WHEN FIGURES IN A DESIGN PATENT DO NOT CLEARLY SHOW AN ARTICLE OF MANUFACTURE FOR THE ORNAMENTAL DESIGN, THE TITLE AND CLAIM LANGUAGE CAN LIMIT THE SCOPE OF THE DESIGN PATENT
| October 7, 2019
Curver Luxembourg, SARL, v. Home Expressions Inc.
September 12, 2019
Chen (author), Hughes, and Stoll
Summary:
The Federal Circuit affirmed the district court’s grant of a defendant’s motion to dismiss a complaint for failure to state a plausible claim of design patent infringement because when all of the drawings in a design patent at issue do not describe an article of manufacture for the ornamental design, the title, claim language, figure descriptions specifying an article of manufacture, which was amended during the prosecution of the patent based on the Examiner’s proposed amendment, can limit the scope of a design patent.
Details:
The ‘946 Patent
Curver Luxembourg, SARL (Curver) is the assignee of U.S. Design Patent No. D677,946 (‘946 patent) with a title “Pattern for a Chair” and claiming an “ornamental design for a pattern for a chair.” The ‘946 patent claims an overlapping “Y” design, as shown below. However, none of the figures illustrate a design being applied to a chair.
Prosecution
Curver originally applied for a patent directed to a pattern for “furniture,” and the original title was “FURNITURE (PART OF-).” The original claim recited a “design for a furniture part.”
However, during the prosecution, the Examiner allowed the claim but objected to the title because it was too vague to constitute an article of manufacture (in Ex Parte Quayle Action). The Examiner suggested amending the title to read “Pattern for a Chair,” and Curver accepted the Examiner’s suggestion by replacing the title with “Pattern for a Chair” and amending the claim term “furniture part” with “pattern for a chair.” Curver did not amend the figures to illustrate a chair. The Examiner accepted Curver’s amendments and allowed the application.
District Court
Home Expressions makes and sells baskets with a similar overlapping “Y” design disclosed in the ‘946 patent.
Curver sued Home Expressions accusing its basket products of infringing the ‘946 patent. Home Expressions filed a motion to discuss Curver’s complaint under Rule 12(b)(6) for failing to set forth a plausible claim of infringement.
Using a two-step analysis, the district court construed the scope of the ‘946 patent to be limited to the design pattern illustrated in the figures as applied to a chair and found that an ordinary observer would not purchase Home Expressions’s basket with “Y” design believing that the purchase was for “Y” design applied to a chair.
Therefore, the district court granted the Rule 12(b)(6) motion.
CAFC
The CAFC held that to define the scope of a design patent, the court traditionally focused on the figures illustrated in the patent. However, when all of the drawings fail to describe an article of manufacture for the ornamental design, the CAFC held that claim language specifying an article of manufacture can limit the scope of a design patent.
In addition, the CAFC uses §1.153(a) to held that “the design be tied to a particular article, but this regulation permits claim language, not just illustration along, to identify that article.”
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.
The CAFC held that the prosecution history shows that Curver amended the title, claim, figure descriptions to recite “pattern for a chair” in order to satisfy the article of manufacture requirement necessary to secure its design patent. Therefore, the CAFC held that the scope of the ‘946 patent should be limited by those amendments.
Therefore, the CAFC affirmed the district court’s grant of Home Expressions’s motion to dismiss the complaint for failure to state a plausible claim of design patent infringement.
Takeaway:
- When figures in a design patent do not clearly show an article of manufacture for the ornamental design, the title and claim language can limit the scope of the design patent.
- Applicant should review the Examiner’s proposed amendments carefully before placing the application in condition for allowance.
- Applicant should be careful when crafting the title and claim language.
Tags: article of manufacture > claim > Design Patent > figure > patent infringement > title
