Pattern illustrated in design patent limited to chairs due to prosecution history

Curver Luxemborg, SARL v. Home Expressions, Inc.

Docket No. 2018-2214
September 12, 2019

Brief Summary: DC finding that Curver’s design patent claim limited the patent to chairs affirmed.

Summary: Curver appealed DC grant of HE’s motion to dismiss under FRCP 12(b)(6) since “its accused baskets could not infringe because the asserted design patent was limited to chairs only” and not “any article, chair or not, with the surface ornamentation applied to it” (the patent being D677,946). The FC panel opinion explains that “Curver originally applied for a patent directed to a pattern for ‘furniture,’ not a chair specifically” (e.g., “[t]he original claim recited a ‘design for a furniture part’” and “each of the figures was described as illustrating a ‘design for a FURNITURE PART’” (“none of the figures illustrate a design being applied to a chair”)), and that “[t]he term ‘chair first appeared through amendment during prosecution” (e.g., “part” was objected to as “too vague” and “Curver adopted the examiner’s suggestion” to amend the title to “Pattern for a Chair”, and similarly amended the claim and figure descriptions). The DC “conducted a two-step analysis” of infringement, first construing the scope of the design patent and then comparing the accused products to the claimed design using the “ordinary observer” test (“if ‘in the eye of an ordinary observer…two designs are substantially the same’ such that ‘th resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other” (Gorham, US 1871; Egyptian Goddess, FC 2008 (en banc, ordinary observer test is “the sole test for determining design patent infringement”, as it is for anticipation (Int’l Seaway, FC 2009)). Curver argued that the DC erred by relying “on claim language reciting a ‘pattern for a chair,’ rather than focusing on the figures which are devoid of any chair illustrations”. FN1 describes Curver’s argument, not considered here as waived, that under Samsung (US 2016), its illustrated “‘three-dimensional panel structure’…provides the requisite ‘article of manufacture’ because it is a ‘component’ of a product”, but the FC panel disagreed since “[i]n Samsung, the components covered by Apple’s design patents were parts of a concrete ‘multicomponent’ smartphone product, not a surface ornamentations disembodied from any identifiable product, as here.” The FC panel wrote that in this “case of first impression” it addressed “for the first time 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” since “[t]o define the scope of a design patent,” it has “traditionally focused on the figures illustrated in the patent” (e.g., Pac. Coast, FC 2014). And it held that it can “where the claim language supplies the only instance of an article of manufacture that appears nowhere in the figures” (e.g., “it is the application of the design to an article of manufacture that Congress wishes to promote” (Gorham), PTO “has made clear that is does not grant patents for designs disembodied from an article of manufacture” (Ex parte Cady, Comm’r Pat. 1916; pre-AIA 37 CFR 1.153; MPEP 1502-04; 35 USC 171). Given that “the pattern for a chair’ amendments were made” by Curver in order “to secure the patent”, the FC panel held “that the scope of the ‘946 patent is limited by those amendments, notwithstanding the applicant’s failure to update the figures to reflect those limiting amendments.”

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