On September 12, 2019, the Federal Circuit interpreted the “article of manufacture” narrowly to find noninfringement of a design patent by a similar design in Curver Luxembourg, SARL v. Home Expressions Inc. (Slip Opinion, 2018-2214, Fed. Cir. 2019). The design patent bar adjusted its strategies after the broad “article of manufacture” interpretation that apportioned damages in Samsung Electronics Co. v. Apple Inc., 137 S. Ct. 429, 436 (2016). As practitioners, how do we procure design patent protection that satisfies the “article of manufacture” requirement without limiting damages or infringement? In other words, how do we define (or name) the “article of manufacture” without being too broad or too narrow?
This article discusses the statutory and procedural requirement of an “article of manufacture”, the Supreme Court’s decision in Samsung v. Apple, the recent Federal Circuit holding in Curver Luxembourg v. Home Expressions, and some practical considerations for design patent owners and practitioners.
“Article of Manufacture” by Statute and Procedure
The applicable federal statute, 35 U.S.C. § 171, is directed to “Patents for designs” and states “Whoever invents any new, original, and ornamental design for an article of manufacture may obtain a patent therefor …” 35 U.S.C. § 171(a) (Emphasis added). Procedurally, the rules state at 37 C.F.R. § 1.153(a) (Emphasis added):
The title of the design must designate the particular 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.
A design patent is directed to an article of manufacture, which is designated in the title of the design patent. 35 U.S.C. § 171(a); and 37 C.F.R. § 1.153(a). Likewise, the claim also specifies the name of the “article of manufacture.” 37 C.F.R. § 1.153(a). Design practitioners appropriately treat the title as part of the claim, and often pursue design patents with titles that both define an “article of manufacture” while remain broad enough to avoid undue limitation of the claim scope.
“Article of Manufacture” After Samsung v. Apple
The Supreme Court in Samsung v. Apple interpreted that a broadly titled “article of manufacture” can be a component of a product instead of the entire product, thereby permitting apportionment of the damages. 137 S. Ct. at 436. The damages statute specific to design patents is directed to an infringement by an “article of manufacture.” 35 U.S.C. § 289. The Court found that the phrase “article of manufacture” is consistent in the design patent statute (§ 171) and the design patent damages statute (§ 289). 137 S. Ct. at 435.
In Samsung v. Apple, the titles of the asserted Apple design patents were “Electronic Device” and “Graphical User Interface.” Each of Apple’s asserted patents depicted a smartphone with one component of the smartphone claimed in solid lines and the remainder of the smartphone disclaimed in broken lines. The Federal Circuit Court of Appeals interpreted the “article of manufacture” as the entire smartphone. 786 F.3d 983, 1002 (2015). The Supreme Court held in the context of a multicomponent product, “the term ‘article of manufacture’ is broad enough to embrace both a product sold to a consumer and a component of that product, whether sold separately or not.” 137 S. Ct. at 436. Under this interpretation, a broad “article of manufacture” title can be interpreted as a component of the product, not the entire product, thereby permitting apportionment of damages, and a possible limiting of damages. The Supreme Court declined to define an “article of manufacture” test. Id.
Many patent practitioners responded to the Supreme Court’s holding in Samsung v. Apple, by adopting titles that were specific to an entire product to justify an interpretation that the “article of manufacture” is the entire product, not just component of the product. For example, a narrower design patent title, such as the product name (e.g., smartphone) is now preferred over a broader product category (e.g., electronic device).
Another reaction of the design patent bar is to file design patent applications with multiple embodiments ranging in claim scope to support that the entire product is the claimed “article of manufacture.” For example, if a design patent application is directed to an ornamental design with a portion (or component) of the product claimed and another portion (or other components) disclaimed in a broader embodiment, another narrower embodiment is added with the entire product claimed. By using the same product title for both embodiments, a reasonable interpretation of the title should be the entire product. However, if the patent application is subjected to a restriction requirement and election, the “article of manufacture” interpretation of the broader embodiment may be limited to a claimed component of the product. Until the courts adopt an “article of manufacture” test, such strategies and reactions to the case law are expected to preserve arguments that the “article of manufacture” is the entire product.
“Article of Manufacture” After Curver Luxembourg, SARL v. Home Expressions Inc.
The Federal Circuit recently ruled that a design patent titled “Pattern for a Chair” did not cover a similar pattern on a basket. Curver Luxembourg v. Home Expressions, (Slip Opinion, Fed. Cir. 2019). The court held that “claim language can limit the scope of a design patent where claim language supplies the only instance of an article of manufacture that appears nowhere in the figures.” Id. pg. 8. The asserted design patent does not illustrate a chair. The design patent only includes a portion of the pattern and was filed with the title “FURNITURE (PART OF-)”, which was later amended to a “Pattern for a Chair.” Although the claimed pattern is very similar to the pattern on the accused basket, the Federal Circuit held that the title is part of the claim language and therefore limits the scope. Id.; and 37 C.F.R. § 1.153(a).
The patentee adopted the common approach of pursuing a broad title “FURNITURE,” which, perhaps is a class of articles, not just an individual “article of manufacture.” Examination resulted in amendment and selection of one article by name, which resulted in too narrow of an interpretation to find infringement.
One option to address this outcome, is to adopt titles that are directed to products only. For example, while preparing a patent application for a pattern, the inventors can provide a list of all of the applicable products, and the patent application can include the list disjunctively. For example, a title of ‘Pattern for a Chair or Basket’ may have avoided the outcome in Curver Luxembourg v. Home Expressions. Additionally, drawings of each product example may be included. Use of “or” in the title, and consequently the associated claim, as well as multiple environmental views of the different articles, may be subject to a restriction requirement and/or indefiniteness rejection. However, in both situations, the practitioner can pursue each “article of manufacture” as a separate embodiment by filing a continuation and/or divisional design patent application.
In other situations, a design may be embodied in various “articles of manufacture.” For example, a design for a product may also be embodied as a toy replica. In order to avoid noninfringement under Curver Luxembourg v. Home Expressions, a patentee could include each “article of manufacture” in the title. For example, a design patent application title for a car may be “vehicle or toy vehicle.”
“Article of manufacture” has been a popularly debated topic in design patent law in recent years. The case law is causing patentees to carefully consider the title of design patent applications to appropriately define the “article of manufacture.” However, in light of these decisions, practitioners can ask the designers appropriate questions prior to filing, to select titles with products in mind. Instead of selecting titles for a single product category, titles can be selected with a list of applicable products. Such strategies can optimize claim scope and damages, while withstanding the scrutiny of the United States Patent and Trademark Office and the Federal Courts.