Curver Luxembourt, SARL v. Home Expressions, Inc.

Updated: Nov 10, 2020

Patentee fails to convince Federal Circuit that a design patent claim to "an ornamental design for a chair" covers a basket

Curver Luxembourt, SARL, Plaintiff-Appellant


Home Expressions, Inc., Defendant-Appellee


Decided: September 12, 2019

Case Summary

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.

.09 Case summary of Curver v Home Ex

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