Title Amendment: Design Patent Limitation?

Federal Decision:  Curver Luxembourg, SARL, v. Home Expressions, Inc., 2018-2214 (Fed. Cir. Sept. 12, 2019)

Background:  Curver originally applied for a design patent directed to an overlapping “Y”-shaped pattern for “Furniture (part of-).”  The figures of the application illustrated the pattern, but did not depict any furniture.  The examiner allowed the claim but objected to the title as “too vague” and thus failing to designate a particular article for the design, under MPEP § 1503(I).  The examiner suggested an amended title, “Pattern for a Chair” and Curver adopted this title (despite the fact that there was no chair shown in any of the figures).  In addition, under 37 C.F.R. § 1.153(a), the examiner requested, and Curver agreed, to amend the specification and claim to match the new title.  

Curver later sued Home Expressions accusing its baskets of infringing Curver’s design patent.  The district court construed the scope of the design patent as limited to the design pattern illustrated in the patent, i.e., to a chair and dismissed the case; here, the ordinary observer would not purchase the Home Expressions’ basket with the “Y” design believing that the purchase was for a “Y” design applied to a chair.

Issue:  May claim language specifying an article of manufacture limit the scope of a design patent, even when that article of manufacture is not illustrated the figures?

Outcome:  The Federal Circuit held that the 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.  On an alternative ground, the Federal Circuit held that the scope of the design patent in this case was limited by the applicant’s title and claim amendments made during prosecution to secure the patent.

Prosecution Takeaway:  There are two important takeaways from this case.  First, applicants should be careful when agreeing to title amendments (and therefore the claim amendments) suggested by the examiner, as those amendments could trigger prosecution history estoppel, limiting the scope of the patent when asserted.  So, keep in mind that an overly broad title may prompt an examiner rejection leading to prosecution history estoppel.  Second, when drafting a design application, it is important to consider the underlying article or articles of manufacture that applicant may wish to apply the claimed design to and ensure that your application reflects those articles.  A careful balance is necessary and, in some circumstances, the applicant may need to file more than one application to receive the desired scope of protection.