The Title after Curver Luxembourg v. Home Expressions

A design patent has one claim: the ornamental design for a named article of manufacture. The drawings usually do most of the work, but when they show no article, the title and claim language supply it, and that language can decide the case. This episode walks through Curver Luxembourg v. Home Expressions, 938 F.3d 1334 (Fed. Cir. 2019), where a pattern claimed for a chair could not be asserted against a basket, and In re SurgiSil, 14 F.4th 1380 (Fed. Cir. 2021), where the same article-identifying language kept an art tool from anticipating a lip implant design. It then covers how to choose the title deliberately: the broadest accurate identification of the article disclosed, without unnecessary qualifiers, and why an examiner’s objection to the title should be treated as claim drafting rather than a clerical correction.

A second way scope is lost

In episode one, we saw how arguments made during prosecution can narrow the scope of a design patent. This episode looks at a second way scope is lost, not by argument but by amendment, and it starts with something many people treat as routine: the title.

A design patent has one claim, the ornamental design for a named article of manufacture as shown, or as shown and described. An article of manufacture is a concrete product or a defined portion of a product, not a design floating free in the abstract. The drawings ordinarily do most of the work, but the words can matter too, especially when they identify the article to which the design is applied. The title is not always just a label. In the right case, it helps define the boundary of the claim.

What happened in Curver

Curver Luxembourg, SARL v. Home Expressions Inc., shows why. Curver filed a design application on an overlapping Y pattern, a decorative weave. The drawings showed the pattern itself: no chair, no basket, no article at all. The application as filed referred to a furniture part. The examiner objected that this did not designate a particular article of manufacture and suggested “pattern for a chair.” Curver adopted the suggestion, changing the title, the claim, and the figure descriptions. The patent issued under that title.

Curver then sued Home Expressions over baskets that used an essentially identical pattern. The district court dismissed the case at the pleading stage, and the Federal Circuit affirmed. A design patent protects a design applied to an article of manufacture, not the design in the abstract. Because the figures showed no article, the claim language supplied the only article of manufacture. That language, pattern for a chair, limited the claim. The claim said chair. The accused product was a basket. On those facts, the Federal Circuit held that no ordinary observer could be deceived into purchasing the basket believing it was the claimed patterned chair, so infringement failed as a matter of law.

The prosecution history reinforced the result

Curver made the “pattern for a chair” amendments to tie the design to a particular article of manufacture and obtained its patent on that basis. It could not later assert that the patent protected the pattern wherever it appeared. The scope was limited through an amendment that may have looked administrative at the time.

After Curver, the article identified by the claim can be outcome determinative. If the claimed design is tied to one article and the accused product is a materially different article, that difference can be decisive in the ordinary observer comparison.

The other edge: SurgiSil

It may be tempting to narrow the title, because narrowing has a benefit as well. In In re SurgiSil, L.L.P., the claimed design was for a lip implant. The examiner rejected it over an art tool called a stump with a nearly identical shape. The Federal Circuit reversed, because the design claim was limited to the article identified in the claim, a lip implant.

The same article-identifying language that can narrow your reach against an accused product can also matter on anticipation. In SurgiSil, it meant an art tool could not anticipate a claimed lip implant design. A reasoned title choice weighs both.

Choosing the title

The objective is not the broadest possible label. It is the broadest accurate identification of the particular article the application actually discloses. Use the name the public would use for the article, and leave out unnecessary qualifiers: marketing terms, materials, manufacturing methods, users, and functions. If the claimed article is adequately identified as a shoe, adding “men’s athletic running shoe with mesh upper” may create unnecessary arguments about the article’s scope.

When the examiner objects

Consider treating the response as claim drafting, not as a clerical correction. If the title or formal claim must be corrected to identify the particular article, make that correction carefully. Provide only the explanation necessary to address the examiner’s question. Make sure the revised identification is supported by the application as filed. An amendment cannot introduce new matter, and an amendment made to obtain allowance may later inform claim scope.

The drawings define what the design looks like. The title helps define what the design protects. Draft it with the same care.