Patentee fails to convince Federal Circuit that a design patent claim to "an ornamental design
Curver Luxembourt, SARL, Plaintiff-Appellant
Home Expressions, Inc., Defendant-Appellee
Decided: September 12, 2019
Case Summary by Frederick Hadidi
35 USC §171 says that a design patent covers an ornamental design for an “article of manufacture.” The patent itself must have drawings that show the covered design, and 37 CFR §1.153(a) requires a design patent claim to be written “in formal terms to the ornamental design for the article (specifying name) as shown, or as shown and described.”
What happens if the claim recites a specific article of manufacture—such as a chair—but the patent’s drawings simply illustrate a disembodied surface design without showing the claimed chair? Do such claims cover all articles of manufacture that use the disclosed design? In a case of first impression, the Federal Circuit said they do not.
Curver Luxembourt, SARL owns US patent D677,946, which claims an “ornamental design for a chair.” The figures, however, only illustrate an overlapping “Y” surface design, without showing how that design is incorporated into the claimed chair.
As originally filed, Curver’s patent application claimed a “design for a furniture part,” and was titled “Furniture (Part of -).” Citing 37 CFR §1.153(a)—which also requires the title to identify a “particular article”—the examiner said that the title was too vague, and suggested that it be amended to read “pattern for a chair.”
Curver amended the title as suggested, and changed the claims to recite an ornamental design for a chair; but the patent owner did not amend the drawings to show the newly claimed chair.
After the patent issued, Curver sued Home Expressions, Inc., alleging that their baskets—which include an overlapping “Y” surface design—infringed the ‘946 patent’s claim to an ornamental design for a chair. The defendant moved to dismiss the case on the theory that the accused baskets could not infringe because Curver’s patent is limited to ornamental designs for chairs. The District Court granted that motion.
The question on appeal was whether the trial court was correct that the asserted design patent is limited to the illustrated overlapping “Y” pattern as applied to a chair (as the claims recite), or whether the claimed design covers any article—chair or not—with the illustrated surface ornamentation applied to it. In other words, does Curver’s patent cover the disembodied surface design?
The Federal Circuit held that it does not; it noted: (a) that for more than a century, the Patent Office has refused to grant patents covering disembodied designs; (b) that both 37 CFR §1.153(a) and MPEP §1502 require the design to be tied to a particular article; and (c) that §1502 says claimed designs “cannot exist alone merely as a scheme of surface ornamentation.”
The panel also rejected Curver’s argument that it had not surrendered broader scope of its claim by amending them to recite a “pattern for a chair,” explaining that: (a) the amendments were made pursuant to §1.153(a) (which requires the article of manufacture to be identified), and (b) complying with §1.153(a) was necessary to secure the patent. The court therefore concluded that the patent’s scope is limited by those claim amendments, even though the figures were not changed to show a chair.
The patent owner’s last argument was based on a 63-year-old CCPA decision, which suggests (according to Curver) that a design patent directed to a surface ornamentation for an article of manufacture can be anticipated by a prior art reference that shows the same surface ornamentation—even if the prior art article of manufacture is unrelated to the one shown in the patent. Curver reasoned that if this is the case, then the converse must also be true: the surface ornamentation for a (non-prior art) article of manufacture could infringe a design patent claiming the same surface design—even if the design patent is directed to an unrelated article of manufacture.
The Federal Circuit was not persuaded, explaining that the CCPA decision language Curver had cited was dictum, and therefore not controlling. Moreover, that old CCPA decision is subject to the Federal Circuit’s 2008 en banc decision in Egyptian Goddess, which changed the test for determining design patent infringement to focus solely on the “ordinary observer” test, under which a patent owner must show by a preponderance of the evidence that an ordinary observer, taking into account the prior art, would believe the accused design to be the same as the patented design.
Therefore, as explained in Egyptian Goddess, the ordinary observer test is the only test that is permissible to determine both infringement and anticipation. And under that test—which the District Court properly applied—Curver conceded that no “ordinary observer” could be deceived into purchasing the defendant’s patterned baskets because they believed they were the same as the patterned chairs claimed in Curver’s patent.