In recent years, design patent law has received increased attention at the Federal Circuit. Starting in 2006 with a panel decision,1 and then a clarifying opinion in Lawman v. Winner ,2 followed by a panel decision3 and rehearing en banc in Egyptian Goddess v. Swisa in 2008,4 the Federal Circuit clarified a key principle of design patent law—the test for infringement. In particular, the Federal Circuit in the en banc rehearing of Egyptian Goddess 5 refocused the test for design patent infringement towards the “ordinary observer” test set forth in 1871 in Gorham v. White.6 While the dust is still settling regarding the revised test for infringement, another issue may be moving to front and center in the realm of U.S. design patent law—functionality.
FUNCTIONALITY—DISTRICT COURT OF ARIZONA
On June 3, 2008, Richardson filed suit against Stanley Works, Inc. (Stanley) in the District of Arizona, alleging that Stanley’s “Fubar” product infringed Richardson’s U.S. Design Patent No. D507,167 (‘167 Patent). As seen in FIGS. 1 and 2 of the ‘167 patent, Richardson’s design patent was directed to “a multi function stud climbing and carpentry tool,”7 which commercially was known as the “Stepclaw.”8
Like Richardson, Stanley also obtained a patent covering its product—the Fubar, and FIGS. 1 and 5 of U.S. Patent No. D562,101 (‘101 Patent) illustrate the Fubar.9
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After a bench trial, the District Court entered judgment in favor of Stanley, ruling that the Fubar did not infringe Richardson’s design patent.10 The trial court determined that after discounting the functional elements of the ‘167 patent, the standard for design patent infringement was not met.11 Thereafter, Richardson appealed the District Court’s findings, including its claim construction and finding of non-infringement.
FUNCTIONALITY ON APPEAL
On appeal, Richardson essentially argued that the trial court incorrectly applied the law by separating out the “functional aspects” of his design from the “ornamental” aspects instead of analyzing his design as a whole.12 Richardson also argued that his design was not impermissibly functional because “(1) the functions that the ‘167 Patent is capable of performing can be achieved through other designs… and (2) that the overall design of the ‘167 Patent is not dictated by the use or purpose of the tool or of any useful elements found in the tool.”13 Likewise, Richardson asserted that Egyptian Goddess requires a comparison of his patented design be made in its entirety with the Fubar, and the similarities be evaluated from the perspective of an ordinary observer.14
The Federal Circuit rejected Richardson’s arguments, however, and instead stated that Richardson is only “entitled to a design patent whose scope is limited to those [ornamental] aspects alone and does not extend to any functional aspects of the claimed article.”15 The Court specifically identified “the handle, the hammerhead, the jaw, and the crowbar” of Richardson’s design as being “dictated by their functional purpose.”16
After affirming the District Court’s claim construction, the Federal Circuit also affirmed that the Fubar product did not infringe the ‘167 patent, noting that “ignoring the functional elements of the tools, the two designs are indeed different.”17 In the Court’s opinion, the Fubar had a “streamlined visual theme that runs through the design,” which was evident in the Fubar’s “tapered” hammerhead, “streamlined” crow-bar, “triangular neck with rounded surfaces,” and “smoothly contoured” handle.18 Thus, in comparing the Fubar with the ‘167 patent, the Court held that Fubar’s “more rounded appearance and fewer blunt edges” made it “significantly different” from the ‘167 patent’s design.19
REQUEST FOR REHEARING
Richardson further challenged the decision, requesting a rehearing en banc before the Federal Circuit. The Federal Circuit’s ruling in this case also stirred the interest of members of the design patent community. As a result, non-parties Apple, Inc. and the American Intellectual Property Law Association (AIPLA) filed amicus briefs supporting the request for rehearing en banc.
In its brief, Apple argued that “[t]he parsing of ornamental and functional features should be abolished. Whether an individual feature of an overall design performs a function is simply not relevant to design patent infringement.”20 Apple further argued that “[t]he proper place in design patent law to consider functionality is when evaluating the validity of a design patent, i.e., whether the overall claimed design is dictated solely by function.”21
AIPLA also argued that the functionality analysis performed by the Court was improper. In particular, AIPLA argued that “the Court should disavow a claim construction methodology… that purports to separate functional and ornamental elements of the claim design, rather than properly directing the factfinder to the overall design, considering all of a design’s depicted elements taken together.”22 AIPLA compared the Court’s approach in Richardson to the “point of novelty” type of analysis that the Federal Circuit recently rejected in Egyptian Goddess. Specifically, AIPLA noted that “[l]ike the now defunct ‘Point of Novelty’ approach (which sought to separate out new and old elements), 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.”23 The AIPLA brief also notably illustrated (see images on next page) one such logistical problem graphically by showing in a step-by-step manner the removal of the alleged “functional features” and the resulting presumptively valid design patent having no claim scope or features.24
Despite the issues raised by Richardson and the amici, the Federal Circuit denied the request for rehearing en banc on May 24, 2010.25
THE FUTURE OF “FUNCTIONALITY” IN DESIGN
It is well established law that a design patent, unlike a utility patent, protects the ornamental design of the article of manufacture.26 However, virtually every “article of manufacture” has functional purposes or else it probably would not exist. As implicitly suggested by Richardson and the amici in support of a request for rehearing, design patents protect the overall appearance of designs regardless of whether the design’s individual components are functional or ornamental. As such, it is improper, and contrary to established precedent, to address “functionality” during claim construction. Rather, any functionality-validity challenges should only be performed as a determination as to whether the design’s overall appearance is “dictated by function alone” and under the “safeguards that cloak a presumptively valid design patent including the higher clear and convincing evidentiary standard.”27
While interest exists as to whether the Federal Circuit’s functionality analysis in Richardson will be effectively used as a back door for attacking validity under a lower evidentiary standard in the future, those that disagree with the functionality analysis in Richardson may be comforted. The Federal Circuit may further address the issue of “functionality” should one or more future design patent decisions continue to analyze “functionality” element by element instead of looking to the design as a whole. Recall that the en banc rehearing in Egyptian Goddess came well after the Court’s initial panel decision in Lawman that escalated the interest as to whether the point of novelty test was properly a part of the infringement analysis.
District Courts may also choose to read and apply Richardson in a narrow fashion. Recently, in a design patent infringement case involving a design patent directed to a “clip light”28 the United States District Court for the Eastern District of Texas rejected arguments that under Richardson “functional elements are wholly eliminated from the claimed design…”29 In its claim construction order the Court simply construed the claim to mean “the design for a clip light as shown in Figure 1 of the patent.”30 The Court refused to eliminate allegedly functional features from its construction, stating that nothing in Richardson “compels the court to wholly ‘factor out’ any element.”31 Instead, the Court focused its functionality analysis on the design as a whole 32 and also reasoned that the Federal Circuit in Richardson merely observed “that function dictated the configuration of the tool.”33 Only time will tell whether Richardson keeps functionality a hot topic in the world of design for the foreseeable future or whether its effects will be narrow and functionality will fall from the limelight. In the meantime, the design community will watch the effects of the Richardson decision very closely in design patent infringement cases moving forward.
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