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).
Now, 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.”
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.”
- File Attachment: Petition for Rehearing En Banc (00029089).PDF (989 KB)
- File Attachment: AIPLA Amicus Brief In Support of Petition (Richardson v Stanley Works) (Carani).pdf (787 KB)
- File Attachment: Richardson Brief AS FILED (APPLE). 042210.pdf (1432 KB)
- File Attachment: Federal Circuit Panel Decision 09-1354.pdf (162 KB). The original panel consisted of Judges Lourie, Dyk, and Kendall. Judge Lourie wrote the opinion. Judge Kendall is a district court judge in the Northern District of Illinois and was sitting by designation. It is unclear to me whether Judge Kendall would be eligible to sit on the en banc panel. She is neither an active judge nor a senior judge of the circuit who sat on the original panel as required by 28 USC 46(c). However, 28 USC 296 indicates that a judge who sat by designation “may . . .
- File Attachment: D507167_Multi_function_stud_climbing_and.pdf (35 KB)