THE ORDINARY OBSERVER

Does Prior Art Matter?

In Richardson v. Stanley Works, Inc. the CAFC squandered an opportunity to reiterate and provide greater clarity to the Ordinary Observer test. Instead, the court supported and confirmed the district court’s decision, which, as articulated by the Appellant David Richardson, failed to perform a three-way comparison between the prior art, the patented design and the accused products as set forth by the court in Egyptian Goddess and confirmed in Int’l Seaway Trading Corp.

In Richardson, the district court separated the ornamental aspects from the functional aspects of Richardson’s claimed design and determined whether an ordinary observer, after discounting the functional elements of Richardson’s claimed design, would be deceived into thinking that the two products were the same.

Richardson’s Claimed Design

Stanley’s Product

The district court held that the overall visual effect of Stanley’s product was not substantially similar to Richardson’s claimed design without any substantive analysis of the prior art. Rather than taking the opportunity to remand the case and admonish the district court to follow the Ordinary Observer test, the CAFC attempted to square the district court’s skewed analysis.

It is clear that the district court did not compare the patented design to the prior art. Instead, the district court concluded that none of the prior art designs are as similar to Richardson’s as Stanley’s design. As a result, we are left to wonder what ornamental features associated with Richardson’s claimed design distinguish it from the prior art. With this void in the analysis, the CAFC attempts to clean up the mess by comparing seemingly random design features (which appear to be associated with functional elements) of Richardson’s claimed design to those of Stanley’s product. However, since the district court did not discuss the prior art in any meaningful way, we cannot be certain whether the design features selected by the CAFC are even relevant to determining whether the ordinary observer would find infringement.

This is a case in which the CAFC would have been better served by remanding the case back to the district court so that the prior art could have been considered and the tenets espoused in Egyptian Goddess followed.