WINTER 202 0 TODAY’S GENER AL COUNSEL
Intellectual Property
Design Patent Law After Curver Luxembourg, SARL v. Home Expressions Inc. By Michael Turner and Tiffany Fidler
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he design patent bar adjusted its strategies after the broad “article of manufacture” interpretation by the Supreme Court that apportioned damages in Samsung Electronics Co. v. Apple Inc. Our challenge, as practitioners, is 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? On September 12, 2019, the Federal Circuit interpreted the “article of manufacture” narrowly to find non-infringement of a design patent by a similar design in Curver Luxembourg, SARL v. Home Expressions Inc. Many patent practitioners responded to the Supreme Court’s holding by adopting titles that were specific to an entire product to justify an interpreta-
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. Likewise, the claim also specifies the name of the article of manufacture. Design practitioners appropriately treat the title as part of the claim, and often pursue design patents with titles that define an article of manufacture while remaining broad enough to avoid undue limitation of the claim scope. 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. The damages statute specific to design patents is directed to an infringement by an article of manufacture. The Court found that the phrase “article of manufacture” is consistent in the design patent statute and the design patent damages statute. 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. The Supreme Court held, in the context of a multi-component
By using the same product title for both embodiments, a reasonable interpretation of the title should be the entire product. tion that the article of manufacture is the entire product. Procedurally, the rules state that 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)
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.” 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. Many patent practitioners responded to the Supreme Court’s holding 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, then 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