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 

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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-PHXNVW, 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 hammerhead, 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
2009-1354 14

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