In Curver Luxembourg, SARL v. Home Expressions Inc. (No. 2018-2214, Fed. Cir. Sept. 12, 2019), the Federal Circuit held that the ornamental design disclosed in U.S. Patent No. D677,946 was limited to chairs, which was the term used in the claims and the title of the patent.
Originally, Curver filed an application for a patent with the title “Furniture (Part Of).” The original claim recited “a rattan design for a furniture part.” The patent examiner rejected the application stating the title and claims were too vague, and that under MPEP §1503(I) the title must designate a “particular article” for the design. In response, Curver amended the application by changing the title to “Pattern for a Chair” and amended the claims by reciting “pattern for a chair.”
Curver later filed a complaint against Home Expressions alleging that the baskets Home Expressions was selling contained a similar rattan design to that shown in their patent and as such infringed the patent. The district court applied the two-step infringement analysis for design patents and determined that the scope of Curver’s patent was limited to just chairs because that was the article of manufacture listed in the patent. In short, Curver listed a chair on the patent, the allegedly infringing product was a basket and the district court dismissed the complaint for failing to set forth a plausible claim of infringement. On September 12, the Federal Circuit affirmed the district court, holding that the ornamental design disclosed in U.S. Patent No. D677,946 was limited to chairs.
How to broadly protect your design with surface ornamentations
It is important to note the drawings from Curver’s original patent only showed the rattan design as a panel – there were no drawings of a chair – see the drawing above. As surface finish alone is not considered to be patentable subject matter under 35 U.S.C. §171, the court could have found the patent invalid. The fact that it did not provides guidance for how you could attempt to show only a generic surface ornamentation in the drawings of a patent application but include a broad or generic term for an article of manufacture to avoid having the patent application rejected by the USPTO.
In applying the foregoing, you could potentially show a surface ornamentation of an article of manufacture (similar to the panel Curver used in their patent application) but claim a generic article of manufacture. This may help reduce overall costs in seeking design protection for multiple products that can be generically described that each contains the same surface ornamentation.