In Curver Luxembourg, SARL v. Home Expressions Inc., the Federal Circuit Court of Appeals held that the scope of a design patent can be limited by the claim language where the language solely provides the article of manufacture, and it does not appear in the drawings. Accordingly, the federal appeals court concluded that a design patent titled “Pattern for a Chair” did not protect a similar pattern on a basket.
Design Patent Protection
A design patent protects the ornamental appearance of an article. Under 35 U.S.C. 171, “Whoever invents any new, original, and ornamental design for an article of manufacture may obtain a patent thereof…”
In a design patent application, the subject matter which is claimed is the design embodied in or applied to an article of manufacture (or portion thereof) rather than the article itself. As set forth in 37 C.F.R. § 1.153(a):
The title of the design must designate the particular article. No description, other than a reference to the drawing, is ordinarily required. The claim shall be in formal terms to the ornamental design for the article (specifying name) as shown, or as shown and described.
Alleged Design Patent Infringement
Curver Luxembourg, SARL (Curver) is the assignee of U.S. Design Patent No. D677,946 (’946 patent), entitled “Pattern for a Chair” and claiming an “ornamental design for a pattern for a chair.” The design patent’s figures, however, merely illustrate the design pattern disembodied from any article of manufacture.
Curver sued Home Expressions Inc. (Home Expressions) in the U.S. District Court for the District of New Jersey, alleging that Home Expressions made and sold baskets that incorporated Curver’s claimed design pattern and thus infringed the ’946 patent. Home Expressions moved to dismiss, arguing that its accused baskets could not infringe because the asserted design patent was limited to chairs only.
The district court agreed with Home Expressions and granted the motion. The court construed the scope of the ’946 patent to be limited to the design pattern illustrated in the patent figures as applied to a chair, explaining that “[t]he scope of a design patent is limited to the ‘article of manufacture’— i.e., the product—listed in the patent.” It further found that an ordinary observer would not purchase a Home Expressions’ 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.
Federal Circuit’s Decision
The Federal Circuit affirmed. It agreed that the claim language “ornamental design for a pattern for a chair” limited the scope of the claimed design.
In support of its decision, the Federal Circuit cited the “long-standing precedent, unchallenged regulation and agency practice all consistently support[ing] the view that design patents are granted only for a design applied to an article of manufacture, and not a design per se.” The court added that “tying the design pattern to a particular article provides more accurate and predictable notice about what is and is not protected by the design patent.”
Lesson for Design Patent Applicants
The Federal Circuit’s precedential decision offers a valuable lesson for New Jersey and New York businesses seeking to obtain design patent protection. Most importantly, it highlights the importance of appropriately defining the “article of manufacture.” For guidance, we encourage businesses to work with an experienced intellectual property attorney.
If you have questions, please contact us
If you have any questions or if you would like to discuss the matter further, please contact me, Libby Babu Varghese, or the Scarinci Hollenbeck attorney with whom you work, at 201-806-3364.