Curver Luxembourg, Sarl v. Home Expressions Inc. – The Federal Circuit Affirms Limiting the Scope of a Design Patent Based Upon its Title
On September 12th, in a case of first impression, a three-judge panel of the Federal Circuit ruled unanimously that the scope of a design patent can be determined by its title alone, where the figures do not depict an article of manufacture.
In Curver Luxembourg, Sarl v. Home Expressions Inc., Curver filed for a design patent for “FURNITURE (PART OF),” with the figures depicting a geometric pattern of an overlapping Y-design that did not appear to depict any recognizable article of manufacture. The specification described each figure as “design for a FURNITURE PART.”
U.S. Design Patent law 35 U.S.C. § 171 allows a design patent to be obtained for “any new, original and ornamental design for an article of manufacture.” In contrast, a design isolated from a particular article of manufacture cannot be patented. For example, a symbol identifying a brand may qualify for protection under U.S. Trademark law, but the symbol on its own, or on printed matter, would not be eligible for a U.S. design patent. If the symbol were incorporated into an article of manufacture, then the article of manufacture bearing the symbol would become patent eligible.
The examiner for the Curver application noted that a design patent must be tied to an article of manufacture, and also objected to the original title as too vague to satisfy 37 C.F.R. § 1.153. The Examiner suggested a change of title to “Pattern for a Chair,” perhaps thinking that the overlapping Y-design could be incorporated into a fabric component of a chair. Curver amended the title and the descriptions of the figures, after which the application was allowed and the patent was granted.
Curver later filed a claim of design patent infringement against Home Expressions, which marketed a basket bearing a very similar overlapping Y-design. Curver argued that its design patent should be viewed more broadly than a chair, but the District Court of New Jersey granted Home Expression’s motion to dismiss Curver’s claim. The district court construed the scope of Curver’s patent as limited to an ornamental design for a chair, and then determined that an ordinary observer would not purchase Home Expression’s basket with the belief that they were instead purchasing the same ornamental design applied to a chair.
On appeal to the Federal Circuit, Curver argued that the district court had improperly relied upon the patent’s title and figure descriptions (for a chair), rather than determining the scope of the patent based upon the figures, which were not limited to a chair. Curver argued that its drawings depicted a three-dimensional panel structure that could be considered a component of an item of furniture. The Federal Circuit held that Curver had not made the argument previously, and was now estopped from making it. In dicta, the Federal Circuit also noted that if it were to rely solely upon such broad drawings, future applicants could similarly file figures for a geometric design with a minimal thickness, and then allege that the figures represented any and every article of manufacture.
In previous case law, the scope of a design patent was typically determined by the figures, and the Federal Circuit considered this a case of first impression, “whether claim language specifying an article of manufacture can limit the scope of a design patent, even if that article of manufacture is not actually illustrated in the figures.” We note that there have been similar design patents, such as one for a “Wall Tile,” representing a very shallow article of manufacture, with the figures primarily illustrating a plan view with a geometric design, perhaps adding a side view of minimal width. In those cases, however, the specified article of manufacture was illustrated in the figures. Here, the specified article of manufacture, a “chair,” was clearly not illustrated in the figures.
Curver thus stands as a cautionary tale on a few levels. First, the title and specification should be descriptive, and not overly broad. Second, an Applicant should understand that unlike Curver’s application, most examiners will not even allow a design patent application where the stated article of manufacture is not illustrated. For example, if a client sought design patent protection for the shape of steam vents on the bottom of a clothes iron, the figures should not simply illustrate the shape of the steam vents in isolation, but should show them in place on a clothes iron, even if the exact shape of the clothes iron is disclaimed by broken lines. Third, an Applicant should carefully consider the implication of an examiner’s requirement to amend an application in some manner so as to limit the scope. The Applicant should consider if this is acceptable, and if there is any way to avoid being estopped from seeking a broader interpretation in the future.