March 31, 2010Client Alert

Design Patent Protection - Where the Ordinary Observer Meets Functional Elements

The Federal Circuit’s recent decision in Richardson v. Stanley Works, Inc. provides useful guidance on how the “ordinary observer” test should be applied in design patent infringement cases where a design includes both functional and non-functional elements. Generally, under the “ordinary observer” test, infringement is found if “an ordinary observer, familiar with the prior art designs, would be deceived into believing the accused products are the same as the patented design.” The Federal Circuit has previously cautioned against focusing on discrete aspects of a design, instead finding infringement when the “accused products embody the overall effect of the [patented] design in sufficient detail and clarity to cause market confusion.”


The “ordinary observer” test is not as straightforward to apply as its name might suggest, particularly when elements of a design serve a utilitarian purpose. Design patents are intended to protect just the ornamental aspects embodied in, or applied to, an article. In practice, however, many articles have both ornamental and functional aspects. Therefore the challenge of the “ordinary observer” test lies in separating the protected ornamental aspects from the unprotected functional aspects.


In Richardson, the Federal Circuit affirmed the district court’s ruling that Stanley Works’ popular tool “Fubar” (See Figure 1) did not infringe Richardson’s design patent on a multi-tool device combination of a hammer, stud climbing tool and a crowbar (See Figure 2). The district court distinguished “the ornamental aspects from the functional aspects of Richardson’s design and then determined that an ordinary observer, after discounting the functional elements of Richardson’s design, would not be deceived into thinking that any of the Fubar tools were the same as Richardson’s Stepclaw.” In affirming, the Federal Circuit noted that the district court properly separated out the functional elements of Richardson’s design; in this case, the handle, the hammer head, the jaw, and crowbar. The court held that the shape and relative position of these elements were dictated by the functional requirements of the tool, and once the functional elements were ignored, the two designs were different. Elaborating on its side-by-side analysis, the Federal Circuit noted that the Fubar’s streamlined visual theme of a tapered hammer-head, a streamlined crow-bar and a triangular neck with rounded surfaces set it apart from the ornamental effect of Richardson’s design.


The Federal Circuit’s ruling affirms that the “ordinary observer” test applies in all design patent cases, including those with numerous functional elements. The Richardson decision emphasizes that, properly applied, the “ordinary observer” test focuses on the protected ornamental design and not the aspects of the design driven by functional considerations. To guide the finder of fact in this regard, courts should assist the finder of fact in understanding the proper scope of design patent protection. Stripping away functional elements, however, should not lead to an analysis of the ornamental features in isolation. Rather, the “ordinary observer” test should assess whether an accused product embodies the overall effect of the remaining protected ornamental design to such a degree as to cause market confusion.




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