from the United States District Court for the District of New
Jersey in No. 2:17-cv-04079-KM-JBC, Judge Kevin McNulty.
Michael Anthony Nicodema, Greenberg Traurig, LLP, Florham
Park, NJ, argued for plaintiff-appellant. Also represented by
Jason Harris Kislin, Barry Schindler.
M. Auvil, Squire Patton Boggs (US) LLP, Cleveland, OH, argued
for defendant-appellee. Also represented by Jeremy William
Dutra, Washington, DC.
Stallman, Samuelson Law, Technology & Public Policy
Clinic, University of California, Berkeley School of Law,
Berkeley, CA, for amicus curiae Open Source Hardware
Association. Also represented by Jennifer M. Urban.
Chen, Hughes, and Stoll, Circuit Judges.
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 illustrate the
design pattern disembodied from any article of manufacture.
Curver sued defendant-appellee Home Expressions Inc. (Home
Expressions) in the United States District Court for the
District of New Jersey, alleging that Home Expressions made
and sold baskets that incorporated 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 design 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 correctly 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 surface ornamentation applied
to it. Because we agree with the district court that the
claim language "ornamental design for a pattern for a
chair" limits the scope of the claimed design in this
case, we affirm.
'946 patent was filed in 2011 and claims an overlapping
"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.
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 illustrating a "design for
a FURNITURE PART." J.A. 66-67. None of the figures
illustrated a chair, any furniture, or any furniture part.
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(1), the title must
designate 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
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
consistency," the "title  be amended throughout
the application." 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, replacing the original title
with "Pattern for a Chair" and replacing
"furniture part" with "pattern for a
chair" in the claim and figure descriptions to be
consistent with the amendment to the title. J.A. 66-67.
Referring to these amendments, 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.
Expressions makes and sells baskets that incorporate an
overlapping "Y" design similar to the pattern
disclosed in the ...