`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`CURVER LUXEMBOURG, SARL,
`Plaintiff-Appellant
`
`v.
`
`HOME EXPRESSIONS INC.,
`Defendant-Appellee
`______________________
`
`2018-2214
`______________________
`
`Appeal from the United States District Court for the
`District of New Jersey in No. 2:17-cv-04079-KM-JBC,
`Judge Kevin McNulty.
`______________________
`
`Decided: September 12, 2019
`______________________
`
`MICHAEL ANTHONY NICODEMA, Greenberg Traurig,
`LLP, Florham Park, NJ, argued for plaintiff-appellant.
`Also represented by JASON HARRIS KISLIN, BARRY
`SCHINDLER.
`
` STEVEN M. AUVIL, Squire Patton Boggs (US) LLP,
`Cleveland, OH, argued for defendant-appellee. Also repre-
`sented by JEREMY WILLIAM DUTRA, Washington, DC.
`
` ERIK STALLMAN, Samuelson Law, Technology & Public
`Policy Clinic, University of California, Berkeley School of
`Law, Berkeley, CA, for amicus curiae Open Source
`
`

`

`2
`
`CURVER LUXEMBOURG, SARL v. HOME EXPRESSIONS INC.
`
`Hardware Association. Also represented by JENNIFER M.
`URBAN.
` ______________________
`
`Before CHEN, HUGHES, and STOLL, Circuit Judges.
`CHEN, Circuit Judge
`Plaintiff-appellant Curver Luxembourg, SARL
`(Curver)
`is
`the assignee of U.S. Design Patent
`No. D677,946 (’946 patent), entitled “Pattern for a Chair”
`and claiming an “ornamental design for a pattern for a
`chair.” The design patent’s figures, however, merely illus-
`trate the design pattern disembodied from any article of
`manufacture. Curver sued defendant-appellee Home Ex-
`pressions Inc. (Home Expressions) in the United States
`District Court for the District of New Jersey, alleging that
`Home Expressions made and sold baskets that incorpo-
`rated Curver’s claimed design pattern and thus infringed
`the ’946 patent. Home Expressions moved to dismiss under
`Federal Rule of Civil Procedure 12(b)(6), arguing that its
`accused baskets could not infringe because the asserted de-
`sign patent was limited to chairs only. The district court
`agreed with Home Expressions and granted the motion.
`The question on appeal is whether the district court cor-
`rectly construed the scope of the design patent as limited
`to the illustrated pattern applied to a chair, or whether the
`design patent covers any article, chair or not, with the sur-
`face ornamentation applied to it. Because we agree with
`the district court that the claim language “ornamental de-
`sign for a pattern for a chair” limits the scope of the claimed
`design in this case, we affirm.
`
`

`

`CURVER LUXEMBOURG, SARL v. HOME EXPRESSIONS INC.
`
`3
`
`BACKGROUND
`The ’946 patent was filed in 2011 and claims an over-
`lapping “Y” design, as illustrated in Figure 1 below. J.A.
`24. The title, description of figures, and claim of the ’946
`patent all consistently recite a “pattern for a chair.” Id.
`But none of the figures illustrate a design being applied to
`a chair.
`
`The term “chair” first appeared through amendment
`during prosecution. Curver originally applied for a patent
`directed to a pattern for “furniture,” not a chair specifically.
`The original title was “FURNITURE (PART OF-).” J.A. 66.
`The original claim recited a “design for a furniture part.”
`J.A. 67. And each of the figures was described as illustrat-
`ing a “design for a FURNITURE PART.” J.A. 66–67. None
`of the figures illustrated a chair, any furniture, or any fur-
`niture part.
`The Patent Office allowed the claim but objected to the
`title, among other things. The examiner stated that under
`37 C.F.R. § 1.153 and the Patent Office’s Manual of Patent
`Examining Procedure (MPEP) § 1503(I), the title must des-
`ignate a “particular article” for the design. Under these
`provisions, the examiner found that the title’s use of “Part
`of” and the specification’s use of “Part” were “too vague” to
`
`

`

`4
`
`CURVER LUXEMBOURG, SARL v. HOME EXPRESSIONS INC.
`
`constitute an article of manufacture. J.A. 61. To remedy
`this problem, the examiner suggested that the title be
`amended to read “Pattern for a Chair,” and that “[f]or con-
`sistency,” the “title [] be amended throughout the applica-
`tion.” Id. (noting that “[t]he claim in a design patent must
`be directed to the design for an article” under 35 U.S.C.
`§ 171). Curver adopted the examiner’s suggestion, replac-
`ing the original title with “Pattern for a Chair” and replac-
`ing “furniture part” with “pattern for a chair” in the claim
`and figure descriptions to be consistent with the amend-
`ment to the title. J.A. 66–67. Referring to these amend-
`ments, Curver acknowledged that “the title and the
`specification have been amended as required in the Office
`Action.” J.A. 69. Curver did not amend the figures to
`newly illustrate a chair. The examiner accepted these
`amendments and allowed the application.
`DISTRICT COURT PROCEEDINGS
` Home Expressions makes and sells baskets that incor-
`porate an overlapping “Y” design similar to the pattern dis-
`closed in the ’946 patent, as shown below. J.A. 5.
`
`

`

`CURVER LUXEMBOURG, SARL v. HOME EXPRESSIONS INC.
`
`5
`
`Curver filed a complaint against Home Expressions in
`district court accusing these basket products of infringing
`the ’946 patent. Home Expressions filed a motion to dis-
`miss Curver’s complaint under Rule 12(b)(6) for failing to
`set forth a plausible claim of infringement. The district
`court granted the motion.
`To determine whether the complaint stated a plausible
`infringement claim, the district court conducted a two-step
`analysis. First, it construed the scope of the design patent.
`Second, it compared the accused products to the claimed
`design as construed to determine whether the products in-
`fringed. Under the “ordinary observer” test, an accused
`product infringes a design patent if “in the eye of an ordi-
`nary observer . . . two designs are substantially the same,”
`such that “the resemblance is such as to deceive such an
`observer, inducing him to purchase one supposing it to be
`the other . . . .” Gorham Co. v. White, 81 U.S. 511, 528
`(1871) (articulating the “ordinary observer” test for design
`patent infringement); Egyptian Goddess, Inc. v. Swisa,
`Inc., 543 F.3d 665, 672 (Fed. Cir. 2008) (en banc) (making
`the “ordinary observer” test in Gorham the sole test for de-
`termining design patent infringement). At the first step,
`the district court construed the scope of the ’946 patent to
`be limited to the design pattern illustrated in the patent
`figures as applied to a chair, explaining that “[t]he scope of
`a design patent is limited to the ‘article of manufacture’—
`i.e., the product—listed in the patent.” J.A. 16. At the sec-
`ond step, the district court found that an ordinary observer
`would not purchase Home Expressions’s basket with the or-
`namental “Y” design believing that the purchase was for an
`ornamental “Y” design applied to a chair, as protected by
`the ’946 patent. Accordingly, the district court dismissed
`the complaint pursuant to Rule 12(b)(6) for failing to set
`forth a plausible claim of infringement.
`
`Curver timely appealed to this court. We have juris-
`diction pursuant to 28 U.S.C. § 1295(a)(4)(A).
`
`

`

`6
`
`CURVER LUXEMBOURG, SARL v. HOME EXPRESSIONS INC.
`
`STANDARD OF REVIEW
`We review a decision to grant a motion to dismiss un-
`der regional circuit law. C&F Packing Co., v. IBP, Inc., 224
`F.3d 1296, 1306 (Fed. Cir. 2000). Under Third Circuit law,
`we review a district court’s grant of a motion to dismiss un-
`der Rule 12(b)(6) de novo. Sands v. McCormick, 502 F.3d
`263, 267 (3d Cir. 2007).
`DISCUSSION
`On appeal, Curver argues that in determining that the
`scope of its design patent was limited to a chair, the district
`court improperly relied on claim language reciting a “pat-
`tern for a chair,” rather than focusing on the figures which
`are devoid of any chair illustrations. Given that the figures
`fail to illustrate any particular article of manufacture,1
`
`
`1
`In its Reply, Curver argues that the figures depict
`a “three-dimensional panel structure that includes the or-
`namental Y pattern,” and that under Samsung Electronics
`Co. v. Apple Inc., 137 S. Ct. 429, 435 (2016), this “panel”
`provides the requisite “article of manufacture” because it is
`a “component” of a product. Appellant’s Reply Br. at 6–7.
`This is the first time on appeal Curver attempts to identify
`any article of manufacture in the drawings, and thus we
`find this argument waived. In any event, we note that we
`are unpersuaded that Curver’s purported panel constitutes
`the type of “component” contemplated by Samsung as be-
`ing an “article of manufacture.” In Samsung, the compo-
`nents covered by Apple’s design patents were parts of a
`concrete “multicomponent” smartphone product, not a sur-
`face ornamentation disembodied from any identifiable
`product, as here. 137 S. Ct. at 433–35. Taking Curver’s
`argument to its logical extreme, any applicant could poten-
`tially obtain a patent on a two-dimensional graphic so long
`as it is illustrated with some thickness such that it could
`
`

`

`CURVER LUXEMBOURG, SARL v. HOME EXPRESSIONS INC.
`
`7
`
`Curver’s argument effectively collapses to a request for a
`patent on a surface ornamentation design per se. As
`Curver itself acknowledges, 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 orna-
`mentation is applied. Oral Arg. at 10:41–11:04. We decline
`to construe the scope of a design patent so broadly here
`merely because the referenced article of manufacture ap-
`pears in the claim language, rather than the figures.
`This
`is a case of
`first
`impression.
` Under
`35 U.S.C. § 171, federal statute permits patent protection
`for a “new, original and ornamental design for an article of
`manufacture.” To define the scope of a design patent, we
`have traditionally focused on the figures illustrated in the
`patent. See, e.g., Pac. Coast Marine Windshields Ltd. v.
`Malibu Boats, LLC, 739 F.3d 694, 702 (Fed. Cir. 2014)
`(“[I]n design patents, unlike utility patents, the claimed
`scope is defined by drawings rather than language . . . .”);
`In re Daniels, 144 F.3d 1452, 1456 (Fed. Cir. 1998) (“It is
`the drawings of the design patent that provide the descrip-
`tion of the invention.”); In re Klein, 987 F.2d 1569, 1571
`(Fed. Cir. 1993) (“As is usual in design applications, there
`is no description other than the drawings.”); In re Mann,
`861 F.2d 1581, 1582 (Fed. Cir. 1988) (“The claim at bar, as
`in all design cases, is limited to what is shown in the appli-
`cation drawings.”). But critically, none of these cases con-
`front the atypical situation we have here, where all of the
`drawings fail to depict an article of manufacture for the or-
`namental design. Thus, we address for the first time
`whether claim language specifying an article of manufac-
`ture can limit the scope of a design patent, even if that ar-
`ticle of manufacture is not actually illustrated in the
`
`
`constitute a panel “component” that is part of a larger prod-
`uct.
`
`

`

`8
`
`CURVER LUXEMBOURG, SARL v. HOME EXPRESSIONS INC.
`
`figures. Given that long-standing precedent, unchallenged
`regulation, and agency practice all consistently support the
`view that design patents are granted only for a design ap-
`plied to an article of manufacture, and not a design per se,
`we hold 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.
`In Gorham, the leading design patent case decided
`more than one hundred years ago, the Supreme Court
`stated that “[t]he acts of Congress which authorize the
`grant of patents for designs” contemplate “not an abstract
`impression, or picture, but an aspect given to those objects
`mentioned in the acts.” 81 U.S. at 524. In characterizing
`the invention in a design patent, the Supreme Court fo-
`cused not only on the distinctiveness of the design pattern
`itself, but how the design transformed the appearance of
`the “article of manufacture” to which the design was ap-
`plied. Id. at 524–25 (“And the thing invented or produced,
`for which a patent is given, is that which gives a peculiar
`or distinctive appearance to the manufacture, or article to
`which it may be applied, or to which it gives form.”).
`Decades
`later, our predecessor court reinforced
`Gorham’s application-focused view of design patents, stat-
`ing that “it is the application of the design to an article of
`manufacture that Congress wishes to promote, and an ap-
`plicant has not reduced his invention to practice and has
`been of little help to the art if he does not teach the manner
`of applying his design.” In re Schnell, 46 F.2d 203, 209
`(CCPA 1931) (emphasis added).
`Agency practice is in line with this precedent. For over
`one hundred years, the Patent Office has made clear that
`it does not grant patents for designs disembodied from an
`article of manufacture. In Ex parte Cady, an artist applied
`for a design patent on an illustration of “Peter Rabbit,” a
`character in a well-known children’s book. 1916 Dec.
`
`

`

`CURVER LUXEMBOURG, SARL v. HOME EXPRESSIONS INC.
`
`9
`
`Comm’r Pat. 62 (1916). The Commissioner of Patents up-
`held the examiner’s rejection of the application, explaining:
`[a] disembodied design or a mere picture is not the
`subject of [design] patent, and it follows that the
`specification must not so indicate . . . . The inven-
`tion is not the article and is not the design per se,
`but is the design applied.
`Id. at 68 (emphases in original). Consistent with precedent
`and agency practice, the Patent Office promulgated
`37 C.F.R. § 1.1532 in 1959, specifying rules for the form
`and content of design patent applications. Curver, who
`does not challenge this regulation, is bound by it here. Sec-
`tion 1.153(a) provides:
`The title of the design must designate the particu-
`lar article. No description, other than a reference
`to the drawing, is ordinarily required. The claim
`shall be in formal terms to the ornamental design
`for the article (specifying name) as shown, or as
`shown and described.
`§ 1.153(a) (emphasis added). This regulation tells us two
`things: 1) the claim is not directed to a design per se, but a
`design for an identified article, and 2) the scope of the de-
`sign claim can be defined either by the figures (“as shown”)
`or by a combination of the figures and the language of the
`design patent (“as shown and described”). Id. Thus, to ob-
`tain a design patent, § 1.153(a) requires that the design be
`tied to a particular article, but this regulation permits
`claim language, not just illustration alone, to identify that
`article.
`
`
`2 We discuss the pre-America Invents Act (AIA) ver-
`sion of 37 C.F.R. § 1.153 because the ’946 patent was filed
`on April 8, 2011, before September 16, 2012, the effective
`date of the AIA.
`
`

`

`10
`
`CURVER LUXEMBOURG, SARL v. HOME EXPRESSIONS INC.
`
`The Patent Office’s guidelines governing examination
`procedure make clear that a design patent will not be
`granted unless the design is applied to an article of manu-
`facture. The MPEP defines “the subject matter which is
`claimed [a]s the design embodied in or applied to an article
`of manufacture (or portion thereof)” and explains that the
`“[d]esign is inseparable from the article to which it is ap-
`plied and cannot exist alone merely as a scheme of surface
`ornamentation.” MPEP § 1502 (emphasis added). Fur-
`thermore, these guidelines direct examiners to reject under
`35 U.S.C. § 171 a claim “that is not applied to or embodied
`in an article of manufacture.” MPEP § 1504.01. As the
`MPEP suggests, identifying the article of manufacture
`serves to notify the public about the general scope of pro-
`tection afforded by the design patent. See MPEP
`§ 1503.01(I) (amended November 2015) (“The title of the
`design identifies the article in which the design is embod-
`ied by the name generally known and used by the pub-
`lic and may contribute to defining the scope of the claim.”).
`If we adopted a design per se rule, “the title and claim lan-
`guage would provide no useful information at all.” Sarah
`Burstein, The Patented Design, 83 TENN. L. REV. 161, 212
`(2015). In contrast, tying the design pattern to a particular
`article provides more accurate and predictable notice about
`what is and is not protected by the design patent. See id.3
`
`
`3 Limiting the scope of a design patent based on dis-
`closed articles of manufacture also promotes the admin-
`istrability of the examination process by
`imposing
`practicable limits on prior art searching, which would oth-
`erwise be unduly time-consuming. Id. Given that inven-
`tors of creative designs can seek protection through
`copyright, placing such burdens on the patent system
`seems particularly unnecessary. See Star Athletica, L.L.C.
`v. Varsity Brands, Inc., 137 S. Ct. 1002, 1010 (2017)
`
`

`

`CURVER LUXEMBOURG, SARL v. HOME EXPRESSIONS INC.
`
`11
`
`On appeal, Curver argues that the district court im-
`properly applied prosecution history estoppel to limit the
`scope of its design patent to a chair by focusing on the de-
`sign patent’s text instead of the figures. Curver further
`notes that because the originally-filed claim reciting a “de-
`sign for a furniture part” was allowed by the examiner be-
`fore the claim was amended to recite a “pattern for a chair,”
`Curver did not surrender the broader scope encompassed
`by its original claim. Appellant’s Opening Br. at 18–21.
`While we agree that courts typically look to the figures to
`define the invention of the design patent, it is inappropri-
`ate to ignore the only identification of an article of manu-
`facture just because the article is recited in the design
`patent’s text, rather than illustrated in its figures. Here,
`the prosecution history shows that Curver amended the ti-
`tle, claim, and figure descriptions to recite “pattern for a
`chair” in order to satisfy the article of manufacture require-
`ment necessary to secure its design patent. The examiner
`found that Curver’s original title of “FURNITURE (PART
`OF-)” was “too vague” to constitute a “particular article”
`under § 1.153(a) and suggested that the title be amended
`to read “Pattern for a Chair.” J.A. 61. Curver did not dis-
`pute the validity of that requirement and instead amended
`the title, claim, and figure descriptions to clarify that the
`pattern was for a chair “as required in the Office Action.”
`J.A. 69. The Patent Office accepted these amendments and
`did not require Curver to supply new drawings illustrating
`the ornamental design applied to a chair. Because the “pat-
`tern for a chair” amendments were made pursuant to
`§ 1.153 requiring the designation of a particular article of
`manufacture, and this requirement was necessary to se-
`cure the patent, we hold that the scope of the ’946 patent is
`limited by those amendments, notwithstanding the
`
`(stating that copyright protects “pictorial, graphic, or
`sculptural feature[s]” that are separable from a useful ar-
`ticle).
`
`

`

`12
`
`CURVER LUXEMBOURG, SARL v. HOME EXPRESSIONS INC.
`
`applicant’s failure to update the figures to reflect those lim-
`iting amendments.
`Curver additionally argues that the district court mis-
`applied the test for determining infringement based on
`In re Glavas, 230 F.2d 447, 450 (CCPA 1956). According to
`Curver, Glavas suggested that a surface ornamentation for
`an article of manufacture can be anticipated by a prior art
`article that shares the same surface ornamentation, even
`though the prior art article is completely unrelated, i.e.,
`non-analogous art, to the article shown in the design pa-
`tent. Appellant’s Opening Br. at 15–18. Curver thus reads
`Glavas as stating that the underlying article to which a
`surface ornamentation is applied is of no moment when
`considering anticipation. We have historically used the
`same test to determine anticipation and infringement. See,
`e.g., Peters v. Active Mfg. Co., 129 U.S. 530, 537 (1889)
`(“That which infringes, if later, would anticipate if ear-
`lier.”); Int’l Seaway Trading Corp. v. Walgreens Corp., 589
`F.3d 1233, 1239 (Fed. Cir. 2009) (“[I]t has been well estab-
`lished for over a century that the same test must be used
`for both infringement and anticipation . . . .”). Seeking to
`extend Curver’s asserted anticipation rationale from Gla-
`vas to infringement here, Curver argues that a product
`that applies a design pattern to a basket can infringe a de-
`sign patent that claims the same design pattern “for a
`chair.” We disagree because we are unpersuaded that the
`statement in Glavas about anticipation necessarily im-
`pacts our infringement decision.
`First, we note that the statement about anticipation in
`Glavas is dictum and thus not binding. Because the Glavas
`court was asked only to review a determination of
`
`

`

`CURVER LUXEMBOURG, SARL v. HOME EXPRESSIONS INC.
`
`13
`
`obviousness,4 the statement about anticipation was unnec-
`essary to reach its holding about obviousness.
`Second, Glavas does not appear to go as far as Curver
`would like. The relevant portion of Glavas cited by Curver
`contemplated anticipation by a prior art article having a
`different “use” than the article illustrated in the design pa-
`tent but nevertheless sharing “substantially the same ap-
`pearance.” Glavas, 230 F.2d at 450 (“It is true that the use
`to which an article is to be put has no bearing on its patent-
`ability as a design and that if the prior art discloses any
`article of substantially the same appearance as that of an
`applicant, it is immaterial what the use of such article is.
`Accordingly, so far as anticipation by a single prior art dis-
`closure is concerned, there can be no question as to nona-
`nalogous art in design cases.”). Contrary to Curver’s
`assertion, Glavas’s dictum did not state that a design pa-
`tent disclosing a surface ornamentation applied to a given
`article (e.g., an ornamental drawing on the side of a flower
`pot) can be anticipated by an unrelated article having a
`very different physical appearance and form (e.g., cover of
`a laptop computer). Here, there is no dispute that a basket
`embodying a particular ornamental pattern is not substan-
`tially similar in appearance to a chair embodying that
`same pattern such that the former would infringe a design
`patent covering the latter. See Oral Arg. at 6:26–6:59.
`Third, even if Glavas’s dictum permitted anticipation
`by articles of manufacture that looked distinctly different
`from the article illustrated in the design patent, that dic-
`tum is subject to our en banc decision in Egyptian Goddess,
`which changed the standard for determining design patent
`
`4 Specifically, the Glavas court was asked to address
`whether a prior art reference showing a pillow could serve
`as analogous art for purposes of rendering obvious a design
`patent application for a swimming “float.” Glavas, 230
`F.2d at 449.
`
`

`

`14
`
`CURVER LUXEMBOURG, SARL v. HOME EXPRESSIONS INC.
`
`infringement to focus solely on the “ordinary observer” test.
`Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 678
`(Fed. Cir. 2008) (holding that “the ‘point of novelty’ test
`should no longer be used in the analysis of a claim of design
`patent infringement” and that the “sole test” should be “the
`‘ordinary observer’ test” based on substantial visual simi-
`larity between the accused product and claimed design).
`Because we use the same test for determining infringement
`and anticipation, the ordinary observer test is now the sole
`controlling test for determining anticipation of design pa-
`tents too. Int’l Seaway Trading Corp., 589 F.3d at 1240
`(holding that in light of Egyptian Goddess, “we now con-
`clude that the ordinary observer test must logically be the
`sole test for anticipation as well”). To the extent Glavas’s
`dictum discussing anticipation is in tension with Egyptian
`Goddess, that dictum must give way to the ordinary ob-
`server test, which controls for purposes of Curver’s appeal
`in this design patent infringement case. Under this ordi-
`nary observer test, Curver does not dispute that the district
`court correctly dismissed Curver’s claim of infringement,
`for no “ordinary observer” could be deceived into purchas-
`ing Home Expressions’s baskets believing they were the
`same as the patterned chairs claimed in Curver’s patent.
`See Oral Arg. at 6:26–6:59. Thus, for all of the above rea-
`sons, we find that Curver’s reliance on Glavas lacks merit.
`CONCLUSION
`We have considered Curver’s remaining arguments
`and find them unpersuasive. Accordingly, we affirm the
`district court’s grant of Home Expressions’s motion to dis-
`miss the complaint for failure to state a plausible claim of
`design patent infringement.
`AFFIRMED
`COSTS
`
`No costs.
`
`