Claim Language Can Limit Scope of Design Patent When No Specific Article of Manufacture is Shown in Figures
In Curver Luxembourg, SARL v. Home Expressions Inc., No. 2018-2214 (Fed. Cir. Sep. 12, 2019), the United States Court of Appeals for the Federal Circuit (hereinafter “Federal Circuit”) held claim language can limit the scope of a design patent to a specific article of manufacture when the claim supplies the only mention of the actual article of manufacture and no article of manufacture is shown in the figures.
Curver Luxembourg, SARL (hereinafter “Curver”) owns a design patent that was originally filed with the title “FURNITURE (PART OF)” with figures showing an overlapping “Y” design pattern. The claim as originally filed recited a “design for a furniture part,” and each figure was described as illustrating a “design for a FURNITURE PART.” The USPTO allowed the claim but objected to the title, citing the USPTO’s Manual of Patent Examining Procedure (MPEP) § 1503(I) which states that the title must designate a “particular article” for the design. The Examiner suggested the title “Pattern for a Chair,” which Curver adopted. Curver also amended “furniture part” to “pattern for a chair” in the claim and figure descriptions to make them consistent with the title. Curver did not, however, amend the figures to illustrate a chair. The Examiner accepted the amendments and allowed the application, which matured to U.S. Design Patent No. D677,946 (“‘946 patent”).
Home Expressions Inc. makes and sells plastic baskets that incorporate an overlapping “Y” pattern that is similar to the pattern illustrated in the figures of the ‘946 patent. In district court, Curver asserted that Home Expressions’ baskets infringed the ‘946 patent. Home Expressions moved to dismiss the complaint, arguing that the design patent was limited in scope to chairs, and thus could not be enforced against baskets. The district court agreed and dismissed the complaint.
On appeal, the Federal Circuit held that the district court had properly construed the claim as limited to chairs and affirmed the dismissal of the complaint. The Court reasoned that precedent, government regulation and agency practice do not sanction granting a patent on a surface ornamentation without attaching the ornamentation to a defined article of manufacture. While the Court acknowledged that courts generally look to the figures to define the scope of a design patent, the sole manufacturing article recited in the claims cannot be ignored. Here, the claim language “ornamental design for a pattern for a chair” limits the scope of the claimed design in this particular case.
The Court acknowledged that this is a case of first impression, pointing out that while case law shows that design patents are limited to what is shown in the application drawings, none of the foregoing cases “confront the atypical situation we have here, where all the drawings fail to depict an article of manufacture for the ornamental design.” In the Curver opinion, the Court confirms that claim language specifying an article of manufacture can limit the scope of design patent, even though that article of manufacture is not actually illustrated in the figures.