Richardson v. Stanley Works, Inc.

United States Court of Appeals for the Federal Circuit
2009-1354

DAVID A. RICHARDSON,

Plaintiff-Appellant,

v.

STANLEY WORKS, INC.,

Defendant-Appellee.

Geoffrey S. Kercsmar, Kercsmar & Feltus, PLLC, of Scottsdale, Arizona, argued
for plaintiff-appellant.

Bryan P. Collins, Pillsbury Winthrop Shaw Pittman LLP, of McLean, Virginia,
argued for defendant-appellee. With him on the brief were Robert M. Fuhrer, and Kathy
Peng.

Appealed from: United States District Court for the District of Arizona

Judge Neil V. Wake
 United States Court of Appeals for the Federal Circuit

2009-1354

DAVID A. RICHARDSON,

Plaintiff-Appellant,

v.

STANLEY WORKS, INC.,

Defendants-Appellee.

Appeal from the United States District Court for the District of Arizona in
Case No. 08-CV-1040, Judge Neil V. Wake.

____________________________

DECIDED: March 9, 2010
____________________________

Before LOURIE and DYK, Circuit Judges, and KENDALL, District Judge. *

LOURIE, Circuit Judge.

David Richardson appeals from a final decision of the United States District Court

for the District of Arizona. Richardson v. Stanley Works, Inc., 610 F. Supp. 2d 1046 (D.

Ariz. 2009). After a bench trial, the district court found that Stanley Works, Inc.

(“Stanley”) did not infringe U.S. Patent D507,167 (“the ’167 patent”). Because the court

correctly construed the claim at issue and correctly determined that the patent was not

infringed, we affirm.

*
Honorable Virginia M. Kendall, District Judge, United States District Court
for the Northern District of Illinois, sitting by designation.
 BACKGROUND

Richardson owns the ’167 patent, a design patent that claims the design for a

multi-function carpentry tool that combines a conventional hammer with a stud climbing

tool and a crowbar. The tool is known as the “Stepclaw.” The only claim of the ’167

patent claims the ornamental design of the tool as depicted in figures 1 and 2 of the

patent:

Stanley manufactures and sells construction tools. In 2005, Stanley introduced

into the U.S. market a product line of tools by the series name “Fubar.” The Fubar is

2009-1354 2
sold in five different versions and is useful in carpentry, demolition, and construction

work. Stanley successfully applied for and obtained U.S. Patent D562,101 (“the ’101

patent”) on the basic Fubar design. All five versions of the tool are built around that

same basic Fubar design. Figures 1 and 5 of the ’101 patent are illustrative of the

Fubar design:

Figure 1

Figure 5

On June 3, 2008, Richardson filed a complaint against Stanley in the district

court for the District of Arizona alleging that the Fubar tools infringed his ’167 patent. In

addition, Richardson alleged that Stanley was unfairly competing with him in the U.S.

market. In response to Richardson’s complaint, Stanley first filed a motion to dismiss on

September 10, 2008 and later filed an answer to the complaint on September 22, 2008.

2009-1354 3
On October 22, 2008, Richardson filed his request for a jury trial, which Stanley moved

to strike as untimely under Federal Rule of Civil Procedure 38(b). In response,

Richardson requested that a jury trial be granted under Rule 39(b). The district court

granted Stanley’s motion to strike and denied Richardson’s Rule 39(b) motion.

Richardson v. Stanley Works, Inc., No. CV-08-1040-PHX-NVW, 2009 WL 383554 (D.

Ariz. Feb. 13, 2009). The court also granted Stanley’s motion to dismiss Richardson’s

unfair competition claim. Richardson v. Stanley Works, Inc., No. CV-08-1040-PHX-

NVW, 2008 WL 4838708 (D. Ariz. Nov. 06, 2008). On April 2, 2009, the court

conducted a bench trial on Richardson’s patent infringement claim and entered

judgment of noninfringement in favor of Stanley. Richardson, 610 F. Supp. 2d at 1053.

In its order, the court first distinguished, as part of its claim construction, 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. Id. at 1050–1052. The court therefore concluded that the

overall visual effect of the Fubar was not substantially similar to that of the Stepclaw,

and that the ’167 patent had not been infringed. Id. at 1053. Richardson timely

appealed the court’s rulings. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

DISCUSSION

A. Claim Construction

Richardson argues that the district court’s approach to evaluating infringement of

a design patent was incorrect. Richardson primarily argues that the district court erred

in its claim construction by separating the functional aspects of the design from the

2009-1354 4
ornamental ones, rather than considering the design as a whole. Richardson argues

that our Egyptian Goddess decision requires that the patented design be compared in

its entirety with the accused design, and that the comparison be made from the

perspective of an ordinary observer. See Egyptian Goddess, Inc. v. Swisa, Inc., 543

F.3d 665 (Fed. Cir. 2008) (en banc). A claim construction such as the one performed

by the district court, Richardson argues, is necessary only for designs that contain

“purely functional” elements. According to Richardson, a design element is purely

functional only when the function encompassed by that element cannot be performed by

any other design. Richardson contends that the overall design of the ’167 patent is not

dictated by the useful elements found in the tool, and that the functional parts of its

design remain relevant to the scope of the patented claim.

We review claim construction de novo on appeal. Cybor Corp. v. FAS Techs.,

Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998) (en banc). We disagree with Richardson that

the district court erred in its claim construction by separating the functional and

ornamental aspects of the ’167 patent design. In OddzOn, we affirmed a district court’s

claim construction wherein the court had carefully distinguished the ornamental features

of the patented design from the overall “rocket-like” appearance of the design of a

football-shaped foam ball with a tail and fin structure. OddzOn Prods., Inc. v. Just Toys,

Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997). We held that “[w]here a design contains

both functional and non-functional elements, the scope of the claim must be construed

in order to identify the non-functional aspects of the design as shown in the patent.” Id.

The issue before us is not very different from that in OddzOn, and we are not

persuaded by Richardson’s argument that our holding in Egyptian Goddess mandates a

2009-1354 5
different result here. In Egyptian Goddess, we abandoned the point of novelty test for

design patent infringement and held that the ordinary observer test should serve as the

sole test for infringement. 543 F.3d at 679. Although we proposed that the preferable

course ordinarily will be for a district court not to attempt to construe a design patent

claim, id., we also emphasized that there are a number of claim scope issues on which

a court’s guidance would be useful to the fact finder. Id. at 680. Among them, we

specifically noted, is the distinction between the functional and ornamental aspects of a

design. Id. (citing OddzOn, 122 F.3d at 1405).

The district court here properly factored out the functional aspects of

Richardson’s design as part of its claim construction. By definition, the patented design

is for a multi-function tool that has several functional components, and we have made

clear that a design patent, unlike a utility patent, limits protection to the ornamental

design of the article. Lee v. Dayton-Hudson Corp., 838 F.2d 1186, 1188 (Fed. Cir.

1988) (citing 35 U.S.C. § 171). If the patented design is primarily functional rather than

ornamental, the patent is invalid. Id. 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.

See L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1123 (Fed. Cir. 1993)

(“The elements of the design may indeed serve a utilitarian purpose, but it is the

ornamental aspect that is the basis of the design patent.”).

Richardson’s multi-function tool comprises several elements that are driven

purely by utility. As the district court noted, elements such as the handle, the hammer-

head, the jaw, and the crowbar are dictated by their functional purpose. The jaw, for

2009-1354 6
example, has to be located on the opposite end of the hammer head such that the tool

can be used as a step. The crowbar, by definition, needs to be on the end of the longer

handle such that it can reach into narrow spaces. The handle has to be the longest arm

of the tool to allow for maximum leverage. The hammer-head has to be flat on its end

to effectively deliver force to the object being struck. As demonstrated by the prior art,

those are purely functional elements whose utility has been known and used in the art

for well over a century.

Richardson’s argument that the court erred in separating out functional aspects

of his design essentially is an argument for a claim scope that includes the utilitarian

elements of his multi-function tool. We agree with the district court that it would indeed

be improper to allow Richardson to do so. The ’167 patent specifically claims “the

ornamental design” for the multi-function tool shown in the drawings. See ’167 patent,

Cl. 1. 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.

We also reject Richardson’s argument that the court did not include drawings

from the patent in its claim construction. Richardson argues that it is the ordinary

observer’s perception of those drawings that is the controlling consideration under the

Supreme Court’s opinion in Gorham Manufacturing Company v. White, 81 U.S. 511

(1871). We agree with Richardson on the decisive importance of drawings in a design

patent. We have recently stated that design patents are typically claimed according to

their drawings, and claim construction must be adapted to a pictorial setting. Crocs, Inc.

v. Int’l Trade Comm’n, No. 2008-1596, slip op. at 10 (Fed. Cir. Feb. 24, 2010).

2009-1354 7
However, we do not agree that the district court’s claim construction necessarily

excluded drawings of the ’167 patent. The court’s entire construction was based on

what was “shown and described in the ’167 patent.” Richardson, 610 F. Supp. 2d at

1050. The court concluded its discussion by noting that the purpose of the claim

construction was simply to highlight the ornamental aspects of Richardson’s design. Id.

Richardson fails to explain how a court could effectively construe design claims, where

necessary, in a way other than by describing the features shown in the drawings.

Richardson’s proposition that the claim construction should comprise nothing more than

the drawings is simply another way of arguing that the court erred by identifying the

functional elements of the patented article, and is therefore unavailing. We find no error

in the court’s claim construction.

B. Infringement

Richardson argues that the district court failed to analyze infringement of the ’167

patent by Stanley’s tools under an ordinary observer test. According to Richardson, had

the court conducted a three-way comparison between the prior art, the patented design

and the accused products, it would have found the accused product design to be

substantially the same as the patented one.

Stanley responds that, having identified the ornamental aspects of Richardson’s

patented design, the court properly found that the only similarities between the patented

Stepclaw and the accused Fubar tools were those of unprotectable functional elements.

Stanley argues that when those utilitarian aspects are ignored, none of the accused

Fubar products looks even remotely like Richardson’s patented design.

2009-1354 8
 We agree with the court’s finding of noninfringement. Design patent infringement

is a question of fact, which a patentee must prove by a preponderance of the evidence.

L.A. Gear, 988 F.2d at 1124. In Egyptian Goddess, we held that “the ‘ordinary observer’

test should be the sole test for determining whether a design patent has been infringed.”

543 F.3d at 678. The patentee must establish that an ordinary observer, familiar with

the prior art designs, would be deceived into believing that the accused product is the

same as the patented design. See id. at 681. In our recent Crocs decision, we set out

in detail how an ordinary observer analysis could be conducted to determine

infringement. See Crocs, slip op. at 11–15. In analyzing whether a design patent on

footwear was infringed, noting the various differences that could be found between the

two pieces of footwear in question, we compared their overall effect on the designs. Id.

at 15. We looked to ornamental elements such as the curves in the design, the strap

assembly, and the base portion of the footwear. Id. We concluded that both the

claimed design and the accused designs contained those overall ornamental effects,

thereby allowing for market confusion. Id.

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) (holding that while it is proper to factor

out the functional aspects of various design elements, that discounting of functional

elements must not convert the overall infringement test to an element-by-element

comparison). In evaluating infringement, we determine whether “the deception that

arises is a result of the similarities in the overall design, not of similarities in ornamental

features in isolation.” Amini Innovation, 439 F.3d at 1371.

2009-1354 9
 We do not agree with Richardson that the district court failed to apply the

ordinary observer test in finding no infringement. The court specifically concluded that

“[f]rom the perspective of an ordinary observer familiar with the prior art, the overall

visual effect of the Fubar is significantly different from the Stepclaw.” Richardson, 610

F. Supp. 2d at 1052. It recited the significant differences between the ornamental

features of the two designs but, in determining infringement, it mainly focused on

whether an ordinary observer would be deceived into thinking that any of the Fubar

designs were the same as Richardson’s patented design. Id. We therefore find no

error in the district court’s approach. See Egyptian Goddess, 543 F.3d at 681 (“An

ordinary observer, comparing the claimed and accused designs in light of the prior art,

will attach importance to differences between the claimed design and the prior art

depending on the overall effect of those differences on the design.”); see also Int’l

Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1243 (Fed. Cir. 2009) (“The

mandated overall comparison is a comparison taking into account significant differences

between the two designs, not minor or trivial differences that necessarily exist between

any two designs that are not exact copies of one another.”).

We also agree that, ignoring the functional elements of the tools, the two designs

are indeed different. 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

2009-1354 10
appearance and fewer blunt edges than the patented design. The court therefore was

not clearly erroneous in concluding that the accused products embody an overall effect

that cannot be found in the ’167 patent design and hence cannot cause market

confusion. See Egyptian Goddess, 543 F.3d at 681 (infringement cannot be found

unless the accused product creates an appearance deceptively similar to the claimed

design).

C. Jury Demand

We lastly address Richardson’s argument that the district court improperly denied

Richardson’s jury demand as untimely. The court found that at the time Richardson

filed his jury demand, the pleadings were closed. Richardson, 2009 WL 383554, at *1.

However, Richardson argues that at the time he filed his jury demand, a motion to

dismiss was pending, and the Rule 38(b) clock did not start until the motion had been

ruled upon by the court. Moreover, Richardson argues, the court had ample discretion

to grant his jury demand under Rule 39(b), but refused to do so, improperly concluding

that Richardson’s inadvertence foreclosed any further analysis of the merits of his

motion. Richardson contends that, under Ninth Circuit law, failure to file a jury demand

based on a pending motion to dismiss does not bar the court from employing its

discretion to allow a jury trial.

Stanley responds that its motion to dismiss was not a pleading and hence did not

toll the 10-day deadline for Richardson to file a jury demand. Moreover, Stanley argues,

the motion to dismiss was limited to state law claims and did not in any way affect

Richardson’s deadline for filing a jury demand for the patent infringement claims.

2009-1354 11
 We agree with Stanley that the district court permissibly denied Richardson’s

motion for a jury trial. We apply regional circuit law to a trial court’s procedural

decisions that relate to issues not unique to our exclusive jurisdiction, including motions

for a jury trial. See Transmatic, Inc. v. Gulton Indus., Inc., 53 F.3d 1270, 1278 (Fed. Cir.

1995). Under Ninth Circuit law, a trial court’s determination of the timeliness of a

demand for jury trial under Rule 38(b) is reviewed de novo. See Kulas v. Flores, 255

F.3d 780, 783 (9th Cir. 2001).

In examining that question, we “indulge every reasonable presumption against

waiver” of the jury trial right. Cal. Scents v. Surco Prods., Inc., 406 F.3d 1102, 1108

(9th Cir. 2005). Rule 38(b) states that “a party may demand a jury trial by . . . serving

the other parties with a written demand – which may be included in a pleading – no later

than 10 days after the last pleading directed to the issue is served.” Fed. R. Civ. P.

38(b). 1 The district court noted that Stanley’s answer was the last pleading directed to

any issue triable of right by a jury in this case. Richardson, 2009 WL 383554, at *1.

Accordingly, the court concluded that Richardson’s jury demand was untimely because

he served it more than ten days after Stanley filed its answer. Id. The court held that

the fact that a motion to dismiss was pending did not toll the time for Richardson to file a

jury demand. Id.

Rule 7(a) lists the types of pleadings permissible in federal cases. Fed. R. Civ.

P. 7(a). A motion to dismiss is not one of them. It is not a pleading directed to issues of

fact triable by the jury. United States v. Anderson, 584 F.2d 369, 372 n.4 (10th Cir.

1978) (stating that a motion to dismiss is not a pleading within the federal rules).

1
Effective December 1, 2009, Rule 38(b) has been amended to provide the parties
fourteen days to make a demand for a jury trial.

2009-1354 12
Richardson cites no authority suggesting that such a motion could be considered

otherwise in the application of Rule 38. 2 Richardson’s proposed interpretation of the

rule would indefinitely extend a party’s deadline to make a jury demand until the court

rules on all such pending motions. We see nothing in the federal rules that allows such

a reading. We agree with the district court that Richardson’s jury demand was untimely

regardless of Stanley’s pending motion.

The Ninth Circuit reviews a district court’s decision to deny relief under Rule

39(b) for an abuse of discretion. See Las Vegas Sun, Inc. v. Summa Corp., 610 F.2d

614, 621 (9th Cir. 1979). A district court’s discretion in granting an untimely demand for

a jury trial under rule 39(b) is narrow, and does not permit a court to grant relief when

the failure to make a timely demand results from oversight or inadvertence. See Pacific

Fisheries Corp. v. HIH Cas. & General Ins., Ltd., 239 F.3d 1000, 1002 (9th Cir. 2001)

(citing Lewis v. Time Inc., 710 F.2d 549, 556–57 (9th Cir. 1983)). The Ninth Circuit

mandates denial of an untimely request for a jury trial unless some cause beyond mere

inadvertence is shown. Id.

Richardson argues that it presented more reason than mere inadvertence for its

untimely motion. Once again, he contends that Stanley’s motion to dismiss and

subsequently filed answer in response to his complaint put him in a difficult position of

determining when his jury demand was due, and eventually miscalculating his deadline

for making the demand. Richardson therefore appears to argue that his delay was not

2
Richardson cites Anderson to support his proposition that where a motion attacking
the pleadings is filed, the last pleading for the purposes of starting the Rule 38(b) clock
is not deemed filed until after the motion attacking the pleadings is decided. Anderson,
584 F.2d 369. Anderson does not address the situation presented here, wherein the
defendant first filed a motion to dismiss and then filed an answer.

2009-1354 13
due to mere inadvertence, but rather due to a good faith mistake in determining the

deadline under the federal rules.

We find Richardson’s argument unpersuasive. Even if Richardson’s failure to

timely file a jury demand were considered to be a result of his good faith mistake as to

the deadline in light of Stanley’s motion to dismiss, such a mistake establishes no more

than inadvertence under Ninth Circuit law. Zivkovic v. S. Cal. Edison Co., 302 F.3d

1080, 1087 (9th Cir. 2002) (“[G]ood faith mistake as to the deadline for demanding a

jury trial establishes no more than inadvertence, which is not a sufficient basis to grant

relief from an untimely jury demand.”). The district court properly refused to exercise its

discretion in rejecting Richardson’s Rule 39(b) request.

CONCLUSION

We have considered Richardson’s remaining arguments and do not find them

persuasive. Accordingly, the judgment of the district court is

AFFIRMED

2009-1354 14