June 1, 2010 - 12:15am
Determining Design Infringement – What is the Proper Test? Posted by: Administrator


On March 9, 2010, in Richardson v. Stanley Works, Inc., the Federal Circuit affirmed that the district court properly “factored out” functional aspects of a design patent when determining infringement.  Here, Richardson received a design patent on a multi-purpose carpentry tool.  Stanley Works manufactured a similar looking tool that performed the same functions.  Ordinarily, because a design patent limits protection to the ornamental design, if a design is primarily functional, the patent is invalid.  Analyzing infringement, the court compared the two designs and factored out functional elements common to both.  The court then determined that the only similarities between the two tools were unprotectable functional elements.


Richardson has petitioned for an en banc rehearing claiming that factoring out functionality is determinative of patentability, but misapplied as to infringement.  He argues the appropriate test for infringement is the “ordinary observer” test, first applied in Gorham Co. v. White, 81 U.S. 511, 528 (1871).  This test had been the sole standard for design patent infringement for over 100 years, until Litton Systems, Inc. v. Whirlpool Corp., 728 F.2d 1423 (Fed Cir. 1984), created the “point of novelty” test.  Recently, Egyptian Goddess Inc. v. Swisa, Inc., 543 F.3d 665 (Fed Cir. 2008), limited the point of novelty test in favor of the standard of the “ordinary observer.”  Richardson argues that an en banc rehearing is necessary to reaffirm that the Gorham ordinary observer test is the sole test for determining design patent infringement.  Apple Computer has filed an amicus brief, and the American Intellectual Property Law Association has too, both in support of the rehearing. 


Richardson's carpentry tool


Stanley Works' carpentry tool