FEDERAL CIRCUIT NARROWS SCOPE OF PROTECTION FOR DESIGN PATENTS

In re: Surgisil was decided by the Federal Circuit on October 4, 2021. It clarified the scope of protection afforded to a design patent.

The design is for a lip implant. The claim is “The ornamental design of a lip implant as shown and described”. It was rejected by the examiner under Sec. 102 as anticipated by a Blick art tool called a “stump” used for smoothing and blending large areas of pastel or charcoal. The claimed lip implant and 102 reference are shown below:

The applicant appealed to the Board, arguing that Blick could not anticipate because it disclosed a “very different” article of manufacture than a lip implant. The Board affirmed the examiner’s anticipation rejection, saying “it was appropriate to ignore the identification of the article of manufacture in the claim language” and “whether a reference is analogous art is irrelevant to whether that reference anticipates.”

The Federal Circuit reversed the rejection. It noted that Sec. 171 of the Patent Act permitted the grant of a design patent only to “a design for an article of manufacture”, and since the claim was limited to a lip implant, an art tool cannot be an anticipatory reference. The scope of the claim was therefore narrowed to lip implants.

This decision is consistent with the Court’s earlier decision of Curver Luxembourg v. Home Expressions where the design claim was a pattern for a chair, and the accused design – although using the same pattern – was a basket. The designs in that case are shown below.

The Court easily concluded that a basket is not a chair, therefore no infringement.

What are the implications of Surgisil? First, design patent applicants need to choose their title/claim very carefully, since it will clearly have a direct effect on the scope of protection of their design. We may see applicants filing different design patent claims such as “The ornamental design of a gizmo, widget and/or thingamajig, as shown and described” where the applicant wants to cover more than one article of manufacture. An alternative strategy may be to file multiple design applications claiming the same design on different articles of manufacture. Infringers – ever clever – might appropriate a patented design for a totally different product, and thus fall outside the scope of the claim. And theoretically it might be possible to obtain a patent on a design that is in the public domain on one article, but that claims it on a different article.

This case is in sharp contrast the European system where a registered design covers the design per se without regard to an article of manufacture. In other words, the basket maker who copied Curver’s chair pattern would not escape liability under the European system.

Keep in mind that 35 U.S.C. 171, which defines statutory subject matter for design patents, says: “Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor…” The requirement that a design be “original” is the subject of very little case law. But originality might come into play when considering the situation where someone copies a public domain design on a widget and applies it to a gizmo. In such a case, is the design of the gizmo truly “original”?

It also raises the larger question of whether the “article of manufacture” requirement ought to be excised from the statute, to bring the US design protection system into harmony with the European system, and to dispense with all of the litigation surrounding “article of manufacture”. For example, it would eliminate the laughable requirement that in an application for a GUI design the applicant must illustrate a broken line “screen” around the GUI, the screen being the “article of manufacture”. More importantly, it would mitigate the Supreme Court’s terrible decision in Samsung v. Apple where it held that “article of manufacture” under Sec. 289 (for the purpose of calculating total profit damages) could be either the end product as sold, or a component of the end product. This has created scads of litigation, when logically an infringer ought to be liable for its total profit on the end product as sold, since that’s the reason they copied the design.