Design Patent Infringement Analysis and the Fubar

Design patents are an often-overlooked corner of intellectual property law. While they pretty much do exactly what they say – protect designs – it can be hard sometimes to separate the protected design from the underlying patent.

The Federal Circuit recently decided a design patent infringement case – Richardson v. Stanley Works – that provides a useful tutorial into how courts should perform a design patent infringement analysis. It also highlights how far from intuitive such an analysis is, which can make it difficult for those who are not intellectual property law specialists to understand.

The product at issue: the Fubar. A multi-tool device sold by defendant Stanley, the Fubar is an angry-looking hunk of metal that combines a hammer, pry bar, and open-jaw grabbing thingy into a single product:

(Yes, I know what “fubar” means. I presume the folks at Stanley do as well, and named it hoping that it would appeal to the type of consumer who knows what “fubar” means. At any rate, the product has achieved some success, having been included by Popular Science in its “Best of What's New” listing back in 2006.)

The Fubar was protected by a design patent owned by Stanley. The plaintiff Richardson had secured his own earlier design patent for a similar-looking device that he called the Stepclaw. (As far as I know, "stepclaw" has no other meaning.) It too included a hammer, a pry bar, and an open-jaw grabbing thingy in a single product:

Richardson sued for infringement, and the district court decided after a bench trial that Stanley did not infringe. In so doing, 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.” It concluded that “the overall visual effect of the Fubar was not substantially similar to that of the Stepclaw,” so that the Stanley product did not infringe.

The Federal Circuit affirmed. It noted that it was proper for the district court to factor out the functional elements of Richardson's design; in this case, tool handle, the hammer head, the pry bar, and the open jaw. The shape and location of these features, the court held, were dictated by the functional requirements of the tool. Factoring out those functional features presumably left only the ornamental elements of Richardson's design.

As you can see, once you remove the tool handle, the hammer head, the pry bar, and the open jaw from these products, there is not a lot that is left. The Federal Circuit so noted as it analyzed the Fubar's ornamental features, applying the “ordinary observer” test set forth in its Egyptian Goddess decision:

"Each of the Fubar tools has a streamlined visual theme that runs throughout the design including elements such as a tapered hammer-head, a streamlined crow-bar, a triangular neck with rounded surfaces, and a smoothly contoured handled. In a side-by-side comparison with the ’167 patent design, the overall effect of this streamlined theme makes the Fubar tools significantly different from Richardson’s design. Overall, the accused products clearly have a more rounded appearance and fewer blunt edges than the patented design."

The ironic thing about the “ordinary observer” test is that it can be difficult for the “ordinary observer” to apply. Most ordinary people do not distill out functional elements from design elements when looking at products. The decision in this case merely underscores how difficult it can be to evaluate design patent infringement claims.