In a precedent-setting case confirming how "functional" aspects of patented designs should be considered for making crucial claim constructions in infringement disputes, Pillsbury Intellectual Property attorneys Bryan P. Collins, Jack S. Barufka, Robert M. Fuhrer and Kathy Peng helped longtime client The Stanley Works (www.stanleyworks.com) prevail in a closely-watched patent dispute at the U.S. Court of Appeals for the Federal Circuit. A year after successfully defending initial claims that the iconic tool company infringed the plaintiff's design patent, Pillsbury and Stanley defeated the plaintiff again in the latest appeals court case, which ruled Stanley's FuBar® – a popular 4-in-1 utility bar for prying, splitting, board bending and striking jobs – does not infringe on the plaintiff's patent.

The latest verdict affirms the integrity of the FuBar's design, assuring Stanley's popular tool can remain on the market.

At issue in the plaintiff's appeal was whether a previous district court ruling properly applied legal tests for infringement regarding the plaintiff's patented design for the "Stepclaw," a different multi-function tool. In the district case, the court ruled any common features between the plaintiff's patented design and the Stanley FuBars were purely functional, and thus could not sustain a finding of infringement under a design patent.

In a precedential decision, the federal appeals court upheld that decision and, in making crucial distinctions, noted specific unique features of the FuBar, such as its tapered hammer and streamlined body, as preventing any "market confusion" – a legal test for infringement – between FuBars and Stepclaws. The appeals court also ruled a proper "ordinary observer" test was correctly applied in the earlier case, stating the overall visual effect of the FuBar is "significantly different from the Stepclaw."

The appeals court ruled that when a design patent contains both "ornamental" and functional elements, courts must examine only the ornamental aspects, because design patents only protect the design of an item, not its functionality.

For IP-sensitive companies in a host of industries, Stanley's FuBar victory points to the importance of carefully analyzing design patents' functional and ornamental aspects in IP portfolio management and disputes. The case shows how specific, engineered differences between products, including those designed to perform similar tasks, are invaluable when revenues and market leadership at stake.

The case is David A. Richardson v. Stanley Works, Inc.