Can a pattern on a textile good constitute a new, original, and ornamental design for the purpose of 35 U.S.C. § 171?

(a) IN GENERAL.-Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.

(b) APPLICABILITY OF THIS TITLE.-The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided.

(c) FILING DATE.-The filing date of an application for patent for design shall be the date on which the specification as prescribed by section 112 and any required drawings are filed.

While a utility patent covers how a product works, see 35 U.S.C. § 101, a design patent covers how a product looks, see 35 U.S.C. § 171(a). See also L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1123 (Fed. Cir. 1993) ("A design patent is directed to the appearance of an article of manufacture."). Thus, unlike a utility patent, "[a] design patent protects the non-functional aspects of an ornamental design as seen as a whole and as shown in the patent." Amini Innovation Corp. v. Anthony Cal., Inc., 439 F.3d 1365, 1370-71 (Fed. Cir. 2006). If a product feature "is essential to the use or purpose of the article . . . or affects the cost or quality," then, the feature is functional, and therefore, not protected by a design patent. Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 850-51, n. 10 (1982). On the other hand, if a product feature is not essential to the function or purpose of the item, then, the feature is not functional and may be protected. Id. A design patent can cover a portion of an article of manufacture or the entire article, 35 U.S.C. §

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101; however, when examining whether the patent is invalid as functional courts look to the entire design as opposed to whether one or two features in isolation serve functional purposes, KeyStone Retaining Wall Sys., Inc. v. Westrock, Inc., 997 F.2d 1444, 1450 (Fed. Cir. 1993). Although utility and design patents differ in terms of what they protect, the provisions of the AIA relating to utility patents also "apply to patents for designs, except as otherwise provided." 35 U.S.C. § 171(b). Thus, "[d]esign patents are subject to the same conditions on patentability as utility patents, including the nonobviousness requirement of 35 U.S.C. § 103." In re Borden, 90 F.3d 1570, 1574 (Fed. Cir. 1996).

The AIA provides that the following defenses apply to a lawsuit alleging the validity or infringement of a patent: (1) "[n]oninfringement, absence of liability for infringement or unenforceability," (2) "[i]nvalidity of the patent or any claim in suit on any ground specified in part II as a condition for patentability," or (3) "[i]nvalidity of the patent or any claim in suit." 35 U.S.C. § 282(b). "Only in those cases in which invalidity for lack of invention is so clearly apparent on the face of the patent that no testimony can change such conclusion is the court authorized in granting a summary judgment." Baker v. Webb, 112 F. Supp. 394, 394 (D. Or. 1953).

Design patents protect the visual impression—or "ornamentality" of a product—by rewarding inventors who develop innovative products with a limited time right to exclude others from making the product. See 35 U.S.C. §§ 101, 154, 171. Trademark law also protects the visual impression of a product but with the consumer (rather than the inventor) in mind: It serves to protect a consumer's expectation that when they purchase a product with a particular configuration, it comes from a particular source. See generally 15 U.S.C. § 1127 (noting that trademarks are used "to indicate the source of the goods"). Thus, while design patent infringement requires the patent holder to show that the accused product is substantially similar to the design patent drawings, trademark infringement requires proving that (1) a particular design has come to identify its source of manufacture (e.g., through the requisite distinctiveness and/or secondary meaning) and (2) a likelihood of consumer confusion. Because the tests differ, a design may find protection under the

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patent laws but not under the trademark laws. Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 214 (2000). Thus, patent law protects an inventor's right to exclude others from selling that inventor's innovative product, see 35 U.S.C. §§ 101, 154, 171, while "[t]rademark and unfair competition law protect against the misleading use of another's mark." Name.Space, Inc. v. Internet Corp. for Assigned Names & Numbers, 795 F.3d 1124, 1132 (9th Cir. 2015).

This is a case of first impression. Under 35 U.S.C. § 171, federal statute permits patent protection for a "new, original and ornamental design for an article of manufacture." To define the scope of a design patent, we have traditionally focused on the figures illustrated in the patent. See, e.g., Pac. Coast Marine Windshields Ltd. v. Malibu Boats, LLC, 739 F.3d 694, 702 (Fed. Cir. 2014) ("[I]n design patents, unlike utility patents, the claimed scope is defined by drawings rather than language ...."); In re Daniels, 144 F.3d 1452, 1456 (Fed. Cir. 1998) ("It is the drawings of the design patent that provide the description of the invention."); In re Klein, 987 F.2d 1569, 1571 (Fed. Cir. 1993) ("As is usual in design applications, 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 drawings."). But critically, none of these cases confront the atypical situation we have here, where all of the drawings fail to depict an article of manufacture for the ornamental design. Thus, we address for the first time whether claim language specifying an article of manufacture can limit the scope of a design

[938 F.3d 1340]

patent, even if that article of manufacture is not 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 only for a design applied to an article of manufacture, and not a design per se, we hold 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.

Agency practice is in line with this precedent. For over one hundred years, the Patent Office has made clear that it does not grant patents for designs disembodied from an article of manufacture. In Ex parte Cady, an artist applied for a design patent on an illustration of "Peter Rabbit," a character in a well-known children’s book. 1916 Dec. Comm’r Pat. 62 (1916). The Commissioner of Patents up-held the examiner’s rejection of the application, explaining:

[a] disembodied design or a mere picture is not the subject of [design] patent, and it follows that the specification must not so indicate .... The invention is not the article and is not the design per se, but is the design applied.

Id. at 68 (emphases in original). Consistent with precedent and agency practice, the Patent Office promulgated 37 C.F.R. § 1.153 in 1959, specifying rules for the form and content of design patent applications. Curver, who does not challenge this regulation, is bound by it here. Section 1.153(a) provides:

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) as shown, or as shown and described.

§ 1.153(a) (emphasis added). This regulation tells us two 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 design claim can be defined either by the figures ("as shown") or by a combination of the figures and the language of the

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design patent ("as shown and described"). Id. Thus, to obtain a design patent, § 1.153(a) requires that the design be tied to a particular article, but this regulation permits claim language, not just illustration alone, to identify that article.

The Patent Office’s guidelines governing examination procedure make clear that a design patent will not be granted unless the design is applied to an article of manufacture. The MPEP defines "the subject matter which is claimed [a]s the design embodied in or applied to an article of manufacture (or portion thereof) " and explains that the "[d]esign is inseparable from the article to which it is applied and cannot exist alone merely as a scheme of surface ornamentation." MPEP § 1502 (emphasis added). Furthermore, these guidelines direct examiners to reject under 35 U.S.C. § 171 a claim "that is not applied to or embodied in an article of manufacture." MPEP § 1504.01. As the MPEP suggests, identifying the article of manufacture serves to notify the public about the general scope of protection afforded by the design patent. See MPEP § 1503.01(I) (amended November 2015) ("The title of the design identifies the article in which the design is embodied by the name generally known and used by the public and may contribute to defining the scope of the claim."). If we adopted a design per se rule, "the title and claim language would provide no useful information at all." Sarah Burstein, The Patented Design, 83 TENN. L. REV. 161, 212 (2015). In contrast, tying the design pattern to a particular article provides more accurate and predictable notice about what is and is not protected by the design patent. See id.

On appeal, Curver argues that the district court improperly applied prosecution history estoppel to limit the scope of its design patent to a chair by focusing on the design patent’s text instead of the figures. Curver further notes that because the originally-filed claim reciting a "design for a furniture part" was allowed by the examiner before the claim was amended to recite a "pattern for a chair," Curver did not surrender the broader scope encompassed by its original claim. Appellant’s Opening Br. at 18–21. While we agree that courts typically look to the figures to define the invention of the design patent, it is inappropriate to ignore the only identification of an article of manufacture just because the article is recited in the design patent’s text, rather than illustrated in its figures. Here, the prosecution history shows that Curver amended the title, claim, and figure descriptions to recite "pattern for a chair" in order to satisfy the article of manufacture requirement necessary to secure its design patent. The examiner found that Curver’s original title of "FURNITURE (PART OF-)" was "too vague" to constitute a "particular article" under § 1.153(a) and suggested that the title be amended to read "Pattern for a Chair." J.A. 61. Curver did not dispute the validity of that requirement and instead amended the title, claim, and figure descriptions to clarify that the pattern was

[938 F.3d 1342]

for a chair "as required in the Office Action." J.A. 69. The Patent Office accepted these amendments and did not require Curver to supply new drawings illustrating the ornamental design applied to a chair. Because the "pattern for a chair" amendments were made pursuant to § 1.153 requiring the designation of a particular article of manufacture, and this requirement was necessary to secure the patent, we hold that the scope of the ’946 patent is limited by those amendments, notwithstanding the applicant’s failure to update the figures to reflect those limiting amendments.

(a) 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) as shown, or as shown and described. More than one claim is neither required nor permitted.

(b) The inventor's oath or declaration must comply with the requirements of § 1.63, or comply with the requirements of § 1.64 for a substitute statement.

(a) IN GENERAL.-The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.

(b) CONCLUSION.-The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.

(c) FORM.-A claim may be written in independent or, if the nature of the case admits, in dependent or multiple dependent form.

(d) REFERENCE IN DEPENDENT FORMS.-Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.

(e) REFERENCE IN MULTIPLE DEPENDENT FORM.-A claim in multiple dependent form shall contain a reference, in the alternative only, to more than one claim previously set forth and then specify a further limitation of the subject matter claimed. A multiple dependent claim shall not serve as a basis for any other multiple dependent claim. A multiple dependent claim shall be construed to incorporate by reference all the limitations of the particular claim in relation to which it is being considered.

(f) ELEMENT IN CLAIM FOR A COMBINATION.-An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

Here, we are not dealing with inconsistencies in the drawings, or inconsistencies between the drawings and the verbal description, but rather with a single representation of a design that is alleged to be of uncertain scope. The question is whether the disclosure sufficiently describes the design. In Nautilus, which dealt with indefiniteness in the utility patent context, the Supreme Court emphasized that § 112 ¶ 2 "require[s] that a patent's claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty." 134 S.Ct. at 2129. The Court further explained that § 112's definiteness requirement guards against "zone[s] of uncertainty" within the patent system, "which enterprise and experimentation may enter only at the risk of infringement claims." Id. (quoting United Carbon Co. v. Binney & Smith Co ., 317 U.S. 228, 236, 63 S.Ct. 165, 87 L.Ed. 232 (1942)). The purpose of § 112's definiteness requirement, then, is to ensure that the disclosure is clear enough to give potential competitors (who are skilled in the art) notice of what design is claimed—and therefore what would infringe. See Carnegie Steel Co. v. Cambria Iron Co., 185 U.S. 403, 437, 22 S.Ct. 698, 46 L.Ed. 968 (1902) (stating that "any description which is sufficient to ... serve as a warning to others of what the patent claims as a monopoly, is sufficiently definite to sustain the patent").

With this purpose in mind, it is clear that the standard for indefiniteness is connected to the standard for infringement. In the design patent context, one skilled in the art would look to the perspective of the ordinary observer since that is the perspective from which infringement is judged. A design patent is

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infringed if "an ordinary observer, familiar with the prior art, would be deceived into thinking that the accused design was the same as the patented design." Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 672 (Fed. Cir. 2008) (en banc); see also Gorham Mfg. Co. v. White, 14 Wall. 511, 81 U.S. 511, 528, 20 L.Ed. 731 (1871) (holding that design patent infringement is viewed from "the eye of an ordinary observer, giving such attention as a purchaser usually gives"). Given that the purpose of indefiniteness is to give notice of what would infringe, we believe that in the design patent context, one skilled in the art would assess indefiniteness from the perspective of an ordinary observer. Thus, a design patent is indefinite under § 112 if one skilled in the art, viewing the design as would an ordinary observer, would not understand the scope of the design with reasonable certainty based on the claim and visual disclosure.

We begin, as the district court did, with Lanard’s claim for design patent infringement. Determining whether a design patent has been infringed is a two-part test: (1) the court first construes the claim to determine its meaning and scope; (2) the fact finder then compares the properly construed claim to the accused design. Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1577 (Fed. Cir. 1995). In comparing the patented and accused design, the "ordinary observer" test is applied—i.e., infringement is found "[i]f, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other." Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 670 (Fed. Cir. 2008) (en banc) (quoting Gorham Mfg. Co. v. White, 81 U.S. (14 Wall.) 511, 528, 20 L.Ed. 731 (1871)). The infringement analysis must compare the accused product to the patented design, not to a commercial embodiment. See Payless Shoesource, Inc. v. Reebok Int’l, Ltd., 998 F.2d 985, 990 (Fed. Cir. 1993); see also High Point Design LLC v. Buyer’s Direct, Inc., 621 F. App'x 632, 642 (Fed. Cir. 2015) ("We have long-cautioned that it is generally improper to determine infringement by comparing an accused product with the patentee’s purported commercial embodiment." (citing Sun Hill Indus., Inc. v. Easter Unlimited, Inc., 48 F.3d 1193, 1196 (Fed. Cir. 1995), abrogated on other grounds by Egyptian Goddess, 543 F.3d at 672–79)).

To be clear, the "ordinary observer" test for design patent infringement requires the fact finder to "compar[e] similarities in overall designs, not similarities of ornamental features in isolation." Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 1335 (Fed. Cir. 2015) (citing Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1295 (Fed. Cir. 2010); Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d 1294, 1303–04 (Fed. Cir. 2010)). But, while the "ordinary observer" test is not an element-by-element comparison, it also does not ignore the reality that designs can, and often do, have both functional and ornamental aspects. See Amini Innovation Corp. v. Anthony Cal., Inc., 439 F.3d 1365, 1372 (Fed. Cir. 2006) ("The trial court is correct to factor out the functional aspects of various design elements, but that discounting of functional elements must not convert the overall infringement test to an element-by-element comparison."). Under the "ordinary observer" test, a court must consider the ornamental features and analyze how they impact the overall design. See Richardson, 597 F.3d at 1295 ("We looked to ornamental elements ... [and w]e concluded that both the claimed design and the accused designs contained those overall ornamental effects, thereby allowing for market confusion." (citing Crocs, 598 F.3d at 1303–07 )). That is what the district court did in this case.

In situations like this, where the sufficiency of a disclosure for purposes of § 112 depends on whether a drawing adequately discloses the design of an article, we believe that the level of detail required should be a function of whether the claimed design for the article is capable of being defined by a two-dimensional, plan- or planar-view illustration. The design for an entire shoe or teapot, for instance, is inherently three-dimensional and could not be adequately disclosed with a single, plan- or planar-view drawing. Whether an article infringed would depend on the perspective chosen to view the article, and a two-dimensional drawing provides no fixed perspective for viewing an article. The article would be infringing from one perspective but not from another. The design of a rug or placemat, on the other hand, is capable of being viewed and understood in two-dimensions through a plan- or planar-view illustration, which clearly defines the proper perspective. See Ex Parte Salsbury, 38 U.S.P.Q. 149, 1938 WL 28182, at *2 (Com'r Pat. & Trademarks May 5, 1938) ("It is recognized that flat articles can generally be sufficiently illustrated by a single view."). Such a claim, with a single drawing, would cover all similarly designed rugs or mats, even if one might have a low pile and the other a high pile (for a rug) or might be woven or textured fabric (for a placemat).

The government emphasizes that a shoe bottom is a three-dimensional article rather than a two-dimensional "ornament, impression, print, or picture to be applied to an article of manufacture," In re Schnell., 46 F.2d 203, 209 (C.C.P.A. 1931), and argues that the surface depths of a shoe bottom impact the visual impression of the design. The government is correct that a shoe sole is typically three-dimensional, with treads that may be convex or concave. And, indeed, many shoe bottom designers choose to claim their designs in a three dimensional fashion. But the fact that shoe bottoms can have three-dimensional aspects does not change the fact that their ornamental design is capable of being disclosed and judged from a two-dimensional, plan- or planar-view perspective—and that Maatita's two-dimensional drawing clearly demonstrates the perspective from which the shoe bottom should be viewed. A potential infringer is not left in doubt as to how to determine infringement. In this case, Maatita's decision not to disclose all possible depth choices would not preclude an ordinary observer from understanding the claimed design, since the design is capable of being understood from the two-dimensional, plan- or planar-view perspective

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shown in the drawing. See Asano, 201 U.S.P.Q. at 317.

We do not, of course, suggest that an applicant for a design of a shoe bottom could not choose to disclose his design from a three-dimensional perspective, as many do. If so, that would be the scope of the claimed design for purposes of judging obviousness, indefiniteness, or infringement. That is not what Maatita has done here.

CONCLUSION

Because a designer of ordinary skill in the art, judging Maatita's design as would an ordinary observer, could make comparisons for infringement purposes based on the provided, two-dimensional depiction, Maatita's claim meets the enablement and definiteness requirements of § 112. We therefore reverse the decision of the Board.

In the Examiner's statement, he cites, in support of his holding, Mallinson et al. v. Ryan (D.C.) 242 F. 951, 952. The reference patent to Schlechter shows a design for a collar or badge, supposed to be worn about the neck. The baldric in this patent shows the design of a dark stripe along each margin, and an intervening white stripe.

The reference patent to Shapack is a design for a shoe strap, or similar article, and consists of a strap with black marginal stripes and an intervening light stripe. Both the tribunals below seem to have been of the opinion, on the authority of Mallinson et al. v. Ryan, supra, that the design here presented does not involve patentable novelty.

In Mallinson et al. v. Ryan, supra, in the United States District Court, Southern District of New York, a design patent had been granted to the complainant in that suit, and suit had been brought thereon by bill, with allegations of unfair competition. Motion was made to dismiss on the ground that the patent on its face was void for lack of invention, and for other reasons. The design of said patent was for a textile fabric and consisted of alternating stripes of dark and light color, which stripes were separated or defined, not by straight lines, but by irregular and wavy lines, "whereby the monotonous continuity of the stripes is broken and a soft draped effect is imparted to the fabric bearing my design."

The court was of opinion that such a design was not patentable, and expressed itself as follows: "Can it conceivably involve patentable novelty to draw a few spaced apart parallel lines on a gown, a parasol, a shirt, a shawl, a rug, or the many other articles made up of textile fabrics? To so hold would undignify the whole theory of invention and transmute the simplest effort (not merely of a man skilled in the art, but of almost any person of ordinary intelligence) into the basis for the monopolistic grant which was intended to be a valuable reward for that which was really a contribution to the arts and sciences."

We agree with the Board of Appeals in its conclusion that there is nothing patentably novel in appellant's design. Alternating stripes of color, arranged as they are here, are sufficiently shown by the references. Novelty is claimed in the appearance of the transparent ribbon with colored edges, it being contended that such a design is entirely different in appearance from anything heretofore shown by the art. It cannot be successfully argued that patentability of a design may rest on color alone. It has been well settled in a long line of decisions that color, if an essential feature of a design, must be so defined or connected with some symbol or design "that other manufacturers may know what they may safely do. * * * Whether mere color can constitute a valid trade-mark may admit of doubt. Doubtless it may, if it be impressed in a particular design, as a circle, square, triangle, a cross, or a star. But the authorities do not go farther than this." A. Leschen

[80 F.2d 67]

& Sons Rope Co. v. Broderick & Bascom Rope Co., 201 U.S. 166, 171, 26 S.Ct. 425, 426, 50 L.Ed. 710. That has been the rule announced by this court. Lufkin Rule Co. v. Master Rule Mfg. Co., 40 F.(2d) 991, 17 C.C.P.A. (Patents) 1227; A. Leschen & Sons Rope Co. v. American Steel & Wire Co., 55 F.(2d) 455, 19 C.C.P.A. (Patents) 851; Weil-McClain Co. v. American Radiator Co., 57 F.(2d) 353, 19 C.C.P.A. (Patents) 1137. In A. Leschen & Sons Rope Co. v. American Steel & Wire Co., supra, in both the original and specially concurring opinions, the authorities on this subject are generally and exhaustively reviewed. The rule was the same in the Court of Appeals of the District of Columbia, our predecessor in this jurisdiction. In re American Circular Loom Co., 28 App.D.C. 446.

The fact that the design here presented shows a transparent portion rather than a stripe of different color, as it seems to us, creates no patentable novelty in the design. The fact that the material upon which the design is placed is in this case transparent, while it may create a more pleasing and beautiful effect, is indistinguishable in principle from a case where the material upon which the design was placed is translucent or opaque.