By Thomas Long, J.D.
In a case of first impression, the Federal Circuit held that claim language in a design patent can limit the patent’s scope to a particular article of manufacture, even if that article is not referred to in the patent’s figures.
The claim language "ornamental design pattern for a chair" limited the scope of the claimed design in a design patent to chairs only, the U.S. Court of Appeals for the Federal Circuit has held in what the court called a case of first impression. The Federal Circuit affirmed a district court’s decision that the design patent—which covered an ornamental overlapping "Y" pattern—could not be infringed by a defendant’s baskets that allegedly incorporated the design. Even though the design patent’s figures merely illustrated the design pattern, disembodied from any product, the claim language limited the design patent’s scope to chairs, and the pattern did not apply to any article, whether chair or not, with the surface ornamentation applied to it, as the patent owner had contended (Curver Luxembourg, SARL v. Home Expressions Inc., September 12, 2019, Chen, R.).
Curver Luxembourg, SARL, owned U.S. Patent No. D677,946 ("the ‘946 patent"), the figures of which depicted an overlapping "Y" design. The ’946 patent was titled "Pattern for a Chair." Curver’s initial attempt to obtain a design patent under the titles "Furniture Part" and "Furniture (Part of)" was rejected by the USPTO for failure to designate the particular article that was the subject of the design, as required by 37 C.F.R. §1.153 and Section 1503(I) of the USPTO’s Manual of Patent Examining Procedure. Curver resubmitted its application for a design patent for "The ornamental design for a pattern for a chair," which was issued as the ’946 patent. Each figure in the patent was described as a view of a "design for a pattern for a chair."
Curver alleged that defendant Home Expressions Inc. made and sold a storage basket that incorporated an overlapping "Y" design, thereby infringing the ‘946 patent. Curver filed suit against Home Expressions, and Home Expressions moved to dismiss the complaint for failure to state a plausible claim of infringement.
The district court first construed the scope of the ’946 patent as limited to the design pattern illustrated in the patent figures as applied to a chair, explaining that "[t]he scope of a design patent is limited to the ‘article of manufacture’—i.e., the product—listed in the patent." Next, the district court found that an ordinary observer would not purchase Home Expressions’ basket with the ornamental "Y" design believing that the purchase was for an ornamental "Y" design applied to a chair, as protected by the ’946 patent. Accordingly, the district court dismissed the complaint. Curver appealed. The Federal Circuit reviewed the district court’s grant of the motion to dismiss de novo.
Curver argued on appeal that in determining that the scope of its design patent was limited to a chair, the district court improperly relied on claim language reciting a "pattern for a chair," rather than focusing on the figures, which did not contain any chair illustrations. In the appellate court’s view, given that the figures did not illustrate any particular article of manufacture, Curver’s argument effectively amounted to a request for a patent on a surface ornamentation design per se. Curver did not dispute that the law had never sanctioned granting a design patent for a surface ornamentation in the abstract such that the patent’s scope encompassed every possible article of manufacture to which the surface ornamentation was applied. The court declined to construe the ’946 patent so broadly, merely because the article of manufacture was referenced in claim language, rather than in the figures.
The dispute presented a case of first impression, the court noted. Traditionally, the scope of a design patent was defined by the figures in the patent. However, prior cases had not confronted the "atypical" situation here, in which all of the drawings failed to depict an article of manufacture for the ornamental design. The Federal Circuit had never before addressed the specific question of whether claim language specifying an article of manufacture can limit the scope of a design patent, even if that article of manufacture is not actually illustrated in the figures. "Given that long-standing precedent, unchallenged regulation, and agency practice all consistently support the view that design patents are granted only for a design applied to an article of manufacture, and not a design per se," the Federal Circuit said, "we hold that claim language can limit the scope of a design patent where the claim language supplies the only instance of an article of manufacture that appears nowhere in the figures." Supreme Court precedent dating back over 100 years indicated that the focus of a design patent is the application of the design to an article of manufacture, and not an abstract impression or picture. Additionally, for over 100 years, the Patent Office had made it clear that it does not grant patents for designs disembodied from an article of manufacture, the court noted.
The relevant regulation, 37 C.F.R. §1.153 (promulgated in 1959), stated: "The title of the design must designate the particular article. No description, other than a reference to the drawing, is ordinarily required. The claim shall be in formal terms to the ornamental design for the article (specifying name) as shown, or as shown and described" (emphasis added by court). According to the court, the regulation meant: (1) the claim is not directed to a design per se, but a design for an identified article, and (2) the scope of the design claim can be defined either by the figures ("as shown") or by a combination of the figures and the language of the design patent ("as shown and described"). In the court’s view, the regulation permitted claim language, not just illustrations, to identify that article. Moreover, the USPTO’s guidelines governing examination procedure made it clear that a design patent will not be granted unless the design is applied to an article of manufacture. The guidelines direct examiners to reject under 35 U.S.C. §171 a claim "that is not applied to or embodied in an article of manufacture."
The appellate court rejected Curver’s argument that the district court improperly applied prosecution history estoppel to limit the scope of the ’946 patent to a chair by focusing on the text rather than the figures. The prosecution history showed that Curver amended the title, claim, and figure descriptions to recite "pattern for a chair" in order to satisfy the article of manufacture requirement necessary to secure its design patent. Because the "pattern for a chair" amendments were made pursuant to 37 C.F.R. §1.153, and meeting the requirements of this rule was necessary to secure the patent, the Federal Circuit held that the scope of the ’946 patent was limited by those amendments, notwithstanding the lack of changes to the figures to reflect the limiting amendments.
Finally, the appellate court held that the district court did not err in determining that Home Expressions’s basket product did not infringe the ’946 patent. The court rejected Curver’s argument that Federal Circuit precedent suggested that a surface ornamentation for an article of manufacture can be anticipated by a prior art article that shares the same surface ornamentation, even though the prior art article is completely unrelated, and that this test for anticipation should be applied to assessing infringement in this case. However, the court stated that the "ordinary observer" test was the correct test for deciding whether the accused product infringed the patent, as well as for determining anticipation in a design patent context. Under the ordinary observer test, Curver did not dispute that the district court correctly dismissed Curver’s claim of infringement, because no "ordinary observer" could be deceived into purchasing Home Expressions’s baskets believing they were the same as the patterned chairs claimed in Curver’s patent. Therefore, the district court’s decision was affirmed.
This case is No. 18-2214.
Attorneys: Michael Anthony Nicodema (Greenberg Traurig, LLP) for Curver Luxembourg, SARL. Steven M. Auvil (Squire Patton Boggs [US] LLP) for Home Expressions Inc.
Companies: Curver Luxembourg, SARL; Home Expressions Inc.
MainStory: TopStory Patent FedCirNews
Interested in submitting an article?
Submit your information to us today!Learn More
IP Law Daily: Breaking legal news at your fingertips
Sign up today for your free trial to this daily reporting service created by attorneys, for attorneys. Stay up to date on intellectual property legal matters with same-day coverage of breaking news, court decisions, legislation, and regulatory activity with easy access through email or mobile app.