Curver Luxembourg, SARL v. Home Expressions Inc., Appeal No. 2018-2214 (Fed. Cir. Sept. 12, 2019)

In a significant case in the field of design patents, the Federal Circuit clarified the scope of design patent infringement and held that a 60 year old precedent was no longer good law.

The design patent at issue is titled “Pattern for a Chair” and claims an “ornamental design for a pattern for a chair” as follows:

The original title was “FURNITURE (PART OF)” and the claim was drafted with similar language. During prosecution, the examiner objected to the title because it failed to identify a “particular article” for the design. The patentee amended the patent to the current title and claims concerning a “chair.”

The defendant, Home Expressions, makes baskets using a similar pattern. Curver sued Home Expressions for infringement, arguing that the claim was not limited to a chair. On a motion to dismiss, the district court construed the claim as limited to a chair and then found noninfringement.

On appeal Curver argued that the court erred in limiting the claim to a chair, even though the title and the claim expressly stated “chair.” Curver argued that the figures did not show a chair, specifically. The Federal Circuit stated that “Curver’s argument effectively collapses to a request for a patent on a surface ornamentation design per se. … [O]ur 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 ornamentation is applied. … We decline to construe the scope of a design patent so broadly here merely because the referenced article of manufacture appears in the claim language, rather than the figures.”

The Court said that this was a “case of first impression” because it was an “atypical situation” in which “all of the drawings fail to depict an article of manufacture for the ornamental design.” Tracing the history of design patent law back to Gorham Co. v. White, 81 U.S. 511, 528 (1871), the Court held that the claims were limited by the preamble in this case.

The Court then addressed a further argument that Curver made regarding the case In re Glavas, 230 F.2d 447, 450 (CCPA 1956). Glavas is widely recited for the treatment of design patents concerning the doctrine of analogous art in design patents and surface ornamentations. In that case, the C.C.P.A. stated as follows:

It is true that the use to which an article is to be put has no bearing on its patentability 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 disclosure is concerned, there can be no question as to nonanalogous art in design cases.

The Glavas court went on to say, “[I]f the problem is merely one of giving an attractive appearance to a surface, it is immaterial whether the surface in question is that of wall paper, an oven door, or a piece of crockery. …  [T]he painting ‘upon a familiar vase of a copy of Stuart’s portrait of Washington’ would not be patentable.”

Culver argued that Glavas supported its infringement argument. As the argument goes, if it is true that “that which infringes, if later, would anticipate if earlier,” the test for infringement and anticipation are the same. If Glavas’s analysis is correct for anticipation of claims with the same surface ornamentation applied to different articles, the same must be true for infringement, and it does not matter on what article the surface ornamentation is placed.

The Federal Circuit rejected this argument, deeming the relevant text in Glavas to be dictum. Moreover, the Court held Glavas to be overruled in effect by Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 672 (Fed. Cir. 2008) (en banc), which changed the standard for design patent infringement. That standard announced in Egyptian Goddess—the “ordinary observer test”—applies equally to anticipation. Thus the statement in Glavas about anticipation of design patents with similar surface ornamentations is no longer good law.

The Federal Circuit affirmed.

The opinion can be found here.

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Henny Penny Corporation v. Frymaster LLC, Appeal No. 2018-1596 (Fed. Cir. Sept. 12, 2019)

In this case, the Court affirmed an inter partes review decision of the Patent Trial and Appeal Board holding challenged claims not unpatentable as obvious. The Court found that the Board did not abuse its discretion in declining to consider argument that a primary reference alone rendered the challenged claims obvious, where the issue was raised for the first time in Petitioner’s Reply based on an alleged admission by Patent Owner’s expert in post-institution deposition testimony. The Court also found the decision on obviousness supported by substantial evidence, where the Board weighed advantages and disadvantages of the asserted combination in assessing whether a skilled artisan would have been motivated to make such a combination. The Court also affirmed the Board’s presumption of nexus for secondary considerations of non-obviousness where the challenged claims were commensurate in scope with a product feature that received industry praise, i.e. “a system for measuring the state of degradation of cooking oils or fats in a deep fryer,” holding that nexus did not require such praise to be “precisely limited to the point of novelty of the claimed combination.”

The opinion can be found here.

Intellectual Ventures I LLC v. Capital One Financial Corporation, Appeal No. 2018-1367 (Fed. Cir. Sept. 10, 2019)

In this appeal from the District of Maryland, the Federal Circuit addresses issues relating to various antitrust-related counterclaims brought by Capital One in a patent infringement matter brought by Intellectual Ventures (“IV”). Specifically, at the district court, Capital One alleged that IV was liable for monopolization in violation of the Sherman Act and unlawful acquisition of assets under the Clayton Act (said assets being a large patent portfolio relating to commercial banking practices) by implementing a scheme through sham infringement litigation to increase its pricing power in the relevant market. The district court granted summary judgment against Capital One, in part on grounds of collateral estoppel based on nearly identical arguments Capital One made in a different district court against IV. The Federal Circuit affirmed, holding that Capital One failed to properly characterize the relevant market in both cases and agreed that Capital One was collaterally estopped from bringing its claims.

The opinion can be found here.