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Watch Your Language: Federal Circuit Rules that Words—Not Just Drawings—Determine the Scope of a Design Patent

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Curver Luxembourg, SARL v. Home Expressions Inc., Appeal No. 2018-2214 (Fed. Cir. Sept. 12, 2019)

Curver Luxembourg, SARL is the owner of U.S. Design Patent No. D677,946, titled “Pattern for a Chair.” The design patent, which features an overlapping “Y” design, claims an “ornamental design for a pattern for a chair.” The title of the design patent, as originally applied for, was “Furniture Part.” However, the application was initially denied for failure to adequately designate the article to which the patent would apply. The Patent Office granted the design patent only after Curver altered the language from “Furniture Part” to “Pattern for a Chair” to satisfy the single article requirement. The design patent does not contain any images or drawings of the design as applied to a chair. Rather, the design patent’s figures illustrate the design pattern disembodied from any article of manufacture.

Curver sued Home Expressions, Inc., in the District of New Jersey for its use of a similar overlapping “Y” pattern on manufactured home storage baskets.

During litigation, Judge Kevin McNulty granted Home Expressions’s motion to dismiss, finding that the scope of Curver’s design patent extended only to chairs. Judge McNulty further ruled that the determination of the article of manufacture to which a design patent applies can be ascertained from the drawings or from the language of the design patent. In determining the scope of the design patent, the court noted the importance of claim language reciting “a pattern for a chair” and the title, “Pattern for a Chair.”

Curver appealed the decision, and the Federal Circuit affirmed.  In a precedential decision, the panel of Circuit Judges Chen, Hughes, and Stoll noted that this was a case of first impression and the facts were “atypical” in that “all of the drawings fail to depict an article of manufacture for the ornamental design.” The panel rejected the idea that a design patent could provide protection untethered from a specific article of manufacture and held that the words of a design patent—i.e., the title and claim language—are relevant to determining the scope of the patent.

Implications for Patent Law Litigation

The Federal Circuit ruling solidifies the legal rule that design patents apply only to the article of manufacture specified in the patent. It also establishes that the article of manufacture can be determined not only from design patent drawings, but from the language of the design patent. The use of the language in a design patent to define the article of manufacture is arguably limited to design patents whose drawings fall short of properly identifying the article of manufacture. However, the full scope of the holding remains to be seen.

In the future, it is important to consider the language of a design patent—as well as the drawings—both during patent prosecution and when considering litigation. This case may also provide additional non-infringement and validity arguments to defendants facing a patent infringement law suit. It is important to seek counsel to ensure compliance with patent requirements and to develop litigation strategies in light of the holding.