“Two recent Federal Circuit decisions emphasize the importance of the words in the title and claims of a design patent when searching and applying for a patent.”
Is the scope of a design patent determined solely by the numbers? Two recent Federal Circuit decisions point out that words describing the article of manufacture in the title and claims can indeed limit the scope and enforceability of a design patent. In particular, the title and claims of the design patent contain important information that provides a more accurate and predictable view of what is and is not protected by the design patent. Thus, the title and claims of a design patent are particularly relevant to the scope of the patent, both for obtaining and for enforcement.
Under 35 USC § 171(a), design patent protection is permitted to “[w]anyone who invents a new, original and ornamental design for a manufactured article. Thus, to be eligible for a design patent, the design must relate to a manufactured item. A design that is isolated from a particular article of manufacture, such as a symbol by itself, is not eligible for patent protection because it relates to unregulated subject matter. MPEP § 1504.01. “Design is inseparable from the article to which it is applied and cannot exist alone as a pattern of surface ornamentation.” MPEP § 1502.
The title of the design patent should identify the particular item. MPEP § 1503.01(I). “The title of the design identifies the article in which the design is embodied by the name generally known and used by the public and can help define the scope of the claim. Identifier. In addition, “the title and the claim must match”. ID. A design patent consists of a single claim, and if the description contains an appropriate description of the design, the claim should read: “The ornamental design for (the article which embodies the design or to which it is applied) as illustrated and describe.” MPEP § 1503.01(II).
Scope of a design patent in curve
On September 12, 2019, the Federal Circuit ruled that the scope of a design patent can be determined by its title when the numerals do not represent a manufactured article. Curver Luxembourg, SARL, v Home Expressions, Inc.., 938 F.3d 1334 (Fed. Cir. 2019). In curvethe design patent held by Curver was titled “Model for a Chair”, but the figures only illustrated a geometric pattern of an overlapping “Y” pattern. ID. at 1337; to see Figure 1 below. When Curver sued Home Expressions for infringement of its design patent for selling storage baskets using the same overlapping “Y” design, Home Expressions decided to dismiss the case and the New Jersey District Court decided. allowed the request. Identifier. at 1337-38. In doing so, the district court interpreted the scope of Curver’s patent as being limited to an ornamental design for a chair. ID. at 1338.
Figure 1. Superimposed “Y” design of Figure 1 of the design patent.
On appeal, Curver made several arguments in support of a broader scope of protection beyond the “Y” pattern on a chair. First, Curver argued that the scope of the design patent was based on the representation in the drawings, not the title or accompanying text. ID. at 1339. In response, the Federal Circuit stated that “claim language may limit the scope of a design patent where the language of the claim provides the only example of an article of manufacture that does not appear anywhere in the figures”. ID. at 1:40 p.m.
Second, Curver argued that the district court limited the claim by erroneously applying estoppel to the prosecution history. Identifier. at 1341. As filed, the design application was originally titled “Furniture (part of)”. Identifier. The Examiner, however, found “part of” a piece of furniture too vague under 37 CFR § 1.153 and suggested changing the title to “Model for a Chair”, and Curver amended the title, claim, and specification accordingly. Identifier. In response, the Federal Circuit held that the District Court correctly applied the prosecution history estoppel since the title change “Model for a Chair” was made pursuant to the requirement necessary to obtain the design patent. . ID. at 1341-42.
Third, Curver argued that the court misapplied the infringement test by relying on In re Glavas230 F.2d 447, 450 (CCPA 1956), which according to Curver suggested that a surface ornamentation for a manufactured article can be anticipated by a prior art article which shares the same surface ornamentation even when the prior art article is not analogous to the article presented in the design patent. ID. at 1342. In response, the Federal Circuit ruled that GlavasThe saying of did not state that a design patent could be “anticipated by an unrelated article of very different physical appearance and form”. ID. at 1342-43. Moreover, even if Glavas‘s notice allowed anticipation by articles of manufacture that appeared markedly different, the court held that the standard for determining design patent infringement is the “ordinary observer” test in Egyptian Goddess, Inc. v. Swisa, Inc.., 543 F.3d 665 (Fed. Cir. 2008). Under the “ordinary observer” test, the court held that no “ordinary observer” would be deceived into purchasing Home Expression’s storage baskets into believing they were Curver’s patterned chairs. ID. at 1343. As such, the court dismissed Curver’s appeal to Glavas and upheld the grant of the motion to dismiss.
Prior art applicable in In re SurgiSil
To post-curvethe Federal Circuit ruled that the applicable prior art must be based on the “article of manufacture” to which the claim applies. In re SurgiSil, LLP., 14 F. 4th 1380 (Fed. Cir. 2021).
SurgiSil’s design application claimed a design for a lip implant, which was predictably rejected by a prior art reference disclosing a tool of the art. Identifier. at 1381; to see Figures 2 and 3 below. The Patents and Trials Appeals Board (PTAB) upheld the rejection, finding the differences in form between the claimed design and the art tool to be minor. Additionally, the PTAB ignored SurgiSil’s argument that the technical tool cannot anticipate because it discloses an article of manufacture “significantly different” from a lip implant and deemed it “appropriate to ignore the identification of the article of manufacture in the language of the claim”. ID. SurgiSil appealed the PTAB’s decision, and the Federal Circuit overruled, finding that the anticipation finding was based on a misinterpretation of the claim. The court found that the artistic tool was not eligible for a citation against SurgiSil’s lip implant because SurgiSil’s claim was limited to the item itself, namely a lip implant, and ” does not cover other articles of manufacture”. Identifier. at 1382.
These two recent Federal Circuit decisions highlight the importance of the words in the title and claim of a design patent when searching and applying for a patent. When preparing a design application, an applicant may wish to carefully consider how the design patent would be enforced, as the title may unintentionally limit the scope of protection. Although the title should be descriptive of the item of manufacture, it should not be too broad. To see MPEP §1503.01(I). For example, as was the case in curve, where an examiner suggests a title change during prosecution, the plaintiff should carefully weigh the implications of such a change on the scope of the granted design patent. Instead of accepting the reviewer’s suggestion, perhaps the title could have been changed to “Furniture Design”, which is more in line with the original title but may not have covered the offending product, or ” Textile fabric”, which may be large enough to capture the offending product. Once the design patent has been issued, if the title is deemed too narrow, an application for an expanded reissue may be considered for filing within two years of the date of issue. To see MPEP §1457.
Additionally, when considering the admissibility or validity of a design patent, what constitutes prior art to invalidate the design patent must be carefully considered. Since the applicable prior art is based on the article of manufacture to which the claim applies, the prior art in a field analogous to that identified in the claim must be identified. As such, when preparing a design patent application, the words used to recite the claimed invention must be carefully selected, as they will affect both the prior art cited by the examiner when of the lawsuit and affirmed in any application of the design patent. For example, in SurgiSilhad the application simply claimed a “cylindrical tool” instead of a “lip implant”, the design patent might not have issued.
As such, given the two recent Federal Circuit decisions, the title and claim words should be carefully considered when searching for a design patent or its application.
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