## Facts

- David A. Richardson owned U.S. Design Patent No. D507,167 covering the ornamental design of a multi-function carpentry tool marketed as the “Stepclaw,” combining hammering and prying/stud-climbing functions in a single tool.
- Stanley Works, Inc. manufactured the “Fubar” line of multi-function construction tools introduced in 2005 and held its own design patent (U.S. Design Patent No. D562,101) on the basic Fubar design.
- Richardson sued in the District of Arizona alleging that the Fubar tools infringed the ’167 design patent and asserting an unfair competition claim.
- Richardson demanded a jury trial after Stanley’s answer; the district court struck the demand as untimely under Federal Rule of Civil Procedure 38(b) and denied relief under Rule 39(b).
- The district court dismissed the unfair competition claim, held a bench trial, construed the design claim by identifying and discounting functional features, and entered judgment of noninfringement.
- Richardson appealed the claim construction, the noninfringement finding under the ordinary observer test, and the denial of a jury trial.

## Issues

1. Whether the district court erred in construing the design patent by separating and discounting functional elements from the claimed design.
2. Whether, after discounting functional aspects, an ordinary observer would find the accused Fubar design substantially the same as the patented Stepclaw design.
3. Whether the district court abused its discretion by striking an untimely jury demand and denying a jury trial under Rules 38(b) and 39(b).

## Decision

- The Federal Circuit affirmed the judgment of noninfringement.
- The court held the district court properly identified and discounted purely functional features in construing the scope of the claimed design.
- Applying the ordinary observer test to the remaining ornamental aspects and the overall visual impression, the court agreed that the Fubar tools were not substantially the same as the Stepclaw design.
- The court held the district court did not abuse its discretion in striking the late jury demand and denying a jury trial under Rule 39(b).

## Legal Principles

- A design patent protects only the ornamental design of an article of manufacture; it does not protect features dictated by function.
- When a design includes both functional and nonfunctional elements, claim construction may identify functional elements to limit the scope of protection to the ornamental aspects shown.
- Design patent infringement is evaluated under the ordinary observer test: whether an ordinary observer, giving the attention a purchaser usually gives, would be deceived into thinking the accused design is the patented design.
- Similarities attributable to functional requirements or common utilitarian configurations do not establish infringement; the comparison turns on the overall visual impression of the protected ornamental features.
- A jury demand must be timely under Rule 38(b); denial of a late jury request under Rule 39(b) is discretionary and reviewed for abuse of discretion.

## Conclusion

The Federal Circuit affirmed noninfringement because the shared multi-tool configuration reflected functional requirements, and the accused product’s ornamental appearance created a different overall visual impression under the ordinary observer test; it also affirmed the denial of an untimely jury demand.


Richardson v. Stanley Works, Inc., 597 F.3d 1288 (Fed. Cir. 2010)