The Federal Circuit recently held that a design claim is limited to the article of manufacture identified in the claim.  In re: SurgiSil, L.L.P. et al., No. 2020-1940, 2021 WL 4515275 (Fed. Cir. Oct. 4, 2021).

The design patent application in SurgiSil claimed an “ornamental design for a lip implant.” During examination, the claimed design was rejected as anticipated by an art “stump” tool.

Claimed Design for a Lip Implant

Art Tool

In its rejection, the Patent Office asserted that the lip implant design was anticipated by the art tool.  The Patent Office cited its own Manual of Patent Examining Procedure and a 1956 Court of Customs and Patent Appeals case, In re: Glavas, 230 F.2d 447 (CCPA 1956) to support its assertion that nonanalogous art can be prior art to a design patent claim in an anticipation rejection.  SurgiSil argued that the degree to which two articles are analogous should be considered when applying the ordinary observer test, and that the art tool was not analogous enough to anticipate the lip implant.  The rejection, however, was maintained.

SurgiSil appealed to the Patent Trial and Appeal Board (“PTAB”).  Prior to SurgiSil’s oral argument at the PTAB, the Federal Circuit held in Curver 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 Luxembourg, SARL v. Home Expressions Inc., 938 F.3d 1334, 1340 (Fed. Cir. 2019).  In Curver, the Federal Circuit also noted that the “statement about anticipation in Glavas is dictum and thus not binding.”  Id. at 1342.  Citing Curver, SurgiSil argued that the differences in articles of manufacture are relevant to anticipation and that, because the art stump could not infringe the lip implant, then the art stump could not anticipate the lip implant.  The PTAB, however, sustained the rejection, stating that “unlike in Curver, the Figure [of the claimed lip implant] fully defines the invention of the claimed design and it is appropriate to ignore the identification of the article of manufacture in the claim language.”  Joint Appendix at Appx001, In re: SurgiSil, L.L.P., et al, No. 2020-1940, 2021 WL 4515275 (Fed. Cir. Oct. 4, 2021).

SurgiSil then appealed to the Federal Circuit.  The Patent Office presented four main arguments.  Namely, the Patent Office asserted that 1) design patent claims protect ornamental designs—not non-ornamental features such as intended use, 2) there is no analogous art requirement for anticipation in design patent law, 3) the Curver holding should be limited to an infringement analysis instead of being extended to an anticipation analysis during examination, and 4) the Curver holding should be limited to surface ornamentation claims instead of being extended to shape/configuration claims.

In response, SurgiSil pointed out that the Patent Office incorrectly equated the two issues of non-ornamental features and intended use—neither of which were relevant.  Regarding the analogous art requirement, SurgiSil noted that the decisions in Gorham and Egyptian Goddess, which set forth the ordinary observer test, involved identical articles of manufacture.  Gorham Co. v. White, 81 U.S. 511, 528 (1871); Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 655, 670 (Fed. Cir. 2008) (en banc).  Additionally, SurgiSil asserted that the ordinary observer test itself, which requires an observer to purchase one design thinking that it is the other, “presupposes a foundational degree of similarity or relatedness between the articles being compared.”  Corrected Brief of Appellants at 24, In re: SurgiSil, L.L.P., et al, No. 2020-1940, 2021 WL 4515275 (Fed. Cir. Oct. 4, 2021).  Finally, in response to the Patent Office’s argument that the Curver holding should not be extended to shape/configuration claims during examination, SurgiSil argued this would create absurd results and diverge from traditional patent principles.

The Federal Circuit agreed with SurgiSil and reversed the PTAB’s decision, noting that the PTAB “erred in holding that the claimed design is not limited to lip implants.”  SurgiSil, 2021 WL 4515275, at *2.  Specifically, it stated that “the claim is limited to lip implants and does not cover other articles of manufacture.”  Id.

The SurgiSil holding addresses an anticipation rejection and the scope of a design patent claim during examination.  In design patent law, however, there is the principle of “[t]hat which infringes, if later, would anticipate, if earlier.”  Peters v. Active Mfg. Co., 129 U.S. 530, 537 (1889).  Thus, the SurgiSil holding also limits the scope of issued design patent claims in the infringement context.

haynes & boone


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