This week, the Federal Circuit, http://www.cafc.uscourts.gov/, released its second opinion in as many weeks relating to design patent infringement. In this case, Richardson v. Stanley Works, http://www.cafc.uscourts.gov/opinions/09-1354.pdf, 2010 WL 774334 (Fed. Cir. 2010, the Federal Circuit affirmed a ruling of non-infringement by the U.S. District Court for the District of Arizona relating to a design for a carpentry tool combining a hammer, stud climbing tool and crowbar.
This decision squarely addressed the issue of when and how to address functional features in design patent litigation. The Federal Circuit declared that the district court was correct to disregard the functional aspects of the patented design as part of its claim construction. In so doing, the Federal Circuit reiterated a basic rule of design patent law—that protection for design patents is limited to the ornamental design of the article and does not include functional aspects. Otherwise, as the Federal Circuit pointed out, the scope of a design patent may include aspects intended to be protected by utility patents.
The decision itself will likely prove less controversial than the court's reasoning supporting it because in this case, the patented and accused design appear considerably different from each other, regardless of whether the functional aspects are removed from consideration or not. However, the Federal Circuit may have gone too far in its analysis in discounting the functional aspects of a design. The court noted that a design like the plaintiff's "containing numerous functional elements . . . necessarily mandates a narrow construction." One problem with this line of reasoning is that arguably many designs for articles of manufacture may have numerous functional elements. As a result, determining which features of a design claim are "purely" functional may become the new battleground in design patent litigation.
Moreover, this decision seems to go against the rationale of the Federal Circuit's 2008 decision in Egyptian Goddess,
http://www.cafc.uscourts.gov/opinions/06-1562.pdf, which abandoned the "point of novelty" test for infringement in favor of the "ordinary observer" test. One of the goals of Egyptian Goddess was to avoid detailed verbal descriptions of designs given the marginal benefit and "the recognized difficulties entailed in trying to describe a design in words." These difficulties include placing undue emphasis on particular features of the design and the risk that a finder of fact will focus on each individual described feature in the verbal description rather than on the design as a whole. In the Richardson decision, the Federal Circuit may have lost many of the advantages gained by abandoning the point of novelty test in favor of the ordinary observer standard.
In addition, by declaring that the district court properly factored out the functional aspects of the design as part of its claim construction, the court may have resolved one of the biggest unanswered questions following Egyptian Goddess. Namely, when exactly should functionality be considered? Is it a matter of claim construction, to be accounted for during a Markman hearing, or should it instead be dealt with during jury instructions?
As discussed last year by the U.S. District Court for the District of Massachusetts inDepaoli v. Daisy Manufacturing Co., http://pacer.mad.uscourts.gov/dc/opinions/woodlock/pdf/depaoli%20-%20july%2014%202009.pdf, the opinion in Egyptian Goddess may have provided conflicting instructions on this question. On one hand, the Federal Circuit positively cited to its 1997 pre-Markman decision in OddzOn Products v. Just Toys, Inc., http://www.ll.georgetown.edu/federal/judicial/fed/opinions/96opinions/96-1550.pdf, for the proposition that "where a design contains both functional and non-functional elements, the scope of the claim must be construed in order to identify the nonfunctional aspects of the design as shown in the patent." On the other hand, the court discusses "guiding the finder of fact" on "claim scope issues" by distinguishing between ornamental and functional features "[a]part from attempting to provide a verbal description of the design." This most recent case, however, seems to have cleared up that controversy, because the Federal Circuit found that the district court was correct to factor out the functional aspects of the design as part of its claim construction
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