By Andrew M. Ollis
| March 3, 2010
The U.S. Court of Appeals for the Federal Circuit issued their second significant design patent opinion in the past two weeks.  In the most recent decision, the Court affirmed a finding of no-infringement of a design patent after a district court had first construed the claim by factoring out the functional elements of the design.  Richardson v. Stanley Works, Inc., No. 2009-1354 (Fed. Cir., Mar. 9, 2010).   


The patent at issue (U.S. Design Patent No. D507,167) claimed the design for a carpentry tool known as a stepclaw.  The stepclaw includes a handle, hammer-head, jaw, and crow-bar.  The district court found that "the overall configuration of these four elements is dictated by the functional purpose of the tool and therefore is not protected by [Richardson's] design patent." Richardson v. Stanley Works, Inc., 91 USPQ2d 1604 (D. Az. 2009).  The district court construed the claim to exclude any "primarily functional" elements.  Id. at 1606.  Regarding the jaw on the stepclaw, the district court noted that "none of the prior art designs are as similar to Richardson's patented design as is Stanley's." Id. at 1607.  Often, the presence of alternative forms for a feature (e.g. a jaw) that performs a certain function suggests that the claimed form of the feature is ornamental.  However, the district court also noted that "Richardson had to design the jaw the way he did...to function as 'a step to elevate the worker without a ladder.'" Id.  Thus, the district court concluded that the "basic jaw design used by Richardson and Stanley...is primarily functional." Id.  Regarding the features determined to be ornamental, the district court found "little similarity" and noted that the differences between the two tools are substantial to find infringement.  


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By Andrew M. Ollis
| February 26, 2010
In a decision issued February 24, 2010 (Case No. 2008-1596), a panel of the Federal Circuit reversed a finding by the International Trade Commission that a design patent owned by Crocs, Inc. was not infringed by various respondents. In explaining its reasoning, the Court warned against reliance on detailed verbal descriptions of the claimed design, stating:

"This court has cautioned, and continues to caution, trial courts about excessive reliance on a detailed verbal description in a design infringement case. See, e.g., Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir. 2008) (en banc). In Egyptian Goddess, this court warned that misplaced reliance on a detailed verbal description of the claimed design risks undue emphasis on particular features of the design rather than examination of the design as a whole. Id. at 679–80. In many cases, the considerable effort in fashioning a detailed verbal description does not contribute enough to the infringement analysis to justify the endeavor. See id. at 680. Depictions of the claimed design in words can easily distract from the proper infringement analysis of the ornamental patterns and drawings." Slip Op. at 9-10.


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By Philippe Signore
| February 22, 2010
Philippe Signore was recently interviewed on Oblon, Spivak's Patents Post Grant Law Blog. The text of that interview is below.



Design patents are significantly different from utility patents in that design patents do not protect function, but instead, protect ornamental features.  Design patent are defined in scope by the content of the drawings  as opposed to the words of a set of claims. Further, design patents are accorded a patent term of 14 years from issue, as opposed to 20 years from filing.


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By Edward W. Tracy Jr.
| January 7, 2010
Edward Tracy, Jr. of Oblon, Spivak has been appointed the new vice-chair of the IPO Design Rights Committee.

This is the highest position that an outside counsel can reach within a committee since only in-house counsels can be elected chairs of IPO committees. This appointment supports our firm being recognized as a leader in the field of industrial designs.


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