Design Patents: Eliminating the Ornamental/Functional Dichotomy

PatentlyO042Richardson v. Stanley Works, Inc. (on petition for en banc rehearing at the Federal Circuit, 2010)

In its March 9, 2010 decision, the Federal Circuit held that design patent infringement should focus only on ornamental aspects of the patented design. Richardson’s Design Patent No. D. 507167 covers a multi-function carpentry tool (a FUBAR). On appeal, the Federal Circuit affirmed that Arizona district court properly “factored out” functional elements during the claim construction process and that the ornamental features of the patented design (upper right) were not similar-enough to the ornamental features of the Stanley Works FUBAR (lower right). 

PatentlyO043Now, Richardson has petitioned the Federal Circuit for an en banc rehearing based on the argument that the focus on ornamental features creates a “points-of-ornamentation” test that is contrary to Gorham v. White.  The AIPLA and Apple Computers have both filed briefs in support of the rehearing.

In a comical (but serious) diagram, AIPLA shows the results of “factoring out” functional elements of the Richardson design. The AIPLA concludes that the “panel’s approach (which seeks to separate out ornamental and functional elements) conflicts with the tenet that a design patent protects the overall appearance of the claimed design, and is fraught with logistical problems.”

PatentlyO041

Apple argues that the functionality of an individual portion of the design should have “no direct bearing on design patent infringement or validity.”  Rather, the whole focus of design patents is to cover articles of manufacture that are inherently functional.  There is a functionality limitation for design patents, but the Supreme Court has applied that only to the design as a whole and only when the design is “dictated by function alone.”

Notes:

29 thoughts on “Design Patents: Eliminating the Ornamental/Functional Dichotomy

  1. @IANAE – good points.

    Since the 2008 Federal Circuti decision in Egyptian Goddess, the only test for design patent infringement is the “ordinary observer” test.

    Under that test, infringement will not be found unless the accused article “embod[ies] the patented design or any colorable imitation thereof.” Goodyear Tire & Rubber Co., 162 F.3d at 1116-17; see also Arminiak & Assocs., Inc. v. Saint-Gobain Calmar, Inc., 501 F.3d 1314, 1319 (Fed. Cir. 2007).

    That does not sound like a confusability standard. I guess it depends on what “colorable imitation” means. Or maybe we should look at “ordinary observer.”

    The Supreme Court in 1871 set the bar for defining an “ordinary observer”: not the expert observer, someone “accustomed to compare such designs,” but an average person of “ordinary acuteness,” who may be misled by “colorable imitation.”

    So it looks like the propensity of the “colorable imitation” to mislead the “ordinary observer” is important. Now that DOES sound a lot more like “confusability.”

    But I guess I’m glad Registered Trademarks are harder to obtain than design patents, since they last FOREVER, while Design protection only lasts 14 years.

    If I recall correctly, design protection was introduced to fill a gap for protecting designs of short lived popularity, like clothing fashions, for example. In order for them to fulfill their proper purpose, it is critical that these patents issue quickly and prevent knockoffs. So relatively easy obtainabilty with a confusability standard sounds about right.

  2. The Stanley tool serves the same purpose, but nobody is going to confuse it with the version that Richardson designed.

    Speaking of different-looking tools that serve the same purpose, consumer confusion is more or less the test for trademark infringement. Is that really the test for equivalents in design infringement? Or am I missing the point that these “patents” are a happy little fiction that nobody is supposed to be looking at too closely?

    Also, I guess it doesn’t bother anyone that design patents are considerably easier to get than registered trademarks.

  3. Isn’t it the purpose of a design patent to enable the patentee to exclude look-alike products? The Stanley tool serves the same purpose, but nobody is going to confuse it with the version that Richardson designed. (If they were hanging side-by-side at Home Depot, you’d not be puzzling over which was which.) The fact that Stanley got their own design patent (D562101) doesn’t bode well for Richardson.

    Richardson seems not to have filed an application for a utility patent, but there are dozens of hammer/crowbar tools in the prior art, so perhaps a design patent was the best he could hope for. His real problem is that Stanley designed a better tool.

  4. The two multitask tools do look kid of similar. There are some ornamental differences.

    The problem is that the length of the handle and the position of the spanner (wrench) and hammer head are dictated by use. These are purely functional and cannot be moved around.

    The correct tool for monopolizing all-in-one spanner – claw – hammer configurations is utility patent law.

    The decision is, therefore, correct.

  5. Has anyone actually looked at the claimed design? It’s a mess. Quite a few surfaces are shaded for curvature in one view but shown flat in another view. Several shapes are shown inconsistently between the drawings. Figure 4, which should be the view “into” the “jaw”, is shaded wrong at the jaw portion. The various inside surfaces of the “jaw” (all of which are claimed) aren’t shaded or shown in enough views to know what they really look like. This thing should have been mired in 112 and (eventually) new matter rejections.

    The AIPLA graphic, and its accompanying brief, illustrate (literally) the problem with treating designs as patents. You can’t construe a drawing. You can’t break it down into individual features or describe it in words. Designs simply do not belong in 35 USC. They need their own framework for validity and infringement. If this means they wind up being creatures of the Commerce Clause, that’s a price I’m willing to pay.

    Although, considering that the design was asserted against a product that was functionally the same but aesthetically miles away, the “patentee” probably would have been better off getting a real patent in the first place.

  6. There are so many ways to overturn this patent, 101, 102, 103, 112, that it might be time for them to just say, clean up this mess.

    Appellate courts don’t usually clean up big messes. They look at the room with junk strewn all over, point to one thing and say “the room is not clean because there’s something on the floor”.

    If you want to know whether a particular item in the room needs to be put away, or where it belongs, you should present to the court a pristine room but for the one item allegedly out of place.

  7. In some respects, Bilski is the perfect case for the Supremes to address “junk patents”.

    There are so many ways to overturn this patent, 101, 102, 103, 112, that it might be time for them to just say, clean up this mess.

    Unfortunately, that’s not the way they usually act.

  8. “I’m guessing that this is going to be a close 5-4 and the judges are still trying to get support for the various majority/concurring/dissenting opinion drafts.”

    Alan,

    What you suggest wouldn’t surprise me. Having read the oral argument transcript, many of the Justices are hopelessly confused about the difference between “patent-eligible” (under 35 USC 101) and “patentable” (under 35 USC 102/103). Bilski was a horrible case to take up on the “patent-eligible” issue under 35 USC 101. I read the application and the claims should have been trounced under 35 USC 112, at least paragraph 2 and possibly paragraph 1, as several of the claim terms are ambiguous and completely undefined in (and undefinable from) the application spec. Whether those claims would have survived under 35 USC 102/103 is a completely different matter.

  9. Paul wrote, “Considering other CAFC decisons on how narrowly the “claim scope” of a design patent is supposedly limited by its [solid line] drawings, and looking at the numerous highly visable differences above, with hardly a single line in common, one wonders why cases like this don’t get promptly disposed of by requiring summary judgements of non-infringement…”

    Yes, but the court must still construe the claim prior to considering MSJ… …and construction is where they went AWOL in this FUBAR’d case.

  10. There are several Supreme Court cases that were argued after Bilski that have had decisions.

    I’m guessing that this is going to be a close 5-4 and the judges are still trying to get support for the various majority/concurring/dissenting opinion drafts.

    I see a majority decision, a concurrence in the result but not the reasoning and a lengthy dissent.

  11. The real question is how come I never get clients like Richardson, who have money to burn to pursue such a case. I guess I usually screw myself and tell them “I’m not seeing it.” Of course, I could just as easily say “I’ll fight this case to the US Supreme Court and beyond for you!!!!” once I see he’s got the $$$$ to pursue it. Perhaps I’m just a lousy businessman.

    Nah, just an honest patent attorney. We need more like you.

  12. “As for the Court’s conclusion that the features were “purely functional,” it seems that the differing appearances of the features in the Stanley Works compared to the Richardson tool would be prima facie evidence that the features are non-functional. In other words, there are alternative designs for each feature and thus they are not functional.”

    You got it Viktor. QFT

  13. “While there is similarity, the similarity is in the FUNCTION, not the design. Each has a handle, a prybar and a wrench. They’re even arranged the same way, but so what? That’s not what a design patent protects.”

    Sorry, Mike. I have to disagree. if the arrangement is not the optimal arrangeemnt or the only arrangement, then Desgn Patents do protect it. I’m not sure which party has the burden of proving that it is not the only or optimal arrangement, or what that burden of proof should be, but I’m fairly certain about the capability of such an arrangement to be an ornamental design if it is not the only or optimal arrangement for the functionality that is present.

  14. AS far as viewing the patented design as purely functional or purely dictated by function, I can’t agree.

    The rule is that the design can’t be the optimal design or the only possible design to achieve the functionality that is present.

    Here, you can plainly see that there choices to be made as to whether the crow bar portion extends to the right or left, or if it grows out of the head instead of the handle, etc.

    Just looking at the patented article and the allegedly infringing article, you can see that there are options that were exercised differently.

    The next question is, what options could have been exercised differently, but were not exercised differently.

    Then you have to ask whether the options that were exercised differently, compared to the options that were not exercised differently, distinguish the allegedly infringing article from the claimed design to the degree that there is not substantial similarity evident to the ordinary observer.

    I’m not pushing for one outcome or the other. I’m saying there is a problem with throwing out each functional feature, and failing to take into account the non-mandatory arrangement of these features leading to the overall ornamental appearance of the article having those functional features.

    This is not Legal Advice

  15. Where is Bilski?

    Looking at when recent slip ops have been released, are we going to have to wait another month for Bilski?

    My guess is that they are having difficulty articulating their decision using existing patent law.

    They’ll probably just retreat into rhetoric and policy.

  16. The appearances of the two designs do not LOOK like each other and thus, yes, a fact-finder would likely find no infringement. The problem with the Fed. Cir.’s opinion, however, is not about the noninfringment finding, but rather its approach to design patent claim construction. The Richardson Court endorsed a claim construction aproach that attempts to divy up an the depicted overall design into ornamental and functional features. (In a real way, this is the point of novelty all over again.)

    While a fact-finder as part of the infringement analysis can disregard the functional nature and purpose of a design patent’s features, neither the Court (as part of claim construction) nor the fact-finder (as part of infringment) should factor out the APPEARANCE of any of the design patent’s depicted elements, whether functional or otherwise. “The ordinary observer test applies to the patented design in its entirety, as it is claimed.” Crocs v. ITC.

    [As for the Court's conclusion that the features were "purely functional," it seems that the differing appearances of the features in the Stanley Works compared to the Richardson tool would be prima facie evidence that the features are non-functional. In other words, there are alternative designs for each feature and thus they are not functional. In any event, as stated above, the Court should not be engaging in this kind of piecemeal approach to design patent claim construction.]

  17. (*Note: FUBAR = Fouled Up Beyond Any Recognition)

    The ornamental aspects of the ’176 patent include the flare out of the claws, the lazy, oversized waves of the mouth teeth, the oblisque shape of the handle, the outwardly jutting curve of the hammerhead support. They further might ornamentally relate to one another and there might be some more ornamental features.

    Now, Stanley’s hammer ain’t got those.

    They both do share the ornamental outward curve of the lower claw, but Stanley’s curve is sharper.

    I’m not seeing enough similarity between the claimed ornamental design and Stanley’s hammer.

    The real question is how come I never get clients like Richardson, who have money to burn to pursue such a case. I guess I usually screw myself and tell them “I’m not seeing it.” Of course, I could just as easily say “I’ll fight this case to the US Supreme Court and beyond for you!!!!” once I see he’s got the $$$$ to pursue it. Perhaps I’m just a lousy businessman.

  18. The court should impose some serious attorney’s fees on the plaintiff in this case. While there is similarity, the similarity is in the FUNCTION, not the design. Each has a handle, a prybar and a wrench. They’re even arranged the same way, but so what? That’s not what a design patent protects.

    The differences in the designs themselves is apparent: the hammer looks different, the handle looks different, the pry bar is directed in a different direction, the wrench doesn’t have the same dimensions/proportions, none of the contours are the same, etc. That is, none of the design elements match.

    Design patents should be narrowly construed. I’d suggest that it be even narrower than how copyright is construed to protect only exact copies.

  19. Ping .. thanks for noting that Designs are not really patents. The U.S. makes this confusing. Other countries seem to realize D’s are not P’s.

    Re the present case, the entire FU-beyond all recognition :-), appears entirely functional and so its main (or only) avenue for IP should be a patent. I suspect they were trying to get “protection” in a low cost manner or their P.A. had a few more payments on the Porche.

    ?: Fully Universal Bar and Rench (sic)

  20. I spend a fortune filing cases,
    that continue to be thrown out.
    I finally figure JUIRISDICTION,
    and change the way I shout.
    As time goes by the better they are.
    As surely you all see.
    But have you all seen what I sent,
    or is the joke on me?

  21. Considering other CAFC decisons on how narrowly the “claim scope” of a design patent is supposedly limited by its [solid line] drawings, and looking at the numerous highly visable differences above, with hardly a single line in common, one wonders why cases like this don’t get promptly disposed of by requiring summary judgements of non-infringement, instead of the CAFC stuggling with issues “fraught with logistical problems” as the AIPLA brief puts it?

  22. More like the KSR…

    oops, wait – KSR doesn’t have any “real” effect, right IANAE?

    Which actually makes the comparison perfect, since Design patents are not real patents anyway, right?

  23. Be careful what you wish for — this case has the potential to become the Bilski of the design patent world.

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