SurgiSil: Lip Implant Case Shows Looks Can Be Deceiving

In October 2021, the Federal Circuit issued a two-and-half page decision in In re: SurgiSil, 14 F.4th 1380 (2021). Despite clocking in at just over 600 words, this small decision could have wide-ranging repercussions in the design patent jurisprudence, in three potential ways.

By way of background, Surgisil’s design application claimed a design for a lip implant.  The examiner rejected the sole claim as anticipated by a catalogue disclosing a similar design, but the prior art design was for a completely different underlying article of manufacture, an art tool.

The Patent and Trial Appeal Board (PTAB) affirmed the rejection, finding the differences in shape between the claimed design and the stump to be minor. It rejected Surgisil’s argument that the catalogue could not anticipate the claim because it disclosed a “very different” article of manufacture than a lip implant and, in the PTAB’s view, “it is appropriate to ignore the identification of the article of manufacture in the claim language”.

It is worth noting that the PTAB’s decision was consistent with its longstanding practice that “whether a reference is analogous art is irrelevant to whether the reference anticipates”.

On appeal, the Federal Circuit reversed the board, holding that “[a] design claim is limited to the article of manufacture identified in the claim[,]” in this case, limited to lip implants and the claim does not cover other articles of manufacture.

To support this proposition, the Federal Circuit cited its 2019 decision in Curver Luxembourg v Home Expressions, 938 F.3d 1334 (2019), describing that decision as holding that “the claim at issue was limited to a particular article of manufacture identified in the claim”.

This decision is important for at least three reasons.

First, this decision clarifies the holding in Curver.  In Curver, the Federal Circuit affirmed a dismissal based on a motion to dismiss, where the claimed design was directed to a “pattern for a chair” and the accused product was a basket using almost the same pattern. 

Typically courts look to the drawings of the patent to understand the underlying article of manufacture, but in this case, the drawings in Curver’s patent did not show an article of manufacture, so the court looked to the claim language.

But during prosecution at the examiner’s request, the applicant had amended the title (and claim) from the broader “Furniture (part of)” to “pattern for a chair”, thus the Federal Circuit held that this amendment gave rise to prosecution history estoppel.  When the Curver decision was issued, it was not clear which reasoning was the basis for the court’s holding. Now we have that answer.

Second, this decision has implications for prosecution. First, it means that the United States Patent and Trademark Office (USPTO) will need to take a hard look at its practice that anticipatory art in the design context need not be analogous. In addition to any changes that the USPTO may decide to make, it is important for applicants to carefully select their title (and claim, which by regulation must match each other) to ensure the applicant is capturing the desired article of manufacture. 

For example, if one is applying for a handle design may be more desirable to describe the underlying article of manufacture as an “appliance” (ie, ornamental design for a handle for an appliance), rather than a refrigerator or stove, because we know from Curver than the broader article of manufacture may be helpful at the time of enforcement. But this decision must be balanced with the fact that selecting “appliance” might open up a larger universe of potentially anticipating prior art.

Third, the SurgiSil decision may have an impact on the somewhat open issue of what prior art is relevant to the design patent infringement test. Design patent infringement is determined from “the eye of an ordinary observer, giving such attention as a purchaser usually gives (Gorham v White, 81 US 511, 528) [1871]).

But in 2008, the Federal Circuit clarified that part of this determination includes a consideration of the state of the prior designs. Infringement occurs when that ordinary observer deems that the accused design and claimed designs are substantially the same in light of the prior art (Egyptian Goddess v Swisa, 543 F.3d 665, 677 [Fed Cir 2008]).

Egyptian Goddess repeatedly extolled the virtues of making this comparison in light of the “prior art” (eg, “importance of similar prior art designs”, “in light of similar objects in the prior art”, “the background prior art, provides such a frame of reference”) but the decision never actually defines the bounds of the “prior art.”

The decision in SurgiSil raises the interesting question of whether the type of “prior art” that is permissible for the infringement test is the same type of “prior art” that can be considered for the anticipation question.

In other words, if the prior art for anticipation is limited to art disclosing a similar article of manufacture to the claimed design, then does that same limitation apply to “prior art” used for the question of infringement? 

In the case of SurgiSil, if the prior art disclosing an art tool is not an appropriate anticipation reference for a claimed design directed to a lip implant, then is the same true that during the infringement question, the prior art should also be limited to other lip implants? Or other medical devices? It will be interesting to see if the SurgiSil case has such far-reaching implications.

In sum, the somewhat short SurgiSil decision is likely to have implications for design patent infringement, as well as prosecution, meaning that while it was a rather small pebble, its ripples may travel for some time.