Richardson v. Stanley Works, Inc., 597 F.3d 1288 (Fed. Cir. 2010) (LOURIE, Dyk & Kendall, district judge) Richardson03092010
MAJOR ISSUES: design patents; infringement; ordinary observer test; functional features separated out from ornamental features
CARPENTRY TOOL. A patent concerned the design of a multi-function carpentry tool. U.S. Pat. No. D507,167. USPatNoD507167
In finding no infringement by an accused tool, a district court first separated out the design’s functional aspects and then determined that, after discounting the functional elements, the overall effect of the patented design and the accused design was not substantially similar in the eyes of an ordinary observer.
The Federal Circuit held that separating out functional elements was approved in OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396 (Fed. Cir. 1997), and not precluded by the en banc decision, Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (en banc). Egyptian Goddess indicated that it is preferable to avoid construing a design patent claim, but it noted that judicial guidance on claim scope was useful to a fact finder on some issues, one being “the functional and ornamental aspects of a design.”
Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d 1294 (Fed. Cir. 2010), https://www.chisum.com/?s=crocs&cat=3” set out in detail how an ordinary observer analysis could be conducted to determine infringement” and noted that a court must compare the “overall effect” of differences on designs. The ordinary observer test “similarly applies in cases where the patented design incorporates numerous functional elements.” See Amini Innovation Corp. v. Anthony Cal., Inc., 439 F.3d 1365, 1372 (Fed. Cir. 2006). Here, the district court did not fail to apply the ordinary observer test. Ignoring the functional elements to the tools, the patented and accused designs were different. The accused design had a more rounded appearance and fewer blunt edges. Therefore it could not “cause market confusion.”
CROSS REFERENCE. On design patent infringement, see Chisum on Patents 23.05[e]; Chisum Patent Law Digest 5540