In a case of first impression, 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.” Curver Luxembourg, SARL v. Home Expressions Inc., No. 2018-2214 (Fed. Cir. Sept. 12, 2019).
In the particular case, Curver Luxembourg, SARL (Curver), filed suit against Home Expressions Inc. (Home Expressions) in U.S. District Court for the District of New Jersey alleging infringement of U.S. design patent no. D677,946 (the ’946 patent) for making and selling baskets incorporating Carver’s claimed “Y” pattern. Defendant Home Expressions filed a Rule 12(b)(6) motion arguing noninfringement in view of the ’946 patent being limited to chairs. The district court agreed with the defendant and granted the motion to dismiss the complaint for failure to state a plausible claim of design patent infringement. Curver appealed to the Federal Circuit.
The ’946 patent is titled “Pattern for a Chair,” and the sole claim was amended during prosecution to recite an “ornamental design for a pattern for a chair.” Interestingly, however, none of the ’946 patent’s figures depict a pattern applied to a chair. On appeal, Curver argued the scope of the ’946 patent should be broadly construed based on what is illustrated in the drawings. And since the figures of the ’946 patent are devoid of any chair illustrations, Curver pressed the court to broadly construe the ’946 patent to cover any article of manufacture with its “Y” pattern.
The Federal Circuit rejected Curver’s arguments, relying on “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.” Emphasis added. The court further explained 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.” In view thereof, the court affirmed the district court’s decision.
This case offers up a good lesson to applicants seeking to secure design patent protection and enforce their rights against third parties. BakerHostetler routinely helps clients develop and execute effective strategies involving design patents along with other forms of intellectual property.