By Ryan Thelen, Associate
Often when a design patent application is prepared, the primary focus and effort of the drafting process is given to the drawings, while little thought is given to the wording of the actual claim. However, the Federal Circuit recently issued a decision in a case of first impression in Curver Luxembourg, SARL v. Home Expressions Inc., 2018-2214 (Fed. Cir. Sep 12, 2019), in which the Federal Circuit highlighted how the words in a design patent claim can limit the scope of a design illustrated in a patent drawing.
Curver is the assignee of U.S. design patent no. D677,946 (’946 patent), which claims an “ornamental design for a pattern for a chair.” However, the drawings of the ’946 patent do not show a chair and merely illustrate an overlapping Y design. The term “chair” was added to the claim and title during prosecution as a result of an examiner objection to the use of the term “furniture part.”
Curver sued Home Expressions on the basis that Home Expressions sells baskets that incorporate an overlapping “Y” shape that infringes the ’946 patent. The United States District Court for the District of New Jersey first construed the scope of the ’946 patent to include the design illustrated in the drawings as applied to a chair, and then determined that Home Expressions’s baskets do not infringe under the “ordinary observer” test. The District Court reasoned that the scope of the ’946 patent is limited to the article of manufacture listed in the ’946 patent, and found that an ordinary observer would not purchase Home Expressions’s basket with the ornamental “Y” design believing that the purchase was for an ornamental “Y” design applied to a chair, as protected by the ’946 patent.”
On appeal, Curver took issue with the claim construction aspect of the District Court opinion, arguing that the District Court improperly limited the scope of the claim due to the word “chair” in the claim, rather than focusing on the design shown in the drawings in which no chair is present. 35 U.S.C. § 171 permits patent protection for a “new, original and ornamental design for an article of manufacture” (emphasis added), yet no article of manufacture was illustrated in the drawings of the ’946 patent. Thus, the issue before the Federal Circuit is how to construe the scope of a design patent in which the claimed design is illustrated in the abstract (i.e., is not applied to an article of manufacture in the drawings).
The Federal Circuit held that “claim language can limit the scope of a design patent where the claim language supplies the only instance of an article of manufacture that appears nowhere in the figures.” The Federal Circuit cited various persuasive sources to support its decision, such as Gorham Co. v. White (Sup. Ct. 1871), Ex parte Cady (USPTO 1916), 37 C.F.R. § 1.15, and the MPEP. The Federal Circuit specifically noted that 37 C.F.R. § 1.15 permits the scope of a design patent to be defined by a combination of the drawings and the language of the design patent.
This case makes clear that when filing and prosecuting a design patent application, applicants and practitioners should ensure that the claimed design is tied to an actual “article of manufacture,” and should carefully choose the words that will be used in the claim, description, and title.