Claim Language Can Limit the Scope of a Design Patent
November 13, 2019
By: Darrell L. Wong
In the recent decision Curver Luxembourg, SARL v. Home Expressions, Inc. (Fed. Cir. 2019), the U.S. Court of Appeals for the Federal Circuit held that claim language within a design patent can limit the scope of the design shown in the patent’s accompanying drawings. The scope of a design patent for a rattan design was held to be limited to only such a design on chairs because the claim of the patent specified a “pattern for a chair,” even though the patent drawings only show a pattern and do not show a chair.
In light of the Federal Circuit’s decision, possible approaches discussed below for claiming a pattern in a design patent without being limited to a single product may include:
- Drawings showing sheet material with a pattern, and claiming a “sheet material” as the article of manufacture, where the sheet material can be used to make different products.
- Drawings showing phantom outlines of various products as unclaimed subject matter while showing a section of a pattern in solid lines for claimed subject matter positioned within the phantom outlines, and using a broad term as the article of manufacture in the claim to cover the different products shown in phantom outlines.
In this case, Curver is the owner of U.S. Design Patent No. US D677,946 entitled “Pattern For A Chair”, issued March 19, 2013, which claims the “ornamental design for a pattern for a chair, as shown and described.” The description of the figures consistently recites a “pattern for a chair.” However, the drawings of the ‘946 Patent merely show a repeating weave pattern having an overlapping upside-down “Y” design, and do not show a chair in any of the drawings.
Home Expressions makes and sells baskets that incorporate an overlapping “Y” design similar to the pattern shown in the ‘946 Patent. Curver filed a patent infringement complaint in district court against Home Expressions, alleging that its baskets incorporated Curver’s claimed design pattern. Home Expressions then filed a motion to dismiss the complaint, arguing that the baskets’ design could not have infringed because the ‘946 Patent was limited to chairs only. The district court granted the motion to dismiss. The Federal Circuit affirmed the motion to dismiss, saying Curver failed to state a plausible claim of infringement and holding 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.” As a result, although the ‘946 Patent does not show a chair in the drawings, by claiming a “pattern for a chair,” the ‘946 Patent does not read on the accused baskets.
When the application for the ‘946 Patent was initially filed in the U.S., Patent and Trademark Office, it appears that it was intended to claim a pattern that could be on multiple products in that the claim as filed initially recited “a rattan design for a furniture part.” However, during prosecution, the examiner objected to this language, stating that the “claim in a design patent must be directed to the design for an article”, and that a “part of” or “part” is not an article of manufacture and is too vague. Therefore, the examiner suggested the title to be amended to read: “Pattern for a Chair.””
Curver then amended the title, description, and claim to recite a “pattern for a chair” in the ‘946 Patent, which as discussed above, became limited to chairs.
Curver later used another approach to claim a pattern that might be used on multiple products in design patent No. US D769,002, issued October 18, 2016, and design patent No. US D838,998, issued January 29, 2019. Each patent has a broad title “Sheet Material”, with the drawings showing only a pattern, and the claim broadly reciting an “ornamental design for a sheet material.” However, this approach will not cover products not considered to be sheet material.
Another approach would be to include drawings with phantom outlines, such as in separate perspective views of a chair and a basket, with sections of the pattern shown in solid lines within the phantom outlines. If other articles use the pattern, phantom outlines of those articles could also be included. Phantom outlines designate unclaimed subject matter, and solid lines of the pattern designate claimed subject matter. The claim could recite a broad term for the article of manufacture, for example, the “ornamental design for a home furnishing item,” in order to broadly cover both chairs and baskets. By showing the outlines of the home furnishing items in phantom, design patent coverage should not be limited to the shape of the item, but rather to the pattern on the item. The phantom outlines also provide the flexibility to be later changed during prosecution into solid lines to become claimed subject matter, or alternatively, in a later filed continuation application.
