Richardson v. Stanley Works, Inc., 597 F.3d 1288 (Fed. Cir. 2010) (LOURIE, Dyk & Kendall, district judge) Richardson03092010

MAJOR ISSUES: design patents; infringement; ordinary observer test; functional features separated out from ornamental features

CARPENTRY TOOL.  A patent concerned the design of a multi-function carpentry tool.  U.S. Pat. No. D507,167.  USPatNoD507167

In finding no infringement by an accused tool, a district court first separated out the design’s functional aspects and then determined that, after discounting the functional elements, the overall effect of the patented design and the accused design was not substantially similar in the eyes of an ordinary observer.

The Federal Circuit held that separating out functional elements was approved in OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396 (Fed. Cir. 1997), and not precluded by the en banc decision, Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (en banc).  Egyptian Goddess indicated that it is preferable to avoid construing a design patent claim, but it noted that judicial guidance on claim scope was useful to a fact finder on some issues, one being “the functional and ornamental aspects of a design.”

Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d 1294 (Fed. Cir. 2010), https://www.chisum.com/?s=crocs&cat=3” set out in detail how an ordinary observer analysis could be conducted to determine infringement” and noted that a court must compare the “overall effect” of differences on designs.  The ordinary observer test “similarly applies in cases where the patented design incorporates numerous functional elements.”  See Amini Innovation Corp. v. Anthony Cal., Inc., 439 F.3d 1365, 1372 (Fed. Cir. 2006).  Here, the district court did not fail to apply the ordinary observer test.  Ignoring the functional elements to the tools, the patented and accused designs were different.  The accused design had a more rounded appearance and fewer blunt edges.  Therefore it could not “cause market confusion.”

CROSS REFERENCE.  On design patent infringement, see Chisum on Patents 23.05[3][e];  Chisum Patent Law Digest 5540

Crocs, Inc. v. U.S. Int’l Trade Comm’n, 598 F.3d 1294, 2010 U.S. App. LEXIS 3793 (Fed. Cir. 2010) (RADER, Lourie & Prost)

MAJOR ISSUES: (1) design patent; infringement; detailed verbal description; error in emphasizing particular details on patented design; (2) utility patent; obviousness; more than combination of prior art elements; more than than predictable results; commercial success; prima facie nexus; industry praise; copying

1. DESIGN PATENT. A design patent concerned the ornamental design for foam footwear. U.S. Pat. No. D517789.  USPatNoD517789

     a. THREE ITC RULINGS: ALL IN ERROR. The patent owner filed a complaint under Tariff Act § 337 with the International Trade Commission (ITC), seeking to bar importation of allegedly infringing shoes. First, the ITC adopted a detailed verbal claim construction. Second, based on that construction, it found that the accused shoes did not infringe. Third, it found that the patented design did not cover the patent owner’s own shoes and, therefore, that the technical prong of the domestic industry requirement for Section 377 relief was not met.  The Federal Circuit held that the ITC erred in all three rulings.

     b. ERRORS IN WRITTEN CONSTRUCTION: REQUIREMENTS NOT SHOWN IN DRAWINGS. The ITC’s detailed claim construction distracted it from consideration of the claimed design as a whole. It construed the design as requiring that a strap be of uniform width whereas the patent’s drawings showed a strap that bulged in the middle. It construed the design as requiring evenly spaced holes whereas the drawings showed a gap in hole spacing.

     c. SECOND: ERROR IN APPLYING ORDINARY OBSERVER TEST. The ITC erred in finding no infringement.

          i. DETAILED CONSTRUCTION USED AS CHECK LIST FOR INFRINGEMENT. The ITC (A) improperly used the details of its written construction as a “check list for infringement,” (B) “used minor details,” and (C) concentrated on “small differences in isolation”, thereby distracting from “the overall impression of the claimed ornamental features.”

          ii. SIDE-BY-SIDE VIEW OF DRAWINGS OF PATENT AND ACCUSED PRODUCT. The proper comparison is a “side-by-side view of the drawings” of the patented design and the accused products.

               A. NEARLY IDENTICAL. Such comparisons between the patent and the five accused products showed that “the shoes appear nearly identical.”

               B. ORDINARY OBSERVER UNABLE TO RESTORE ORDER TO MIXED UP ARRAY. “If the claimed design and the accused designs were arrayed in matching colors and mixed up randomly, this court is not confident that an ordinary observer could properly restore them to their original order without very careful and prolonged effort.”

          iii. OVERALL EFFECTS IN BOTH CLAIMED AND ACCUSED DESIGNS: CONVERGING LINES INTO FOCAL POINT, ROUNDED CURVE THEME. Several “overall effects” were common to both the claimed design and the accused designs, including a converging of lines to form a focal point and a rounded curve theme.

     d. THIRD: TECHNICAL PRONG OF DOMESTIC INJURY REQUIREMENT. The technical prong of the domestic injury requirement means that a patent must cover the complaint-patent owner’s own products. In finding that the patented design did not cover those products, the ITC erred in the same way as it did in its non-infringement analysis, that is, by relying on its excessively (and erroneous) verbal construction.

CROSS- REFERENCES: on infringement of design patents, see Chisum on Patents 23.05, Chisum Patent Law Digest 5500.

2. UTILITY PATENT. At issue in the same ITC proceeding was a utility patent claiming “foam footwear.”  U.S. Pat. No.  6993858.  USPatNo6993858  The asserted claims required, inter alia, a foam base, a foam strap, and connectors tying the strap to the base. The connectors created frictional forces that kept the strap in the “ideal position.” The International Trade Commission held the claims invalid as obvious in view of two references, an “Aqua Clog,” which showed a foam base, and the Aguerre patent, which showed straps that were elastic. The Federal Circuit held that the Commission erred because the patent was “not simply a combination of elements found in the prior art.”

     a. TEACHING AWAY. The prior art taught away from the use of inelastic foam straps, which were thought to cause discomfort for shoe wearers. The invention included riveting a strap to the base, a feature not disclosed in the prior art. The prior art taught that foam straps were unsuitable, not merely that they were “somewhat inferior” Compare In re Gurley, 27 F.3d 551 (Fed. Cir. 1994).

     b. COMBINATION: MORE THAN PREDICTABLE RESULTS. The combination was unobvious even if it “were a combination of known elements according to their established functions” because it “yield[ed] more than predictable results”, to wit, “passive restraint.” As the inventor testified, the combination achieved passive restraint, maintaining the shoe in the correct foot position by “unique frictional forces” between the foam components. This contrasted with prior art configurations, such as the Aguerre patent, that pushed the foot forward into the shoe.

     c. SECONDARY CONSIDERATIONS. Supporting unobviousness were secondary considerations of commercial success, praise, and copying.

CROSS-REFERENCES: On “teaching away” and achievement of unpredictable results as indicators of unobviousness, see Chisum on Patents 5.04; Chisum Patent Law Digest 1540. On secondary considerations, see Chisum on Patents 5.05; Chisum Patent Law Digest 1530.