Setting a New Precedent in Design Patent Disputes

December 2010

"In a side-by-side comparison…the overall effect of this streamlined theme makes the FuBar tools significantly different from Richardson’s design."
—U.S. Court of Appeals for the Federal Circuit

As the manufacturer of hundreds of popular products, and the leading brand name in its field, Stanley Black & Decker probably sees more patent challenges than most companies. In 2010, Pillsbury successfully defended this longtime client in separate cases on both coasts.

In Richardson v. Stanley Works, Inc., Pillsbury achieved more than a victory for our client: The decision from the U.S. Court of Appeals for the Federal Circuit likely marks a fundamental shift in how functional aspects of design patents are evaluated in infringement claims.

The appellate review came after Pillsbury successfully defended Stanley at trial against claims that the company's FuBar®—a popular 4-in-1 utility bar for prying, splitting, board-bending and striking jobs—infringed the design patent on the plaintiff's "Stepclaw" multi-function tool. The lower court found that any common features between the tools were purely functional, and thus could not sustain a finding of infringement under a design patent.

The appeals court affirmed. This case was closely watched in the IP bar and design community, as it was the first case since the Egyptian Goddess decision to address how functional elements of a patented design should be treated.

For IP-sensitive companies in a host of industries, Stanley's victory points to the importance of carefully analyzing the functional and ornamental aspects of design patents as part of IP portfolio management.
In 2010, Pillsbury also helped the iconic tool manufacturer prevail in a patent dispute with industry rival Zircon Corp. over software methods used to detect construction stud beams. This case was decided in the U.S. District Court for the Northern District of California.