## 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 Pi ttman LLP, of McLean, Virginia, argued for defendant-appellee. With him on the brief were Robert M. Fuhrer , and Kathy Peng

. Appealed from: United States Distric t 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 decis ion 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 distri ct court found that St anley Works, Inc. (“Stanley”) did not infringe U.S. Patent D 507,167 (“the ’167 patent”). Because the court correctly construed the claim at issue and co rrectly determined that the patent was not infringed, we affirm.

* Honorable Virginia M. Kendall, Distr ict Judge, United States District Court for the Northern District of I llinois, sitting by designation.BACKGROUND Richardson owns the ’167 patent, a des ign 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 t he “Stepclaw.” The only claim of the ’167 patent claims the ornamental de sign of the tool as depicted in figures 1 and 2 of the patent:

Stanley manufactures and sells constructi on 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 2sold in five different versions and is us eful 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 t he 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 comp laint against Stanley in the district court for the District of Arizona alleging that the Fubar tools in fringed his ’167 patent. In addition, Richardson alleged that Stanley was unfairly competing wit h him in the U.S. market. In response to Richardson’s complain t, 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 3On October 22, 2008, Richardson filed his reques t 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 grant ed under Rule 39(b). The district court granted Stanley’s motion to strike and deni ed 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 cour t also granted Stanley’s moti on 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 Ric hardson’s design and then determined that an ordinary observer, after discounting the f unctional elements of Richardson’s design, would not be deceived into th inking that any of the Fubar tools were the same as Richardson’s Stepclaw. Id. at 1050–1052. The court ther efore concluded that the overall visual effect of the Fubar was not s ubstantially 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 jurisd iction 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 prim arily argues that the district court erred in its claim construction by separating the functional aspects of the design from the

2009-1354 4ornamental 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 b anc). 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 t he overall design of the ’167 patent is not dictated by the useful element s found in the tool, and that the functional parts of its design remain relevant to the scope of the pat ented 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 c onstruction 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 care fully distinguished the ornamental features of the patented design from the overall “ro cket-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 hel d that “[w]here a design contains both functional and non-functi onal elements, the scope of the claim must be construed in order to identify the non-func tional aspects of the design as shown in the patent.” Id. The issue before us is not ve ry different from that in OddzOn , and we are not persuaded by Richardson’s argu ment that our holding in Egyptian Goddess mandates a

2009-1354 5different result here. In Egyptian Goddess , we abandoned the point of novelty test for design patent infringement and held that the ordinary observe r 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 cl aim 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 di stinction between the functional and ornamental aspects of a design. Id. (citing OddzOn , 122 F.3d at 1405). The district court here properly fact ored out the functional aspects of Richardson’s design as part of its claim constr uction. By definition, the patented design is for a multi-function tool that has se veral functional compone nts, and we have made clear that a design patent, unlike a utility patent, limits pr otection 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 prim arily functional rather than ornamental, the paten t is invalid. Id. However, when the design also contains ornamental aspects, it is entit led to a design patent whose scope is limited to those aspects alone and does not ext end 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 serv e a utilitarian purpose, but it is the ornamental aspect that is the bas is of the design patent.”). Richardson’s multi-function tool comprise s several elements that are driven purely by utility. As the district court not ed, elements such as the handle, the hammerhead, the jaw, and the crowbar are dictated by their functiona l purpose. The jaw, for

2009-1354 6example, has to be locat ed on the opposite end of the hamme r head such that the tool can be used as a step. The crowbar, by defin ition, needs to be on the end of the longer handle such that it can reach into narrow s paces. 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 bei ng 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 err ed in separating out functional aspects of his design essentially is an argument for a claim scope t hat includes t he utilitarian elements of his multi-function tool. We agree wit h the district court t hat it would indeed be improper to allow Richardson to do so. The ’167 patent specific ally claims “the ornamental design” for the multi-function tool shown in the drawings. See ’167 patent, Cl. 1. A claim to a design containing nu merous 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 th at the court did not include drawings from the patent in its clai m 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 Manufacturi ng Company v. White , 81 U.S. 511 (1871). We agree with Richardson on the decis ive importance of drawings in a design patent. We have recently stated that design patents are typically claimed according to their drawings, and claim construction mu st 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 7However, we do not agree that the district court’s claim construction necessarily excluded drawings of the ’167 patent. T he 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 conc luded 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 coul d effectively construe design claims, where necessary, in a way other than by describin g the features shown in the drawings. Richardson’s proposition that t he claim construction should co mprise nothing more than the drawings is simply another way of argui ng that the court erred by identifying the functional elements of t he patented article, and is therefore unavailing. We find no error in the court’s claim construction. B. Infringement Richardson argues that the district court fa iled to analyze infringement of the ’167 patent by Stanley’s tools under an ordinary obse rver 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 proper ly found that the only simila rities between the patented Stepclaw and the accused Fubar tools were t hose of unprotectable functional elements. Stanley argues that when thos e utilitarian aspects are i gnored, none of the accused Fubar products looks even remotely like Richardson’s patented design.

2009-1354 8We agree with the court’s findi ng of noninfringement. De sign 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 mu st 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 ordinar y 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, noti ng the various differences that could be found between the two pieces of footwear in question, we com pared their overall effect on the designs. Id. at 15. We looked to ornament al elements such as the curv es 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 contai ned those overall or namental effects, thereby allowing for market confusion. Id. The ordinary observer test similarly app lies 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. 2 006) (holding that while it is proper to factor out the functional aspects of various desi gn elements, that disc ounting of functional elements must not convert t he overall infringement test to an element-by-element comparison). In evaluatin g infringement, we determine whether “the deception that arises is a result of the similarities in the overall design, not of si milarities in ornamental features in isolation.” Amini Innovation , 439 F.3d at 1371.

2009-1354 9We do not agree with Richardson that t he district court failed to apply the ordinary observer test in find ing no infringement. The court specifically concluded that “[f]rom the perspective of an ordinary obser ver familiar with the prior art, the overall visual effect of the Fubar is signifi cantly different fr om the Stepclaw.” Richardson , 610 F. Supp. 2d at 1052. It recited the si gnificant differences between the ornamental features of the two designs but, in determining infringement, it mainly focused on whether an ordinary observer w ould be deceived into thinki ng 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 t he claimed and accused designs in light of the prior art, will attach importance to differences bet ween the claimed design and the prior art depending on the overall effect of t hose 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 elem ents of the tools, the two designs are indeed different. Each of the Fubar tools has a stream lined 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 t he ’167 patent design, the overall effect of this stream lined theme makes the Fubar tools significantly different from Richardson’s design. Overall, the accu sed products clearly have a more rounded

2009-1354 10appearance and fewer blunt edges than the patent ed design. The court therefore was not clearly erroneous in concl uding that the accused products embody an overall effect that cannot be found in the ’167 patent des ign and hence cannot cause market confusion. See Egyptian Goddess , 543 F.3d at 681 (infringement cannot be found unless the accused product creat es an appearance deceptivel y similar to the claimed design). C. Jury Demand We lastly address Richardson’ s argument that the distri ct 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 ti me he filed his jury demand, a motion to dismiss was pending, and the Rule 38(b) clo ck did not start until the motion had been ruled upon by the court. Moreover, Richar dson 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 Cir cuit 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 dism iss 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 11We agree with Stanley that the district court permissi bly 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 jurisdicti on, 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 determinat ion of the timeliness of a demand for jury trial under Ru le 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) stat es that “a party may demand a jury trial by . . . serving the other parties with a writt en 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 concl uded that Richardson’s jury demand was untimely because he served it more than ten days a fter Stanley filed its answer. Id. The court held that the fact that a motion to dism iss 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 feder al cases. Fed. R. Civ. P. 7(a). A motion to dismiss is not one of them. It is not a pleading di rected 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 am ended to provide the parties fourteen days to make a demand for a jury trial.

2009-1354 12Richardson 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 nothi ng in the federal rule s 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 di scretion 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 resu lts from oversight or inadvertence. See Pacific Fisheries Corp. v. HIH Ca s. & 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 moti on 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 therefor e 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 t he purposes of starting the Rule 38(b) clock is not deemed filed until after the moti on attacking the pleadings is decided. Anderson , 584 F.2d 369. Anderson does not address the situati on presented here, wherein the defendant first filed a motion to dismiss and then filed an answer.

2009-1354 132009-1354 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 unpersuasiv e. 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 Nin th Circuit law. Zivkovic v. S. Cal. Edison Co. , 302 F.3d 1080, 1087 (9th Cir. 2002) (“ [G]ood faith mistake as to t he deadline for demanding a jury trial establishes no more than inadverte nce, which is not a sufficient basis to grant relief from an untimely jury demand.”). The dist rict court properly refused to exercise its discretion in rejecting Richards on’s Rule 39(b) request. CONCLUSION We have considered Richardson’s rema ining arguments and do not find them persuasive. Accordingly, the judgm ent of the distri ct court is AFFIRMED