United States: Federal Circuit Holds That Claim Language Can Limit The Scope Of A Design Patent

In Curver Luxembourg SARL v. Home Expressions Inc., case number 18-2214, the U.S. Court of Appeals for the Federal Circuit recently held that the claim language of a design patent can limit its scope where the claim language supplies the only instance of an article of manufacture that appears nowhere in the figures.

Plaintiff Curver had asserted U.S. Design Patent No. D677,946 ('946 patent), entitled "Pattern for a Chair" and claiming an "ornamental design for a pattern for a chair." Curver sued defendant Home Expressions alleging that Home Expressions made and sold baskets that incorporated Curver's claimed design pattern and thus infringed the '946 patent. The design patent's figures, however, merely illustrate the design pattern disembodied from any article of manufacture.

At the district court level, Home Expressions moved to dismiss under Federal Rule of Civil Procedure 12(b)(6), arguing that its accused baskets could not infringe because the asserted design patent was limited to chairs only. To determine whether the complaint stated a plausible infringement claim, the district court conducted a two-step analysis. First, it construed the scope of the design patent. Second, it compared the accused products to the claimed design as construed to determine whether the products infringed. Under the "ordinary observer" test, an accused product infringes a design patent if "in the eye of an ordinary observer . . . two designs are substantially the same," such that "the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other . . . .".

At the first step, the district court construed the scope of the '946 patent to be 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." At the second step, 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 pursuant to Rule 12(b)(6) for failing to set forth a plausible claim of infringement.  The Federal Circuit then had to decide whether the district court correctly construed the scope of the design patent as limited to the illustrated pattern applied to a chair, or whether the design patent covers any article, chair or not, with the surface ornamentation applied to it. In doing so, the Federal Circuit for the first time had to decide 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 because all of the drawings fail to depict an article of manufacture for the ornamental design. Thus, this was a case of first impression in which the Federal Circuit said it was confronted with an "atypical situation."

In making its decision, the Federal Circuit noted that since the figures fail to illustrate any particular article of manufacture, Curver's argument effectively collapses to a request for a patent on a surface ornamentation design per se.  However, the Federal Circuit reasoned the law and long-standing precedent has never sanctioned granting a design patent for a surface ornamentation in the abstract such that the patent's scope encompasses every possible article of manufacture to which the surface ornamentation could be applied.  Therefore, the Federal Circuit did not want to construe the scope of a design patent so broadly merely because the referenced article of manufacture appears in the claim language, rather than the figures.

Next, the Federal Circuit reasoned the Patent Office has made clear that it does not grant patents for designs disembodied from an article of manufacture.  In so doing, 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 or by a combination of the figures and the language of the design patent. Thus, to obtain a design patent requires that the design be tied to a particular article, and the claim language, and not just illustration alone, can identify that article.

Next, turning to the specifics of this case, the Federal Circuited noted the prosecution history shows that here Curver specifically 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. And, under the ordinary observer test, Curver does not dispute that the district court correctly dismissed Curver's claim of infringement, for no "ordinary observer" could be deceived into purchasing Home Expressions' baskets believing they were the same as the patterned chairs claimed in Curver's patent.

Thus, in sum, 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 held 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.

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