Stanley has 5 version of its FuBar tool. The basic FuBar product is illustrated above. (Stanley also obtained U.S. D562,101 for the design, but it is not related to the case.)
Although considering the design as a whole in accordance with Egyptian Goddess, the district court distinguished and separated out those elements of the design that were primarily functional during claim construction of the patent. After discounting the functional elements of the design, the district court analyzed the accused products in view of the ornamental aspects of the claimed design. The district court cited differences in the ornamental designs, and concluded that an ordinary observer would not be deceived into thinking that any of the Stanley FuBar tools were the same as the claimed design.
The Federal Circuit upheld the claim construction, quoting that "[w]here a design contains both functional and non-functional elements, the scope of the claim must be construed in order to identify the non-functional aspects of the design as shown in the patent." See OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1456 (Fed. Cir. 1998)(en banc). The Federal Circuit explained that when a design contains both functional and ornamental aspects, the scope of the design patent is limited to the ornamental aspects alone and "does not extend to any functional elements of the claimed article." The Federal Circuit pointed out "several elements that are driven purely by utility" and that "elements such as the handle, the hammer-head, the jaw, and the crowbar are dictated by their functional purpose."
The Federal Circuit also upheld the infringement analysis applied by the district court. Just as applied at the district court, the Federal Circuit considered whether an ordinary observer would be deceived into thinking that any of the Stanley FuBar tool designs were the same as the patented design. The Federal Circuit concluded that, "ignoring the functional elements of the tools, the two designs are indeed different" and that "the overall effect" of the accused products is "significantly different" than the patented design.
While the underlying law set forth by the decision appears sound and infringement may properly have not been found, the decision may cause problems for future cases. The decision uses several different words to describe how functional elements are treated (e.g., "discounting," "separating," "limited," and "ignoring"). Each of these treatments of functional elements may lead to different infringement analyses. Further, when considering the functional elements, the Federal Circuit identifies elements "driven purely by utility" and that are "dictated by their functional purpose," and concludes that these elements are "purely functional elements." And it seems the Federal Circuit treats "element" in the physical sense of a piece of the product, rather than a design feature. As a result no aspect of these functional elements appear to be considered in the infringement analysis, which seems an overly-narrow construction of designs with both functional and non-functional features. While this may not be the intended result, the decision may be interpreted to preclude consideration of non-functional ornamental aspects applied to a functional (useful) physical element, but with a design that is not solely or primarily dictated by function. For example, while a handle may be purely function, the design or ornamentation of a handle seems appropriate to consider. Both the claimed design and the Stanley FuBar tools have handles (driven purely by utility) and that perform the same function, but the handles have different designs. The district court's statement of "discounting" functional elements may be a more appropriate characterization than "ignoring" functional elements. The prior case law of OddzOn does not state that functional elements are ignored, but instead that "the scope of the claim must be construed in order to identify the non-functional aspects of the design as shown in the patent." Thus, rather than identifying and entirely ignore functional elements, a more accurate claim construction may instead seek to identify the non-functional aspects of the design, which may include non-functional aspects of the design applied to a functional element. Under such an analysis, a functional element will only be ignored if the design of the functional element is dictated by function, in which case the design would be functional and appropriate to ignore.
Even discounting (or ignoring) possible different interpretations and applications of the decision, additional cases to construe design case law, such as the Egyptian Goddess decision, are welcome guidance for counseling clients, preparing applications, and litigating design patents. Each provides additional examples for interpretation and application of the prior decisions.
