Curver Luxembourg, Sarl v. Home Expressions Inc.
938 F.3d 1334
| Fed. Cir. | 2019Background
- Curver owns U.S. Design Patent No. D677,946 titled “Pattern for a Chair,” claiming an ornamental overlapping “Y” pattern; the patent figures show only the pattern, not any chair or other article.
- The original application described a “furniture part”; the Examiner required a specific article per 37 C.F.R. § 1.153 and suggested amending the title and claim to “Pattern for a Chair.” Curver adopted those amendments; no new drawings were submitted.
- Home Expressions sold baskets with a similar overlapping “Y” ornamentation; Curver sued for design-patent infringement in the District of New Jersey.
- The district court construed the patent as limited to the illustrated design applied to a chair and dismissed Curver’s complaint under Rule 12(b)(6), finding that an ordinary observer would not mistake the baskets for the patented patterned chairs.
- On appeal the Federal Circuit affirmed, holding that where the figures do not show an article of manufacture, claim language identifying the article (here, a chair) can limit the scope of a design patent; a design per se (surface ornamentation untethered to an article) is not permitted.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether a design patent is limited to the article named in the claim when the drawings show only the surface pattern (no article). | Figures govern design patents; because drawings show the pattern only, the claim should not be limited to a chair. | Claim language identifying a particular article can limit scope when the figures lack any article; regulation permits the claim to specify the article. | The claim language can limit scope; the ’946 patent is limited to the pattern as applied to a chair. |
| Whether amendments made during prosecution (from “furniture part” to “pattern for a chair”) surrendered broader scope / are binding. | Earlier allowance of broader language means Curver did not surrender broader scope. | Amendments were made to satisfy the Examiner’s article-of-manufacture requirement and were necessary to obtain allowance, so they limit scope. | The prosecution amendments (made under §1.153) limit the patent’s scope; Curver’s broader scope was surrendered. |
| Whether a design per se (surface ornamentation) can be protected across different articles, and whether Glavas allows cross-article infringement/anticipation. | Glavas supports that identical surface ornamentation can anticipate/infringe regardless of differing underlying articles. | Glavas’ statement about anticipation is dictum; Egyptian Goddess’s ordinary-observer test controls infringement and anticipation and requires substantial visual similarity as applied to the claimed article. | Design patents cannot be divorced from an article; Glavas dictum is not controlling; ordinary-observer test governs—baskets do not infringe a pattern claimed "for a chair." |
| Whether the drawings disclose a “panel” component such that Samsung’s article-of-manufacture/component guidance would apply. | The drawings show a three-dimensional panel that could be a component under Samsung. | Argument was raised first on appeal (waived); court also found the drawings do not show the type of component Samsung contemplated. | Argument waived; in any event, the panel- component theory does not apply here. |
Key Cases Cited
- Gorham Co. v. White, 81 U.S. 511 (design patent protects a design as applied to an article of manufacture rather than an abstract picture)
- Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (en banc) (adopting the ordinary-observer test as the sole test for design-patent infringement)
- Pac. Coast Marine Windshields Ltd. v. Malibu Boats, LLC, 739 F.3d 694 (design patent scope is generally defined by drawings)
- In re Schnell, 46 F.2d 203 (CCPA 1931) (design protection contemplates application to an article and applicant should teach application)
- In re Glavas, 230 F.2d 447 (CCPA 1956) (discussed anticipation by non-analogous articles; court treated relevant language as dictum)
- Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233 (ordinary-observer test applies to anticipation as well as infringement)
- Samsung Elecs. Co. v. Apple Inc., 137 S. Ct. 429 (discussing when a component can be an "article of manufacture")
- Star Athletica, L.L.C. v. Varsity Brands, Inc., 137 S. Ct. 1002 (context on separability of pictorial/ornamental features for other IP regimes)