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UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF WISCONSIN

JOHNSONVILLE SAUSAGE, LLC,

Plaintiff,

v. Case No. 2:16-CV-938

KLEMENT SAUSAGE CO., INC.,

Defendant.

JOHNSONVILLE’S NOTICE OF SUPPLEMENTAL AUTHORITY

Johanna M. Wilbert
State Bar No. 1060853
Michael T. Piery
State Bar No. 1094654
QUARLES & BRADY LLP
411 East Wisconsin Avenue, Suite 2400
Milwaukee, WI 53202-4426
Telephone: (414) 277-5000
Facsimile: (414) 271-3552
E-Mail: johanna.wilbert@quarles.com
michael.piery@quarles.com

Kristin Graham Noel


State Bar No. 1033726
QUARLES & BRADY LLP
33 East Main Street, Suite 900
Madison, WI 53703
Telephone: (608) 251-5000
Facsimile: (608) 294-4919
E-Mail: kristin.noel@quarles.com

Attorneys for Plaintiff


Johnsonville Sausage, LLC

QB\59683080.1

Case 2:16-cv-00938-LA Filed 10/02/19 Page 1 of 3 Document 152


Johnsonville submits this notice of supplemental authority to advise the Court of the

Federal Circuit’s recent decision in the case styled as Curver Luxembourg, SARL v. Home

Expressions Inc., No. 2018-2214, 2019 WL 4308879 (Fed. Cir. Sept. 12, 2019), attached hereto

as Exhibit 1. This decision is relevant to Johnsonville’s Opposition to Klement’s Motion for

Partial Summary Judgment of Non-Infringement (Dkt. 112-1).

In Curver, the Federal Circuit held that “claim language can limit the scope of a design

patent where the claim language supplies the only instance of an article of manufacture that

appears nowhere in the figures.” Curver, 2019 WL 4308879, at *3. Applying this holding to a

design patent that claimed a pattern for a chair, the Federal Circuit held that no “ordinary

observer” could be deceived into purchasing [the accused infringer’s] baskets believing they

were the same as the patterned chairs claimed in Curver’s patent.” Id. at *5. The Federal Circuit

further explained that claim language limiting the scope of a design patent will also limit the

scope of prior art. Id. at *4–5 & n.3.

Under Curver, Klement’s prior art cited in support of its non-infringement position

should not be considered in the infringement analysis because it is not sausage tray prior art.

Applying Curver to the Patent-in-Suit, the claim is limited to sausage trays. (Dkt. 1-1.) Because

Klement’s prior art discloses articles of manufacture that are not sausage trays (Dkt. 84 at 12–

15), it should not be considered as part of the infringement analysis, which requires infringement

to be evaluated in light of the closest prior art to the claimed design. Crocs, Inc. v. Int’l Trade

Comm’n, 598 F.3d 1294, 1303 (Fed. Cir. 2010). To the extent Klement’s prior art could be

considered relevant to a sausage tray design, that question is an issue of material fact that

additionally prevents summary judgment in Klement’s favor on infringement. (See Dkt. 113-1

¶¶ 68, 69.)

2
QB\59683080.1

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Dated this 2nd day of October, 2019.
s/ Michael T. Piery
Johanna M. Wilbert
State Bar No. 1060853
Michael T. Piery
State Bar No. 1094654
QUARLES & BRADY LLP
411 East Wisconsin Avenue
Suite 2400
Milwaukee, WI 53202-4426
Telephone: (414) 277-5000
Facsimile: (414) 271-3552
E-Mail: johanna.wilbert@quarles.com
michael.piery@quarles.com

Kristin Graham Noel


State Bar No. 1033726
QUARLES & BRADY LLP
33 East Main Street
Suite 900
Madison, WI 53703
Telephone: (608) 251-5000
Facsimile: (608) 294-4919
E-Mail: kristin.noel@quarles.com

Attorneys for Plaintiff


Johnsonville Sausage, LLC

3
QB\59683080.1

Case 2:16-cv-00938-LA Filed 10/02/19 Page 3 of 3 Document 152


Exhibit 1

Case 2:16-cv-00938-LA Filed 10/02/19 Page 1 of 9 Document 152-1


Curver Luxembourg, SARL v. Home Expressions Inc., --- F.3d ---- (2019)
2019 WL 4308879

2019 WL 4308879 West Headnotes (12)


Only the Westlaw citation is currently available.
United States Court of Appeals, Federal Circuit.
[1] Patents
CURVER LUXEMBOURG, Infringement
SARL, Plaintiff-Appellant Under the “ordinary observer test,” an accused
v. product infringes a design patent if in the
HOME EXPRESSIONS INC., Defendant-Appellee eye of an ordinary observer two designs are
substantially the same, such that the resemblance
2018-2214 is such as to deceive such an observer, inducing
| him to purchase one supposing it to be the other.
Decided: September 12, 2019
Cases that cite this headnote
Synopsis
Background: Assignee of patent claiming an ornamental
design for a pattern for a chair brought action against [2] Courts
alleged infringer that allegedly made and sold baskets that Particular questions or subject matter
incorporated the claimed design pattern. The United States Court of Appeals for the Federal Circuit reviews
District Court for the District of New Jersey, Kevin McNulty, a decision to grant a motion to dismiss under
J., 2018 WL 340036, granted defendant's motion to dismiss regional circuit law.
for failure to state a claim, and, 2018 WL 3339526, denied
Cases that cite this headnote
assignee's motion for reconsideration. Assignee appealed.

[3] Federal Courts


Pleading
Holdings: The Court of Appeals, Chen, Circuit Judge, held
that: Court of Appeals reviews a district court’s grant
of a motion to dismiss for failure to state a claim
[1] patent design was limited to claim language reciting a de novo. Fed. R. Civ. P. 12(b)(6).
“pattern for a chair,” despite fact that the figures were devoid
Cases that cite this headnote
of any chair illustrations;

[2] claim language can limit the scope of a design patent [4] Patents
where the claim language supplies the only instance of an Eligible subject matter
article of manufacture that appears nowhere in the figures; Patent for an ornamental overlapping “Y” design
was limited to claim language reciting a “pattern
[3] scope of patent was limited by amendments to originally- for a chair,” despite the fact that the figures were
filed claim, which recited a design for a furniture part, to recite devoid of any chair illustrations. 35 U.S.C.A. §
instead a pattern for a chair; and 171; 37 C.F.R. § 1.153(a).

[4] no ordinary observer could be deceived into purchasing Cases that cite this headnote
defendant's baskets believing they were the same as the
patterned chairs claimed in assignee’s patent.
[5] Patents
Briefs
Affirmed. Assignee of patent claiming an overlapping
“Y” design for a pattern for a chair waived
its argument, on appeal of district court's
dismissal of its infringement action, that the

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three-dimensional panel structure depicted in an article of manufacture just because the article
the figures in patent application included the is recited in the design patent’s text, rather than
ornamental “Y” pattern, and that this panel illustrated in its figures. 35 U.S.C.A. § 171.
provided the requisite article of manufacture for
which a new, original, and ornamental design Cases that cite this headnote
may be patented because it was a component of a
product, where assignee raised this argument for [9] Patents
the first time in its reply brief. 35 U.S.C.A. § 171. Infringement

Cases that cite this headnote The court uses the same “ordinary observer”
test for determining patent infringement and
anticipation. 35 U.S.C.A. § 100 et seq.
[6] Patents
Construction and operation Cases that cite this headnote
Claim language can limit the scope of a design
patent where the claim language supplies the [10] Patents
only instance of an article of manufacture that Infringement
appears nowhere in the figures. 35 U.S.C.A. §
The ordinary observer test is the sole controlling
171; 37 C.F.R. § 1.153(a).
test for determining anticipation of design
Cases that cite this headnote patents. 35 U.S.C.A. § 171.

Cases that cite this headnote


[7] Patents
Eligible subject matter
[11] Patents
Patents Infringement
Construction and operation
No ordinary observer could be deceived into
The scope of design patent for an ornamental purchasing the baskets made and sold by
design was limited by amendments made by alleged infringer, which allegedly incorporated
patentee to originally-filed claim, which recited the patented overlapping “Y” design for a pattern
a design for a furniture part, to recite instead for a chair, believing the baskets were the same as
a pattern for a chair, since the amendments the patterned chairs claimed in assignee’s patent,
were made pursuant to regulation requiring the and thus there was no infringement. 35 U.S.C.A.
designation of a particular article of manufacture § 171.
after examiner found that the original title of part
of furniture was too vague and suggested the Cases that cite this headnote
amendment, this requirement was necessary to
secure the patent, and patentee did not dispute the
[12] Patents
validity of that requirement and instead amended Design
the title, claim, and figure descriptions to clarify
US Patent D677,946. Construed.
that the pattern was for a chair. 35 U.S.C.A. §
171; 37 C.F.R. § 1.153(a). Cases that cite this headnote
Cases that cite this headnote

[8] Patents Appeal from the United States District Court for the District
Eligible subject matter of New Jersey in No. 2:17-cv-04079-KM-JBC, Judge Kevin
While courts typically look to the figures to McNulty.
define the invention of the design patent, it is
inappropriate to ignore the only identification of

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title, description of figures, and claim of the ’946 patent all


Attorneys and Law Firms consistently recite a “pattern for a chair.” Id. But none of the
figures illustrate a design being applied to a chair.
Michael Anthony Nicodema, Greenberg Traurig, LLP,
Florham Park, NJ, argued for plaintiff-appellant. Also
represented by Jason Harris Kislin, Barry Schindler.

Steven M. Auvil, Squire Patton Boggs (US) LLP, Cleveland,


OH, argued for defendant-appellee. Also represented by
Jeremy William Dutra, Washington, DC.

Erik Stallman, Samuelson Law, Technology & Public Policy


Clinic, University of California, Berkeley School of Law,
Berkeley, CA, for amicus curiae Open Source Hardware
Association. Also represented by Jennifer M. Urban.

Before Chen, Hughes, and Stoll, Circuit Judges.

Opinion
The term “chair” first appeared through amendment during
Chen, Circuit Judge
prosecution. Curver originally applied for a patent directed to
*1 Plaintiff-appellant Curver Luxembourg, SARL (Curver) a pattern for “furniture,” not a chair specifically. The original
is the assignee of U.S. Design Patent No. D677,946 title was “FURNITURE (PART OF-).” J.A. 66. The original
(’946 patent), entitled “Pattern for a Chair” and claiming claim recited a “design for a furniture part.” J.A. 67. And
an “ornamental design for a pattern for a chair.” The each of the figures was described as illustrating a “design
design patent’s figures, however, merely illustrate the design for a FURNITURE PART.” J.A. 66–67. None of the figures
pattern disembodied from any article of manufacture. Curver illustrated a chair, any furniture, or any furniture part.
sued defendant-appellee Home Expressions Inc. (Home
Expressions) in the United States District Court for the The Patent Office allowed the claim but objected to the title,
District of New Jersey, alleging that Home Expressions made among other things. The examiner stated that under 37 C.F.R.
and sold baskets that incorporated Curver’s claimed design § 1.153 and the Patent Office’s Manual of Patent Examining
pattern and thus infringed the ’946 patent. Home Expressions Procedure (MPEP) § 1503(I), the title must designate a
moved to dismiss under Federal Rule of Civil Procedure “particular article” for the design. Under these provisions,
12(b)(6), arguing that its accused baskets could not infringe the examiner found that the title’s use of “Part of” and the
because the asserted design patent was limited to chairs only. specification’s use of “Part” were “too vague” to constitute
The district court agreed with Home Expressions and granted an article of manufacture. J.A. 61. To remedy this problem,
the motion. The question on appeal is whether the district the examiner suggested that the title be amended to read
court correctly construed the scope of the design patent as “Pattern for a Chair,” and that “[f]or consistency,” the “title
limited to the illustrated pattern applied to a chair, or whether [ ] be amended throughout the application.” Id. (noting that
the design patent covers any article, chair or not, with the “[t]he claim in a design patent must be directed to the design
surface ornamentation applied to it. Because we agree with for an article” under 35 U.S.C. § 171). Curver adopted
the district court that the claim language “ornamental design the examiner’s suggestion, replacing the original title with
for a pattern for a chair” limits the scope of the claimed design “Pattern for a Chair” and replacing “furniture part” with
in this case, we affirm. “pattern for a chair” in the claim and figure descriptions to
be consistent with the amendment to the title. J.A. 66–67.
Referring to these amendments, Curver acknowledged that
“the title and the specification have been amended as required
BACKGROUND
in the Office Action.” J.A. 69. Curver did not amend the
The ’946 patent was filed in 2011 and claims an overlapping figures to newly illustrate a chair. The examiner accepted
“Y” design, as illustrated in Figure 1 below. J.A. 24. The these amendments and allowed the application.

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to be limited to the design pattern illustrated in the patent


figures as applied to a chair, explaining that “[t]he scope of a
DISTRICT COURT PROCEEDINGS
design patent is limited to the ‘article of manufacture’—i.e.,
*2 Home Expressions makes and sells baskets that the product—listed in the patent.” J.A. 16. At the second
incorporate an overlapping “Y” design similar to the pattern step, the district court found that an ordinary observer would
disclosed in the ’946 patent, as shown below. J.A. 5. not purchase Home Expressions’s basket with the ornamental
“Y” design believing that the purchase was for an ornamental
“Y” design applied to a chair, as protected by the ’946
patent. Accordingly, the district court dismissed the complaint
pursuant to Rule 12(b)(6) for failing to set forth a plausible
claim of infringement.

Curver timely appealed to this court. We have jurisdiction


pursuant to 28 U.S.C. § 1295(a)(4)(A).

STANDARD OF REVIEW

[2] [3] We review a decision to grant a motion to dismiss


under regional circuit law. C&F Packing Co. v. IBP, Inc., 224
F.3d 1296, 1306 (Fed. Cir. 2000). Under Third Circuit law,
we review a district court’s grant of a motion to dismiss under
Rule 12(b)(6) de novo. Sands v. McCormick, 502 F.3d 263,
267 (3d Cir. 2007).

Curver filed a complaint against Home Expressions in district


court accusing these basket products of infringing the ’946 DISCUSSION
patent. Home Expressions filed a motion to dismiss Curver’s
complaint under Rule 12(b)(6) for failing to set forth a [4] [5] On appeal, Curver argues that in determining that
plausible claim of infringement. The district court granted the the scope of its design patent was limited to a chair, the
motion. district court improperly relied on claim language reciting
a “pattern for a chair,” rather than focusing on the figures
[1] To determine whether the complaint stated a plausible which are devoid of any chair illustrations. Given that the
infringement claim, the district court conducted a two-step figures fail to illustrate any particular article of manufacture, 1
analysis. First, it construed the scope of the design patent. Curver’s argument effectively collapses to a request for a
Second, it compared the accused products to the claimed patent on a surface ornamentation design per se. As Curver
design as construed to determine whether the products itself acknowledges, our law has never sanctioned granting a
infringed. Under the “ordinary observer” test, an accused design patent for a surface ornamentation in the abstract such
product infringes a design patent if “in the eye of an ordinary that the patent’s scope encompasses every possible article of
observer ... two designs are substantially the same,” such manufacture to which the surface ornamentation is applied.
that “the resemblance is such as to deceive such an observer, Oral Arg. at 10:41–11:04. We decline to construe the scope of
inducing him to purchase one supposing it to be the other ....” a design patent so broadly here merely because the referenced
Gorham Co. v. White, 81 U.S. (14 Wall.) 511, 528, 20 article of manufacture appears in the claim language, rather
L.Ed. 731 (1871) (articulating the “ordinary observer” test than the figures.
for design patent infringement); Egyptian Goddess, Inc. v.
Swisa, Inc., 543 F.3d 665, 672 (Fed. Cir. 2008) (en banc) *3 [6] This is a case of first impression. Under 35 U.S.C.
(making the “ordinary observer” test in Gorham the sole § 171, federal statute permits patent protection for a “new,
test for determining design patent infringement). At the first original and ornamental design for an article of manufacture.”
step, the district court construed the scope of the ’946 patent To define the scope of a design patent, we have traditionally

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focused on the figures illustrated in the patent. See, e.g., Pac. Agency practice is in line with this precedent. For over one
Coast Marine Windshields Ltd. v. Malibu Boats, LLC, 739 hundred years, the Patent Office has made clear that it does
F.3d 694, 702 (Fed. Cir. 2014) (“[I]n design patents, unlike not grant patents for designs disembodied from an article of
utility patents, the claimed scope is defined by drawings rather manufacture. In Ex parte Cady, an artist applied for a design
than language ....”); In re Daniels, 144 F.3d 1452, 1456 (Fed. patent on an illustration of “Peter Rabbit,” a character in
Cir. 1998) (“It is the drawings of the design patent that provide a well-known children’s book. 1916 Dec. Comm’r Pat. 62
the description of the invention.”); In re Klein, 987 F.2d 1569, (1916). The Commissioner of Patents up-held the examiner’s
1571 (Fed. Cir. 1993) (“As is usual in design applications, rejection of the application, explaining:
there is no description other than the drawings.”); In re Mann,
861 F.2d 1581, 1582 (Fed. Cir. 1988) (“The claim at bar, as in
all design cases, is limited to what is shown in the application [a] disembodied design or a mere
drawings.”). But critically, none of these cases confront the picture is not the subject of [design]
atypical situation we have here, where all of the drawings fail patent, and it follows that the
to depict an article of manufacture for the ornamental design. specification must not so indicate ....
Thus, we address for the first time whether claim language The invention is not the article and is
specifying an article of manufacture can limit the scope of not the design per se, but is the design
a design patent, even if that article of manufacture is not applied.
actually illustrated in the figures. Given that long-standing
precedent, unchallenged regulation, and agency practice all
consistently support the view that design patents are granted Id. at 68 (emphases in original). Consistent with precedent
only for a design applied to an article of manufacture, and and agency practice, the Patent Office promulgated 37 C.F.R.
not a design per se, we hold that claim language can limit the
§ 1.153 2 in 1959, specifying rules for the form and content
scope of a design patent where the claim language supplies
of design patent applications. Curver, who does not challenge
the only instance of an article of manufacture that appears
this regulation, is bound by it here. Section 1.153(a) provides:
nowhere in the figures.

In Gorham, the leading design patent case decided more than


one hundred years ago, the Supreme Court stated that “[t]he The title of the design must designate
acts of Congress which authorize the grant of patents for the particular article. No description,
designs” contemplate “not an abstract impression, or picture, other than a reference to the drawing,
but an aspect given to those objects mentioned in the acts.” 81 is ordinarily required. The claim shall
U.S. at 524. In characterizing the invention in a design patent, be in formal terms to the ornamental
the Supreme Court focused not only on the distinctiveness design for the article (specifying
of the design pattern itself, but how the design transformed name) as shown, or as shown and
the appearance of the “article of manufacture” to which the described.
design was applied. Id. at 524–25 (“And the thing invented
or produced, for which a patent is given, is that which gives
a peculiar or distinctive appearance to the manufacture, or § 1.153(a) (emphasis added). This regulation tells us two
article to which it may be applied, or to which it gives form.”). things: 1) the claim is not directed to a design per se, but
a design for an identified article, and 2) the scope of the
Decades later, our predecessor court reinforced Gorham’s design claim can be defined either by the figures (“as shown”)
application-focused view of design patents, stating that “it is or by a combination of the figures and the language of the
the application of the design to an article of manufacture that design patent (“as shown and described”). Id. Thus, to obtain
Congress wishes to promote, and an applicant has not reduced a design patent, § 1.153(a) requires that the design be tied to a
his invention to practice and has been of little help to the art particular article, but this regulation permits claim language,
if he does not teach the manner of applying his design.” In re not just illustration alone, to identify that article.
Schnell, 46 F.2d 203, 209 (CCPA 1931) (emphasis added).
*4 The Patent Office’s guidelines governing examination
procedure make clear that a design patent will not be granted

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unless the design is applied to an article of manufacture. The ornamental design applied to a chair. Because the “pattern for
MPEP defines “the subject matter which is claimed [a]s the a chair” amendments were made pursuant to § 1.153 requiring
design embodied in or applied to an article of manufacture (or the designation of a particular article of manufacture, and this
portion thereof)” and explains that the “[d]esign is inseparable requirement was necessary to secure the patent, we hold that
from the article to which it is applied and cannot exist alone the scope of the ’946 patent is limited by those amendments,
merely as a scheme of surface ornamentation.” MPEP § notwithstanding the applicant’s failure to update the figures
1502 (emphasis added). Furthermore, these guidelines direct to reflect those limiting amendments.
examiners to reject under 35 U.S.C. § 171 a claim “that is not
applied to or embodied in an article of manufacture.” MPEP Curver additionally argues that the district court misapplied
§ 1504.01. As the MPEP suggests, identifying the article of the test for determining infringement based on In re Glavas,
manufacture serves to notify the public about the general 230 F.2d 447, 450 (CCPA 1956). According to Curver, Glavas
scope of protection afforded by the design patent. See MPEP suggested that a surface ornamentation for an article of
§ 1503.01(I) (amended November 2015) (“The title of the manufacture can be anticipated by a prior art article that shares
design identifies the article in which the design is embodied the same surface ornamentation, even though the prior art
by the name generally known and used by the public and article is completely unrelated, i.e., non-analogous art, to the
may contribute to defining the scope of the claim.”). If we article shown in the design patent. Appellant’s Opening Br. at
adopted a design per se rule, “the title and claim language 15–18. Curver thus reads Glavas as stating that the underlying
would provide no useful information at all.” Sarah Burstein, article to which a surface ornamentation is applied is of no
The Patented Design, 83 TENN. L. REV. 161, 212 (2015). moment when considering anticipation. We have historically
In contrast, tying the design pattern to a particular article used the same test to determine anticipation and infringement.
provides more accurate and predictable notice about what is See, e.g., Peters v. Active Mfg. Co., 129 U.S. 530, 537, 9
and is not protected by the design patent. See id. 3 S.Ct. 389, 32 L.Ed. 738 (1889) (“That which infringes, if later,
would anticipate if earlier.”); Int’l Seaway Trading Corp. v.
[7] [8] On appeal, Curver argues that the district court Walgreens Corp., 589 F.3d 1233, 1239 (Fed. Cir. 2009) (“[I]t
improperly applied prosecution history estoppel to limit the has been well established for over a century that the same
scope of its design patent to a chair by focusing on the test must be used for both infringement and anticipation ....”).
design patent’s text instead of the figures. Curver further Seeking to extend Curver’s asserted anticipation rationale
notes that because the originally-filed claim reciting a “design from Glavas to infringement here, Curver argues that a
for a furniture part” was allowed by the examiner before product that applies a design pattern to a basket can infringe
the claim was amended to recite a “pattern for a chair,” a design patent that claims the same design pattern “for a
Curver did not surrender the broader scope encompassed by chair.” We disagree because we are unpersuaded that the
its original claim. Appellant’s Opening Br. at 18–21. While statement in Glavas about anticipation necessarily impacts
we agree that courts typically look to the figures to define the our infringement decision.
invention of the design patent, it is inappropriate to ignore the
only identification of an article of manufacture just because *5 First, we note that the statement about anticipation
the article is recited in the design patent’s text, rather than in Glavas is dictum and thus not binding. Because the
illustrated in its figures. Here, the prosecution history shows Glavas court was asked only to review a determination
that Curver amended the title, claim, and figure descriptions of obviousness, 4 the statement about anticipation was
to recite “pattern for a chair” in order to satisfy the article unnecessary to reach its holding about obviousness.
of manufacture requirement necessary to secure its design
patent. The examiner found that Curver’s original title of Second, Glavas does not appear to go as far as Curver
“FURNITURE (PART OF-)” was “too vague” to constitute would like. The relevant portion of Glavas cited by Curver
a “particular article” under § 1.153(a) and suggested that the contemplated anticipation by a prior art article having a
title be amended to read “Pattern for a Chair.” J.A. 61. Curver different “use” than the article illustrated in the design patent
did not dispute the validity of that requirement and instead but nevertheless sharing “substantially the same appearance.”
amended the title, claim, and figure descriptions to clarify that Glavas, 230 F.2d at 450 (“It is true that the use to which
the pattern was for a chair “as required in the Office Action.” an article is to be put has no bearing on its patentability
J.A. 69. The Patent Office accepted these amendments and as a design and that if the prior art discloses any article of
did not require Curver to supply new drawings illustrating the substantially the same appearance as that of an applicant, it

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observer test must logically be the sole test for anticipation as


is immaterial what the use of such article is. Accordingly,
so far as anticipation by a single prior art disclosure is well”). To the extent Glavas’s dictum discussing anticipation
concerned, there can be no question as to nonanalogous art is in tension with Egyptian Goddess, that dictum must give
in design cases.”). Contrary to Curver’s assertion, Glavas’s way to the ordinary observer test, which controls for purposes
dictum did not state that a design patent disclosing a surface of Curver’s appeal in this design patent infringement case.
ornamentation applied to a given article (e.g., an ornamental Under this ordinary observer test, Curver does not dispute
drawing on the side of a flower pot) can be anticipated by an that the district court correctly dismissed Curver’s claim of
unrelated article having a very different physical appearance infringement, for no “ordinary observer” could be deceived
and form (e.g., cover of a laptop computer). Here, there is into purchasing Home Expressions’s baskets believing they
no dispute that a basket embodying a particular ornamental were the same as the patterned chairs claimed in Curver’s
pattern is not substantially similar in appearance to a chair patent. See Oral Arg. at 6:26–6:59. Thus, for all of the above
embodying that same pattern such that the former would reasons, we find that Curver’s reliance on Glavas lacks merit.
infringe a design patent covering the latter. See Oral Arg. at
6:26–6:59.
CONCLUSION
[9] [10] [11] Third, even if Glavas’s dictum permitted
anticipation by articles of manufacture that looked distinctly *6 We have considered Curver’s remaining arguments and
different from the article illustrated in the design patent, that find them unpersuasive. Accordingly, we affirm the district
dictum is subject to our en banc decision in Egyptian Goddess, court’s grant of Home Expressions’s motion to dismiss the
which changed the standard for determining design patent complaint for failure to state a plausible claim of design patent
infringement to focus solely on the “ordinary observer” test. infringement.
Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 678 (Fed.
Cir. 2008) (holding that “the ‘point of novelty’ test should AFFIRMED
no longer be used in the analysis of a claim of design patent
infringement” and that the “sole test” should be “the ‘ordinary
observer’ test” based on substantial visual similarity between COSTS
the accused product and claimed design). Because we use
the same test for determining infringement and anticipation, No costs.
the ordinary observer test is now the sole controlling test for
determining anticipation of design patents too. Int’l Seaway
Trading Corp., 589 F.3d at 1240 (holding that in light of All Citations
Egyptian Goddess, “we now conclude that the ordinary
--- F.3d ----, 2019 WL 4308879

Footnotes
1 In its Reply, Curver argues that the figures depict a “three-dimensional panel structure that includes the ornamental Y
pattern,” and that under Samsung Electronics Co. v. Apple Inc., ––– U.S. ––––, 137 S. Ct. 429, 435, 196 L.Ed.2d 363
(2016), this “panel” provides the requisite “article of manufacture” because it is a “component” of a product. Appellant’s
Reply Br. at 6–7. This is the first time on appeal Curver attempts to identify any article of manufacture in the drawings,
and thus we find this argument waived. In any event, we note that we are unpersuaded that Curver’s purported panel
constitutes the type of “component” contemplated by Samsung as being an “article of manufacture.” In Samsung, the
components covered by Apple’s design patents were parts of a concrete “multicomponent” smartphone product, not
a surface ornamentation disembodied from any identifiable product, as here. 137 S. Ct. at 433–35. Taking Curver’s
argument to its logical extreme, any applicant could potentially obtain a patent on a two-dimensional graphic so long as
it is illustrated with some thickness such that it could constitute a panel “component” that is part of a larger product.
2 We discuss the pre-America Invents Act (AIA) version of 37 C.F.R. § 1.153 because the ’946 patent was filed on April
8, 2011, before September 16, 2012, the effective date of the AIA.
3 Limiting the scope of a design patent based on disclosed articles of manufacture also promotes the administrability of
the examination process by imposing practicable limits on prior art searching, which would otherwise be unduly time-
consuming. Id. Given that inventors of creative designs can seek protection through copyright, placing such burdens on

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Curver Luxembourg, SARL v. Home Expressions Inc., --- F.3d ---- (2019)
2019 WL 4308879

the patent system seems particularly unnecessary. See Star Athletica, L.L.C. v. Varsity Brands, Inc., ––– U.S. ––––, 137
S. Ct. 1002, 1010, 197 L.Ed.2d 354 (2017) (stating that copyright protects “pictorial, graphic, or sculptural feature[s]” that
are separable from a useful article).
4 Specifically, the Glavas court was asked to address whether a prior art reference showing a pillow could serve as
analogous art for purposes of rendering obvious a design patent application for a swimming “float.” Glavas, 230 F.2d
at 449.

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