar. 9, 2010), the Federal Circuit affirmed the district court’s claim construction of U.S. Patent No. D507,167 (“the ’167 patent”), affirmed the noninfringement of the ’167 patent, and ruled that the district court permissibly denied Richardson’s motion for a jury trial.
Richardson owns the ’167 patent, a design patent that claims in its only claim an ornamental design for a multifunction carpentry tool, the “Stepclaw.” In 2005, Richardson asserted its ’167 patent against Stanley’s construction tool, the “Fubar.” In addition, Richardson alleged that Stanley was unfairly competing with him in the U.S. market. Stanley markets in the United States five different versions of the Fubar, all based upon the Fubar design in Stanley’s U.S. Patent No. D562,101 (“the ’101 patent”).
Almost five months after Richardson brought suit against Stanley, Richardson requested a jury trial, which Stanley moved to strike as untimely under Fed. R. Civ. P. 38(b). In response, Richardson requested that a jury trial be granted under Rule 39(b). The district court granted Stanley’s motion to strike and denied Richardson’s Rule 39(b) motion. The district court also granted Stanley’s motion to dismiss Richardson’s unfair competition claim. The district court subsequently conducted a bench trial on Richardson’s patent infringement claim and entered judgment of noninfringement in favor of Stanley.
On appeal, Richardson first challenged the district court’s claim construction of the ’167 patent. Richardson argued 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. Richardson argued that the decision in Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (en banc), requires that the patented design be compared in its entirety with the accused design, and that the comparison be made from the perspective of an ordinary observer. A claim construction such as the one performed by the district court, Richardson argued, is necessary only for designs that contain purely functional elements. According to Richardson, a design element is purely functional only when the function encompassed by that element cannot be performed by any other design. 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 Court found that the district court did not err in its claim construction by separating the functional and ornamental aspects of the ’167 patent design. The Court explained that the issue here was no different than the issue in OddzOn Products, Inc. v. Just Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997), where the Court held that “[w]here 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.” Slip op. at 5 (alteration in original). According to the Court, the holding in Egyptian Goddess did not mandate a different result where the Court there held that the ordinary observer test should serve as the sole test for infringement, and that distinguishing between the ornamental and functional aspects of the design would assist the fact-finder in construing a design patent claim.
Accordingly, the Court held that the district court here properly factored out the functional aspects of Richardson’s design as part of its claim construction. The Court opined that, “[b]y definition, the patented design is for a multi-function tool that has several functional components, and we have made clear that a design patent, unlike a utility patent, limits protection to the ornamental design of the article.” Id. at 6. The Court further explained that if the patented design is primarily functional rather than ornamental, the patent is invalid. However, when the design also contains ornamental aspects, it is entitled to a design patent whose scope is limited to those aspects alone and does not extend to any functional elements of the claimed article.
In upholding the district court’s claim construction, the Court further rejected Richardson’s argument that the court purportedly did not include drawings from the ’167 patent in its claim construction. The Court agreed with Richardson on the decisive importance of drawings in a design patent, that design patents are typically claimed according to their drawings, and that claim construction must be adapted to a pictorial setting. According to the Court, however, the district court had done just that as the district court’s entire construction was based on what was shown and described in the ’167 patent, including the drawings.
Next, the Court considered whether the district court properly ruled that the Stanley tools did not infringe the ’167 patent. Richardson argued that the district court should have analyzed infringement of the ’167 patent under an ordinary observer test, and conducted a three-way comparison among the prior art, the patented design, and the accused products to find infringement. Stanley responded that the district court properly found that the only similarities between the patented Stepclaw and the accused Fubar tools were those of unprotectable functional elements.
Having considered the parties’ arguments, the Court agreed with the district court’s finding of noninfringement. The Court opined that a design patent infringement is a question of fact, which a patentee must prove by a preponderance of the evidence. As the Court held in Egyptian Goddess, the patentee must establish that an ordinary observer, familiar with the prior art designs, would be deceived into believing that the accused product is the same as the patented design. Following the decision in Amini Innovation Corp. v. Anthony California, Inc., 439 F.3d 1365, 1372 (Fed. Cir. 2006), the Court further held that when evaluating infringement, the Court must determine whether the deception that arises is a result of the similarities in the overall design, not of similarities in ornamental features in isolation.
The Court did not agree with Richardson that the district court failed to apply the ordinary observer test in finding no infringement. The Court agreed with the district court’s conclusion that from the perspective of an ordinary observer familiar with the prior art, the overall visual effect of the Fubar is significantly different from the Stepclaw. The Court reasoned that while the district court recited the significant differences between the ornamental features of the two designs, it mainly focused on whether an ordinary observer would be deceived into thinking that any of the Fubar designs were the same as Richardson’s patent design. Accordingly, the Court found no error in the district court’s approach.
The Court also agreed that, ignoring the functional elements of the tools, the two designs were indeed different. In a side-by-side comparison with the ’167 patent design, the overall effect of the streamlined theme of the Fubar tools made them significantly different from Richardson’s design. The Court further held that the district court therefore was not clearly erroneous in concluding that the accused products embody an overall effect that cannot be found in the ’167 patent design and hence cannot cause market confusion.
The Court next considered Richardson’s argument that the district court improperly denied Richardson’s jury demand as untimely. Richardson argued that at the time he filed his jury demand, Stanley’s motion to dismiss Richardson’s unfair competition claim was pending, and the Rule 38(b) clock did not start until the district court ruled on the motion. Moreover, Richardson argued, the district court had ample discretion to grant his jury demand under Rule 39(b), but refused to do so, improperly concluding that Richardson’s inadvertence foreclosed any further analysis of the merits of his motion.
Stanley responded that its motion to dismiss was not a pleading and hence did not toll the ten-day deadline for Richardson to file a jury demand. Moreover, Stanley argued, the motion to dismiss was limited to state law claims and did not in any way affect Richardson’s deadline for filing a jury demand for patent infringement claims.
The Court agreed with Stanley that the district court permissibly denied Richardson’s motion for a jury trial. Regarding the timeliness of Richardson’s jury demand against the Rule 38(b) clock, Rule 38(b) states that “a party may demand a jury trial by . . . serving the other parties with a written demand – which may be included in a pleading – no later than 10 days after the last pleading directed to the issue is served.” Id. at 12 (alteration in original) (quoting Fed. R. Civ. P. 38(b)). According to the Court, Stanley’s motion to dismiss did not constitute a pleading directed to issues of fact triable by the jury as defined by Rule 7(a). Therefore, the Court found that Richardson’s jury demand was untimely regardless of Stanley’s pending motion.
According to the Court, a district court’s discretion in granting an untimely demand for a jury trial under Rule 39(b) is narrow, and does not permit a district court to grant relief when the failure to make a timely demand results from oversight or inadvertence. Richardson argued that it presented more reason than mere inadvertence for its untimely motion. Richardson contended that Stanley’s motion to dismiss and subsequently filed answer in response to his complaint put him in a difficult position of determining when his jury demand was due, and eventually miscalculating his deadline for making the demand. According to the Court, Richardson therefore appeared to argue that his delay was not due to mere inadvertence, but rather due to a good-faith mistake in determining the deadline under the federal rules.
The Court found Richardson’s argument unpersuasive. The Court held that even if Richardson’s failure to timely file a jury demand were considered to be a result of his good-faith mistake as to the deadline in light of Stanley’s motion to dismiss, such a mistake establishes no more than inadvertence under Ninth Circuit law. According to the Court, the district court properly refused to exercise its discretion in rejecting Richardson’s Rule 39(b) request.
Summary authored by Denise Main, Ph.D., Esq.