Words Matter in Design Patents:  Federal Circuit Rules that Claim Language Can Limit the Scope of a Design Patent

On September 12, 2019, the United States Court of Appeals for the Federal Circuit held for the first time 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’s order affirming the dismissal of a complaint for design patent infringement based on a narrowed construction of the patent-in-suit makes clear that words matter in a design patent.

In Curver Luxembourg, SARL v. Home Expressions Inc., No. 2018-2214 (Fed. Cir. Sept. 12, 2019), Curver Luxembourg, SARL (Curver) sued Home Expressions Inc. (Home Expressions) for infringement of U.S. Design Patent No. D677,946 (‘946 Patent), alleging that Home Expressions made and sold baskets that incorporated Curver’s claimed “Y” pattern design.  The ‘946 Patent is entitled “Pattern for a Chair” and claims an “ornamental design for a pattern for a chair.”  Home Expressions moved to dismiss Curver’s complaint under Federal Rule of Civil Procedure 12(b)(6), arguing that its baskets could not possibly infringe the ‘946 Patent because the asserted design patent’s claim was limited to chairs only, based upon the claim language in the ‘946 Patent.  The district court agreed and granted the motion to dismiss.

On appeal, Curver argued that the district court improperly limited the scope of the ‘946 Patent by focusing on the text of the design patent, which referred to a “pattern for a chair,” instead of the design patent’s figures, which did not depict a pattern design applied to a chair.  Curver reasoned that because the design patent application’s original claim language reciting a “design for a furniture part” was allowed by the examiner before the claim was amended to recite a “pattern for a chair,” Curver never surrendered the broader scope of the original claim.  Curver further argued that because the figures in the ‘946 Patent did not illustrate any chairs, the ‘946 Patent should be broadly construed to cover any article of manufacture with the “Y” pattern design.

While the Federal Circuit acknowledged that courts typically look to a design patent’s figures to determine the scope of the invention, the Court found that the figures in the ‘946 Patent do not depict any particular article of manufacture.  The Federal Circuit noted that 37 C.F.R. § 1.153 requires an article of manufacture to be identified by the design patent’s figures or claim language.  In Curver, because the only instance of an article of manufacture appears in the ‘946 Patent’s text, rather than its figures, the Federal Circuit rejected Curver’s arguments and affirmed the district court’s order, construing the ‘946 Patent to be limited to chairs.

The important lesson to be learned from this case is that in litigating and defending against claims of infringement of a design patent, litigants should scrutinize how the patentee describes the design—in addition to the figures—in construing the scope of the design patent-in-suit and an accused infringer’s liability.

AALRR has a dedicated group of attorneys on its Intellectual Property Team who have the experience and expertise to vigorously enforce your design patents and defend you against claims of design patent infringement.  Contact the authors for assistance with your intellectual property needs.

This AALRR Blog is intended for informational purposes only and should not be relied upon in reaching a conclusion in a particular area of law. Applicability of the legal principles discussed may differ substantially in individual situations. Receipt of this or any other AALRR publication does not create an attorney-client relationship. The Firm is not responsible for inadvertent errors that may occur in the publishing process. 

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