In Curver Luxembourg SARL v. Home Expressions Inc., the Federal Circuit held – for the first time – that a design patent’s claim language may limit the patent scope even when the article identified in the claim wording is not shown in the figures. Curver sued Home Expressions for infringement of a design patent entitled “Pattern for a Chair” featuring figures with an overlapping Y-shaped pattern. Home Expressions made baskets that Curver alleged used the patented Y-shaped design. Home Expressions moved to dismiss, arguing that the baskets did not infringe because the design patent was limited to a chair. Slip op. at 2. The design patent’s claim was for an “ornamental design for a pattern for a chair,” though the figures did not show any particular object or piece of furniture. The district court held that the claim language limited the scope of the claimed invention to a chair, which meant that Home Expressions did not infringe. In addition, the court applied the “ordinary observer” test, under which an accused product infringes the patent if an ordinary observer would be misled into purchasing the accused product over the one covered by the patent. The court found that “an ordinary observer would not purchase Home Expressions’s basket with the ornamental ‘Y’ design believing that the purchase was for an ornamental ‘Y’ design applied to a chair, as protected by the ’946 patent.” Slip op. at 5.

On appeal, Curver argued that the district court improperly limited the patent scope based on the claim’s reference to a “pattern for a chair.” Curver argued that the figures do not depict the Y-shaped pattern applied to a chair. The Federal Circuit noted that the word “chair” first appeared during prosecution when the examiner objected to the original title “FURNITURE (PART OF-).” The examiner required Curver to tie the title of the patent to a “particular article.” In accordance with the examiner’s suggestions, Curver amended the title to “Pattern for a Chair” and replaced “furniture part” with “pattern for a chair” in the claim and descriptions of the figures to secure allowance. Slip op. at 4, 11. Citing Patent Office practice and court precedent, the Federal Circuit stated that the Patent Office does not grant design patents for disembodied designs. Although the scope of a design patent is traditionally limited to what is shown in the figures, where the figures fail to depict any “particular article,” the scope of the patent may be limited by the claim. The court specifically pointed to a Patent Office regulation 37 C.F.R. § 1.153 which “permits claim language, not just illustration alone, to identify [a particular] article,” such as a chair. Slip op. at 9. The Federal Circuit concluded that since Curver amended the patent application to include “pattern for a chair” as required by 37 C.F.R. § 1.153 to obtain the patent, the scope of the patent is limited by the amendments.

What This Case Means for You

A design patent applicant must identify an article of manufacture in the application, and the article so identified may limit the scope of the resulting patent. This is true even if the accompanying figures do not depict any particular article of manufacture. For broader protection, it makes sense to include drawings showing the design alone and as applied to the articles of potential interest. In addition, the applicant may try to use broad wording (e.g., an “article of manufacture”) and examples of the articles of potential interest to try to obtain broader patent rights. The Patent Office may require narrowing, but a divisional or continuation application may make sense for broader protection.