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ASPECTS AND ASPECTS AND ELEMENTS: FACTORING OUT IN RICHARDSON V. STANLEY WORKS, INC.

by Dusty Downing and John Osha

The appellant Richardson is the owner of a design patent covering a carpentry tool combining a hammer, crowbar, and stud climbing tool, which Richardson has dubbed the Stepclaw. In 2008, Richardson filed suit for infringement in Arizona against tool-maker Stanley, who makes and sells a similar multi-function tool called the "Fubar."  The district court found no infringement of Richardson's design patent, noting that when the functional elements of the Stepclaw are discounted, the ordinary observer would not be led to believe the tools were the same.

In his appeal, Richardson takes issue with the district court's method of claim construction. Citing the decisions in OddzOn Products, Inc. v. Just Toys, Inc., 122 F. 3d 1396 (Fed. Cir. 1997) and Egyptian Goddess, Inc. v. Swisa, Inc., 543 F. 3d 665 (Fed. Cir. 2008), Richardson argues that the lower court impermissibly separated the design and functional elements of his Stepclaw patent, thus construing the claim of his design patent too narrowly. Richardson argued that the design of the article should be considered as a whole.

The court disagreed with Richardson's reading of Egyptian Goddess, and explained that the ordinary observer test does not require that the functional elements be considered in the court's claim construction. Rather, under OddzOn, design patent claim scope "must be construed to identify the non-functional aspects of the design as shown in the patent." The court also made reference to a section of Egyptian Goddess, in which that court suggested judges aid the fact-finder in an infringement analysis by distinguishing between ornamental features and purely functional ones. From here the court went on to assert that discounting or factoring out the functional aspects of a design is the appropriate method of claim construction.

Interestingly, the Court claims that design patent protection "does not extend to any functional elements of the claimed article." In so stating, the court offered support in the form of a quote from LA Gear, Inc. v. Thom McAn Shoe Co., 988 F. 2d 1117 (Fed. Cir. 1993), which stateed that "the elements of the design may indeed serve a utilitarian purpose, but it is the ornamental aspect that is the basis of the design patent." This passage from LA Gear, however, appears to stand for the proposition that protection is granted to the ornamental aspects of utilitarian elements. In fact, immediately preceding that sentence in LA Gear, the opinion reads "[t]hat elements of the '081 design, such as the delta wing or the side mesh, also provide support for the foot does not mean that the specific design of each element, and the combination of these elements into the patented design, is dictated by primarily functional considerations." Here the LA Gear court clearly indicates that design patent protection extends to the design and arrangement aspects of utilitarian elements of the patented article.

The LA Gear court is particularly careful in its use of the terms "aspect" and "element." "Aspect" is used only in reference to ornamental designs. "Element," on the other hand, is used by the LA Gear court in describing physical parts of the invention. The Richardson court is not so precise, and uses the terms "functional element," "functional aspect," "utilitarian element," "ornamental aspect," and "ornamental element." The imprecise use of these terms may result in confusion to a fact-finder who is left wondering whether an element is ornamental with functional aspects, or functional with ornamental aspects, and if it is to be "factored out" in either case.

While the "element" versus "aspect" distinction may be mere semantics, factoring out a functional aspect of a design my still allow the fact-finder to view the design as a whole. On the other hand, factoring out a functional element implies that a physical part of the design is to be ignored completely. Therefore protection of the arrangement and configuration of functional elements under design patents is made nearly impossible if one or more elements of the patented designer are deemed functional, and thus rendered invisible for infringement purposes.

The court here could have reached the same conclusion by pointing out that the functional elements could only be arranged in a limited number of rational ways. The particular arrangement of the Clawstep, the court may have argued, was dictated by primarily functional considerations. Instead, the court has now muddied the waters for design patent claim scope.
 

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