Federal Circuit Report

• Publication year: 2019
• Author: Rex Hwang

Federal Circuit Report

Rex Hwang

Jeffer Mangels Butler & Mitchell LLP

Shenel Ozisik

Jeffer Mangels Butler & Mitchell LLP

This quarter we will Focus on the Federal Circuit's recent decision in Curver Luxembourg, SARL v. Home Expressions Inc.¹ In this case of first impression, the Federal Circuit shed light on the scope of design patent infringement by holding that a design patent's claim language can limit the scope of a design patent where no specific article of manufacture is depicted in the design patent's figures.

BACKGROUND RELATING TO THE PATENT-IN-SUIT

U.S. Design Patent No. D677,946 ("the '946 Patent"), of which Curver Luxembourg, SARL ("Curver") is the assignee, is entitled "Pattern for a Chair." The '946 Patent claims an "ornamental design for a pattern for a chair."² The description of the design patent's figures also recites a "pattern for a chair."³ The figures themselves, however, do not include any illustrations of a chair. Instead, the figures illustrate an overlapping "Y" design pattern in isolation, unapplied to a chair or any other article of manufacture.⁴

The absence of any chair illustrations in the figures is explained, at least in part, by the fact that Curver had initially applied for a patent directed to a pattern for "furniture" generally, not a chair.⁵ The original claim recited a "design for a furniture part," the figures were described as illustrating a "design for a FURNITURE PART," and the original title was "FURNITURE (PART OF-)."⁶ The figures themselves contained no illustrations of any furniture or furniture parts.⁷

During prosecution, the patent examiner objected to the original title on the grounds that it failed to designate a "particular article" for the claimed design as required by 37 C.F.R. § 1.153, and recom-mended that Curver amend the title to read "Pattern for a Chair."⁸ In response to the patent examiner's recommendation, Curver changed the title to "Pattern for a Chair" and, for purposes of consistency, replaced the former references to "furniture part" with "pattern for a chair" in the claim and figure descriptions.⁹ Curver did not, however, amend the figures to illustrate a chair.¹⁰ These amendments were accepted by the patent examiner, and Curver's patent application was subsequently granted.

THE DISTRICT COURT OPINION

Curver filed suit against Home Expressions Inc. ("Home Expressions") in the United States District Court for the District of New Jersey, alleging that Home Expressions had infringed the '946 Patent by making and selling baskets that featured Curver's claimed design pattern.¹¹ Home Expressions moved to dismiss the complaint under Federal Rule of Civil Procedure 12(b)(6) for failing to state a plausible infringement claim. Home Expressions argued that the baskets at issue did not infringe because the scope of the '946 Patent was limited to the claimed design pattern as applied to chairs, not as applied to baskets or any other article of manufacture.¹²

Siding with Home Expressions, the district court determined that Curver's complaint failed to state a plausible claim of infringement. Reaching a determination on this issue required a two-part analysis by the district court. First, the district court construed the scope of the '946 Patent. Second, the district court compared the accused products, Home Expression's baskets, to the claimed design as construed to decide whether the baskets infringed.¹³ The infringement question required the district court to apply the "ordinary observer test," which provides that an accused product infringes a design patent if the resemblance between the two designs is so great that an ordinary observer would purchase one under the mistaken belief that it was the other.¹⁴

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In the first part of its analysis, the district court determined that the '946 Patent was limited in scope to the claimed design pattern as applied to a chair. This determination was novel because courts have...