Federal Circuit Rules Design Patent Scope Can Be Limited By Claim Language

On September 12, 2019, the Federal Circuit upheld the District Court of New Jersey’s finding that a design patent’s scope is limited by the language in its claims, rather than just its figures. The decision, in Curver Luxembourg, SARL v. Home Expressions Inc., heightens the importance of titles and claim language used when drafting design patents, rather than limiting the scope to solely the figures themselves. This holding should be carefully read by applicants and practitioners alike to inform their drafting and responses during examination.

In the case, Curver Luxembourg was attempting to assert a design patent, D677,946 against Home Expressions for the “Y” design pattern they used on baskets. The problem was that the design patent was entitled “Pattern for a Chair” and claimed “ornamental design for a pattern for a chair”. The District Court granted Home Expressions’ motion to dismiss under Rule 12(b)(6) for failure to state a claim.

On appeal for the dismissal, Curver Luxembourg argued that the figures showed only a pattern not the article it was on. They argued that because the pattern was all that was shown in the figures, it should not be limited in its application to solely chairs. This argument was not persuasive, especially considering the prosecution of the application.

Originally, the application was submitted with the title “FURNITURE (PART OF-)” and claimed a “design for a furniture part”. The examiner had objected to the title under the Patent Office’s Manual of Patent Examining Procedure (MPEP) § 1503(I) stating that design patents must designate a “particular article”. The examiner suggested the final title and claims, which the applicant accepted. This language was included by the District Court as part of the “Ordinary Observer” test for design patent infringement. Since the basket was not a chair, the District Court found no reasonably plausible infringement and dismissed the suit.

On appeal, the Federal Circuit explained that “Curver’s argument effectively collapses to a request for a patent on a surface ornamentation design per se.” Balking at the idea of doing so, the decision declines “to construe the scope of a design patent so broadly here merely because the referenced article of manufacture appears in the claim language, rather than the figures.”

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