Narrowing the article of manufacture claimed in a design patent can restrict claim scope.
The Federal Circuit affirmed dismissal of design patent infringement claims under an estoppel theory triggered by amendments made to meet patentability requirements in Curver Luxembourg, SARL v. Home Expressions Inc., No. 2018-2214.
In the District of New Jersey, the defendant argued that prosecution history estoppel barred the infringement claim because the applicant amended its claim from "design for a furniture part" to "design for a pattern for a chair" in order to secure the patent. The district court held that this amendment limited claim scope to chair designs, which cannot, as a matter of law, encompass defendant's accused basket designs.
On an issue 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." Slip op. at 8. The court surveyed case precedent and United States Patent and Trademark Office practices requiring design patents to cover an article of manufacture or a portion thereof, not abstract designs.
The Federal Circuit agreed that prosecution history estoppel limited the design patent's scope. Plaintiff made the amendment for reasons "necessary to secure the patent," and as a result, "the scope of the  patent is limited by those amendments," even if the drawings remained unchanged. Id. at 11-12.
The court likewise rejected plaintiff's reliance on dictum suggesting a claimed design can be anticipated, even if the prior art design is applied to another article of manufacture. Id. at 12-13. Applying Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (en banc), the court held that "no 'ordinary observer' could be deceived into purchasing [defendant's] baskets believing they were the same as the patterned chairs claimed in [plaintiff's] patent." Id. at 14.
Curver provides key guidance for design patent prosecution and enforcement strategy. Applicants should be strategic about which articles of manufacture they select and should be wary that prosecution history estoppel can bar attempts to recapture subject matter surrendered in order to secure the patent.