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September 18, 2019
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by David Marcus

On September 12, 2019, the Federal Circuit issued a ruling upholding non-infringement in a design patent case that demonstrates the importance of drafting an application to be commensurate with both the desired and the appropriate scope of protection for the design. However, this case also went further, making a dramatic point as to the necessity of viewing an Examiner’s amendment for easy allowance of a patent application with a jaundiced eye. In Curver Luxembourg, SARL v. Home Expressions Inc., the Court held that a design patent entitled “Pattern for a Chair” (US D677,946) was not infringed by a basket incorporating essentially the same surface design. This case raises three important issues for design patents, which are an important mechanism for protecting product designs in a competitive marketplace.

First, there is often an impression that design patents, which expressly protect the ornamental aspects of an article of manufacture, have an expansive scope of protection. It is certainly true that properly drafted and prosecuted design patents may have a broad scope of protection. However, even though the metes and bounds of a design patent are largely defined by its figures, rather than the minimalist written specification accompanying them, the Court emphasized that the few words that accompany the drawings do matter. That is true even for the title and the object of the claim (which are required to be identical to one another). Even though the drawings of the design patent (select views reproduced above) do not show a chair in any way, the Court held that because the claim of the design patent was for “[t]he ornamental design for a pattern for a chair, as shown and described,” the scope of protection for the patented design was limited to a chair. Protection did not extend to a basket as manufactured and sold by the defendant even though it had the same ornamental design. Thus, it is critical that the title and claim of a design patent not be drafted more narrowly than the desired scope of protection for the design.

Second, the Court cast doubt upon design patents that are drafted too broadly, in particular, with respect to design patents for a surface ornamentation in the abstract. The Court stated that “our law has never sanctioned granting a design patent for a surface ornamentation in the abstract such that the patent’s scope encompasses every possible article of manufacture to which the surface ornamentation is applied.” Thus, while it is important that the design not be claimed too narrowly (limited to a chair), it is equally important that the design not be claimed too broadly (expanded to an ephemeral object surface). The Court’s decision leaves significant gray area, such as how to handle camouflage patterns and the like, which may have to be parsed by future court decisions before the proper framework is fully established. In an instance where a particular camouflage pattern is at issue, claiming a fabric as the article of manufacture may be sufficiently narrow to satisfy the article of manufacture requirement, while still being broadly protectable independent of what object that fabric is later turned into (i.e., a skirt and pants each being made from the fabric may still be found to infringe such a patent). Until a full framework is established by the courts, it would be best to avoid the issue where possible. Rather than conceiving of the three-dimensional pattern for which protection was sought too narrowly as in a chair pattern, or too broadly as in a surface pattern, care should be taken to tailor the article of manufacture appropriately. In the present case, rather than describing the three-dimensional skin as a pattern for furniture, as originally claimed, or a pattern for a chair as proposed by the Examiner and accepted by the Applicant, the Applicant may have been better served by creative use of a thesaurus, which may have yielded a claim along the lines of “the ornamental design for a [lattice or grating or latticework], as shown and described.” A design patent for a lattice may have satisfied the requirements for patentability while still being broad enough to encompass both a chair covering and a basket wall formed from the lattice, particularly where, as shown in the reproduced figures, the lattice was a three-dimensional construct rather than being merely a printed surface pattern.

Third, there can be a great deal of pressure applied when an Examiner rejects a claim, but offers that with the Examiner’s preferred amendment, the desired patent may be easily obtained. There is even more pressure, perhaps, where the Examiner actually allows the claim, which was the case here, but says the patent cannot actually be had without the Examiner’s amendment. The pressure is on the patent attorney, who wishes to bring the client good news, and on the client, who wishes to obtain patent protection as quickly and inexpensively as possible. However, the carrot dangled by the Examiner may be rotten, as was the case here, where the proffered amendment overly narrowed the scope of protection. Indeed, given that there was no support of “chair” in the Application as filed, the Examiner’s suggested claim amendment may have actually resulted in an invalid patent (though this was not raised in the present case). It is therefore imperative that an Examiner’s proposal be carefully considered, with an eye not just toward how it will affect later infringement proceedings, but also whether it might result in a fatally flawed patent.

© 2019 McNees Wallace & Nurick LLC
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