Last week, the United States Court of Appeals for the Federal Circuit issued an opinion in Curver Luxembourg, SARL v. Home Expressions Inc., No. 2018-2214 (Sept. 12, 2019). In a “case of first impression,” the Court held that design patents are necessarily limited to specific articles of manufacture and may not cover mere patterns of surface ornamentation.
Curver owns U.S. Design Patent No. D677,946, which is entitled “Pattern for a Chair” and claims an “ornamental design for a pattern for a chair”—specifically, an overlapping “Y” pattern. The patent’s figures, however, illustrate the claimed overlapping “Y” pattern disconnected from a chair or any other specific article of manufacture. Curver sued Home Expressions, alleging that storage baskets sold by Home Expressions infringed Curver’s design patent because they incorporated the overlapping “Y” pattern. The district court dismissed the complaint under Rule 12(b)(6). It held Curver’s patent rights were limited to use of the ornamental design on chairs and, therefore, Curver could not state a plausible claim for infringement against Home Expressions’ baskets. Curver appealed.
The Federal Circuit affirmed. The Court rejected Curver’s argument that the district court improperly limited the patent based on the claim language instead of looking to the figures, which were not limited to chairs. The Court recognized that the scope of a design patent is traditionally defined by the figures, but explained this precedent did not apply to the “atypical situation” in which the patent’s figures did not illustrate any specific article of manufacture. The Court held the claim language “pattern for a chair” limited the scope of Curver’s design patent because it supplied the patent’s only description of an article of manufacture. The Court explained that Culver’s interpretation would improperly lead to a patent on a pattern of surface ornamentation untethered from any specific product, and that “long-standing precedent, unchallenged regulation, and agency practice all consistently support 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 further rejected Curver’s argument that the district court improperly applied prosecution history estoppel to limit the scope of the patent. The Court held that because Curver amended the title, claim, and figure descriptions to recite “pattern for a chair” to satisfy the article of manufacture requirement, which was necessary to secure its patent, these amendments were limiting.