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Justin E. Gray

IP Litigation Attorney at Foley & Lardner LLP

Former Adjunct Professor at Northwestern University School of Law

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Design Patent Claim Construction: Segregation of Functional From Ornamental Features Appropriate

Richardson v. Stanley Works, Inc. (Fed. Cir. Mar. 9, 2010)

Today the Federal Circuit approved a district court "distinguish[ing], as part of its claim construction, the ornamental aspects from the functional aspects of [the patentee's] design" in a design patent infringement case relating to a multi-function carpentry tool that combines a conventional hammer with a stud climbing tool and a crowbar.

The plaintiff had argued on appeal that "the district court erred in its claim construction by separating the functional aspects of the design from the ornamental ones, rather than considering the design as a whole" in violation of the Egyptian Goddess requirement that "the patented design be compared in its entirety with the accused design" and argued instead that separating out functional aspects of a design patent is only appropriate for designs that contain "purely functional" elements.

Finding that the issue before the court was not very different from that in OddzOn Prods., Inc. v. Just Toys, Inc., the Federal Circuit explained that "[i]f the patented design is primarily functional rather than ornamental, the patent is invalid. However, when the design also contains ornamental aspects, it is entitled to a design patent whose scope is limited to those aspects alone and does not extend to any functional elements of the claimed article." (internal citations omitted).  The court followed up by stating that "[a] claim to a design containing numerous functional elements, such as here, necessarily mandates a narrow construction.  Nothing in our en banc Egyptian Goddess opinion compels a different outcome."

Ultimately, the Federal Circuit approved the district court's segregation of functional elements from ornamental elements in the design patent claim construction.