The title, description of figures, and claim of the ’946 patent all consistently recite a “pattern for a chair.” 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-).” The original claim recited a “design for a furniture part.”And each of the figures was described as illustrating a “design for a FURNITURE PART.” None of the figures illustrated a chair, any furniture, or any furniture part.
During prosecution of the application, the examiner requested that the title and claim be amended to “Pattern for a Chair”, and the applicant complied, despite the fact that the drawings did not illustrate a chair. The defendant Home Engravings applied the pattern to a basket, and was sued for infringement.
The Federal Circuit held that the claim language limited the scope of the ‘946 design patent to a chair, and therefore the basket did not infringe. This is straightforward and not controversial at all. This simply reinforces the common knowledge that the title and claim of a design patent really matter.
But several things went wrong during prosecution of the design patent application that became the ‘946 patent.
The most obvious error was the applicant agreeing to the examiner’s suggestion to change the title from “Furniture Part” to “Pattern for a Chair”. This smacks of prohibited “new matter”, and the Federal Circuit could have invalidated the patent on that ground alone.
Second, the applicant could have chosen a better, broader title (and claim). For example, instead of “Furniture Part” it could have said “Portion of Furniture, Tabletop Products, Office Products, Home Products, Baskets, and the like”. This would have considerably broadened the scope of the claim. The applicant could also have illustrated the pattern on those various products, showing the products in broken lines.
This was the approach taken in an important case now pending before the Federal Circuit, Columbia Sportswear v. Seirus, where Columbia illustrated in its design patent D657,093 its “Heat Reflective Material” on products such as gloves, footwear, socks, and the like, showing all of those products in the drawings in broken lines with the heat reflective material in solid lines. Columbia seeks Seirus’ total profit on the end products as sold, while Seirus wants to limit the damages to the heat reflective material. Columbia’s main problem was not claiming “Heat Reflective Material Applied to Gloves, Footwear, Socks, and the like”, giving it a chance of recovering total profits based on the end products as sold. We’ll have to wait and see how the Federal Circuit handles that issue, which has more to do with “total profit” under Sec. 289 (oral argument was held just last week). But the title and claim of Columbia’s patent may turn out to be the critical factor, just as in Curver.
One of the Federal Circuit’s gaffes in Curver was its misinterpretation of In re Glavas, when it declared that “a design patent disclosing a surface ornamentation applied to a given article [cannot] be anticipated by an unrelated article having a very different physical appearance and form.” Slip. at 13. This is counter to the very language of the M.P.E.P. 1504.02 that states: “Anticipation does not require that the claimed design and the prior art be from analogous arts.” So, insofar as anticipation is concerned, a 2D design on a flower pot can be anticipated by the same design on a laptop computer. Of course, under Sec. 103, the prior art and the claimed design must be from analogous arts, since a designer of ordinary skill would not look at laptop designs in considering the obviousness of a flower pot.
Further, the Federal Circuit unfortunately continues to rely on the International Seaway case that held that the test for anticipation is the same as the test for infringement, that relied in turn on the ancient Peters v. Active case. This is demonstrably an incorrect legal conclusion, as I wrote in a 2011 article.
In short, Curver’s holding was not at all surprising, but the Court’s opinion left something to be desired, and the attorney who prosecuted Curver’s design patent could have been more imaginative.