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

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 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
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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

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 Exhibit 1

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

[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
where the claim language supplies the only instance of an
article of manufacture that appears nowhere in the figures;
[3] scope of patent was limited by amendments to originally-
filed claim, which recited a design for a furniture part, to recite
instead a pattern for a chair; and
[4] Patents
Eligible subject matter
Patent for an ornamental overlapping “Y” design
was limited to claim language reciting a “pattern
for a chair,” despite the fact that the figures were
devoid of any chair illustrations. 35 U.S.C.A. §
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
the figures in patent application included the
ornamental “Y” pattern, and that this panel
provided the requisite article of manufacture for
which a new, original, and ornamental design
may be patented because it was a component of a
product, where assignee raised this argument for
the first time in its reply brief. 35 U.S.C.A. § 171.
an article of manufacture just because the article
is recited in the design patent’s text, rather than
illustrated in its figures. 35 U.S.C.A. § 171.
Cases that cite this headnote
[9] Patents
Infringement

Cases that cite this headnote
[6] Patents
Construction and operation
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. 35 U.S.C.A. §
171; 37 C.F.R. § 1.153(a).
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.
Cases that cite this headnote
[10] Patents
Infringement
The ordinary observer test is the sole controlling
test for determining anticipation of design
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
Eligible subject matter
While courts typically look to the figures to
define the invention of the design patent, it is
inappropriate to ignore the only identification of
Appeal from the United States District Court for the District
of New Jersey in No. 2:17-cv-04079-KM-JBC, Judge Kevin
McNulty.

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Curver Luxembourg, SARL v. Home Expressions Inc., --- F.3d ---- (2019)
2019 WL 4308879
Attorneys and Law Firms
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
Chen, Circuit Judge
*1 Plaintiff-appellant Curver Luxembourg, SARL (Curver)
is the assignee of U.S. Design Patent No. D677,946
(’946 patent), entitled “Pattern for a Chair” and claiming
an “ornamental design for a pattern for a chair.” The
design patent’s figures, however, merely illustrate the design
pattern disembodied from any article of manufacture. Curver
sued defendant-appellee Home Expressions Inc. (Home
Expressions) in the United States District Court for the
District of New Jersey, alleging that Home Expressions made
and sold baskets that incorporated Curver’s claimed design
pattern and thus infringed the ’946 patent. Home Expressions
moved to dismiss under Federal Rule of Civil Procedure
12(b)(6), arguing that its accused baskets could not infringe
because the asserted design patent was limited to chairs only.
The district court agreed with Home Expressions and granted
the motion. The question on appeal is whether the district
court correctly construed the scope of the design patent as
limited to the illustrated pattern applied to a chair, or whether
the design patent covers any article, chair or not, with the
surface ornamentation applied to it. Because we agree with
the district court that the claim language “ornamental design
for a pattern for a chair” limits the scope of the claimed design
in this case, we affirm.
BACKGROUND
The ’946 patent was filed in 2011 and claims an overlapping
“Y” design, as illustrated in Figure 1 below. J.A. 24. The
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title, description of figures, and claim of the ’946 patent all
consistently recite a “pattern for a chair.” Id. But none of the
figures illustrate a design being applied to a chair.
The term “chair” first appeared through amendment during
prosecution. Curver originally applied for a patent directed to
a pattern for “furniture,” not a chair specifically. The original
title was “FURNITURE (PART OF-).” J.A. 66. The original
claim recited a “design for a furniture part.” J.A. 67. And
each of the figures was described as illustrating a “design
for a FURNITURE PART.” J.A. 66–67. None of the figures
illustrated a chair, any furniture, or any furniture part.
The Patent Office allowed the claim but objected to the title,
among other things. The examiner stated that under 37 C.F.R.
§ 1.153 and the Patent Office’s Manual of Patent Examining
Procedure (MPEP) § 1503(I), the title must designate a
“particular article” for the design. Under these provisions,
the examiner found that the title’s use of “Part of” and the
specification’s use of “Part” were “too vague” to constitute
an article of manufacture. J.A. 61. To remedy this problem,
the examiner suggested that the title be amended to read
“Pattern for a Chair,” and that “[f]or consistency,” the “title
[ ] be amended throughout the application.” Id. (noting that
“[t]he claim in a design patent must be directed to the design
for an article” under 35 U.S.C. § 171). Curver adopted
the examiner’s suggestion, replacing the original title with
“Pattern for a Chair” and replacing “furniture part” with
“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
in the Office Action.” J.A. 69. Curver did not amend the
figures to newly illustrate a chair. The examiner accepted
these amendments and allowed the application.
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DISTRICT COURT PROCEEDINGS
*2 Home Expressions makes and sells baskets that
incorporate an overlapping “Y” design similar to the pattern
disclosed in the ’946 patent, as shown below. J.A. 5.
Curver filed a complaint against Home Expressions in district
court accusing these basket products of infringing the ’946
patent. Home Expressions filed a motion to dismiss Curver’s
complaint under Rule 12(b)(6) for failing to set forth a
plausible claim of infringement. The district court granted the
motion.
[1] To determine whether the complaint stated a plausible
infringement claim, the district court conducted a two-step
analysis. First, it construed the scope of the design patent.
Second, it compared the accused products to the claimed
design as construed to determine whether the products
infringed. Under the “ordinary observer” test, an accused
product infringes a design patent if “in the eye of an ordinary
observer ... two designs are substantially the same,” such
that “the resemblance is such as to deceive such an observer,
inducing him to purchase one supposing it to be the other ....”
Gorham Co. v. White, 81 U.S. (14 Wall.) 511, 528, 20
L.Ed. 731 (1871) (articulating the “ordinary observer” test
for design patent infringement); Egyptian Goddess, Inc. v.
Swisa, Inc., 543 F.3d 665, 672 (Fed. Cir. 2008) (en banc)
(making the “ordinary observer” test in Gorham the sole
test for determining design patent infringement). At the first
step, the district court construed the scope of the ’946 patent
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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
design patent is limited to the ‘article of manufacture’—i.e.,
the product—listed in the patent.” J.A. 16. At the second
step, the district court found that an ordinary observer would
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).
DISCUSSION
[4] [5] On appeal, Curver argues that in determining that
the scope of its design patent was limited to a chair, the
district court improperly relied on claim language reciting
a “pattern for a chair,” rather than focusing on the figures
which are devoid of any chair illustrations. Given that the
figures fail to illustrate any particular article of manufacture, 1
Curver’s argument effectively collapses to a request for a
patent on a surface ornamentation design per se. As Curver
itself acknowledges, our law has never sanctioned granting a
design patent for a surface ornamentation in the abstract such
that the patent’s scope encompasses every possible article of
manufacture to which the surface ornamentation is applied.
Oral Arg. at 10:41–11:04. We decline to construe the scope of
a design patent so broadly here merely because the referenced
article of manufacture appears in the claim language, rather
than the figures.
*3 [6] 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
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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 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.
In Gorham, the leading design patent case decided more than
one hundred years ago, the Supreme Court stated that “[t]he
acts of Congress which authorize the grant of patents for
designs” contemplate “not an abstract impression, or picture,
but an aspect given to those objects mentioned in the acts.” 81
U.S. at 524. In characterizing the invention in a design patent,
the Supreme Court focused not only on the distinctiveness
of the design pattern itself, but how the design transformed
the appearance of the “article of manufacture” to which the
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
article to which it may be applied, or to which it gives form.”).
Decades later, our predecessor court reinforced Gorham’s
application-focused view of design patents, stating that “it is
the application of the design to an article of manufacture that
Congress wishes to promote, and an applicant has not reduced
his invention to practice and has been of little help to the art
if he does not teach the manner of applying his design.” In re
Schnell, 46 F.2d 203, 209 (CCPA 1931) (emphasis added).
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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 2 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
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.
*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
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. 3
[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
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 from Glavas to infringement here, Curver argues that a
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 our infringement decision.
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 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.
Curver additionally argues that the district court misapplied
the test for determining infringement based on In re Glavas,
230 F.2d 447, 450 (CCPA 1956). According to Curver, Glavas
suggested that a surface ornamentation for an article of
manufacture can be anticipated by a prior art article that shares
the same surface ornamentation, even though the prior art
article is completely unrelated, i.e., non-analogous art, to the
article shown in the design patent. Appellant’s Opening Br. at
15–18. Curver thus reads Glavas as stating that the underlying
article to which a surface ornamentation is applied is of no
moment when considering anticipation. We have historically
used the same test to determine anticipation and infringement.
See, e.g., Peters v. Active Mfg. Co., 129 U.S. 530, 537, 9
S.Ct. 389, 32 L.Ed. 738 (1889) (“That which infringes, if later,
would anticipate if earlier.”); Int’l Seaway Trading Corp. v.
has been well established for over a century that the same
test must be used for both infringement and anticipation ....”).
Seeking to extend Curver’s asserted anticipation rationale
product that applies a design pattern to a basket can infringe
a design patent that claims the same design pattern “for a
chair.” We disagree because we are unpersuaded that the
statement in Glavas about anticipation necessarily impacts
*5 First, we note that the statement about anticipation
in Glavas is dictum and thus not binding. Because the
Glavas court was asked only to review a determination
of obviousness, 4 the statement about anticipation was
unnecessary to reach its holding about obviousness.
Second, Glavas does not appear to go as far as Curver
would like. The relevant portion of Glavas cited by Curver
contemplated anticipation by a prior art article having a
different “use” than the article illustrated in the design patent
but nevertheless sharing “substantially the same appearance.”
Glavas, 230 F.2d at 450 (“It is true that the use to which
an article is to be put has no bearing on its patentability
as a design and that if the prior art discloses any article of
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
concerned, there can be no question as to nonanalogous art
in design cases.”). Contrary to Curver’s assertion, Glavas’s
dictum did not state that a design patent disclosing a surface
ornamentation applied to a given article (e.g., an ornamental
drawing on the side of a flower pot) can be anticipated by an
unrelated article having a very different physical appearance
and form (e.g., cover of a laptop computer). Here, there is
no dispute that a basket embodying a particular ornamental
pattern is not substantially similar in appearance to a chair
embodying that same pattern such that the former would
infringe a design patent covering the latter. See Oral Arg. at
6:26–6:59.
[9] [10] [11] Third, even if Glavas’s dictum permitted
anticipation by articles of manufacture that looked distinctly
different from the article illustrated in the design patent, that
dictum is subject to our en banc decision in Egyptian Goddess,
which changed the standard for determining design patent
infringement to focus solely on the “ordinary observer” test.
Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 678 (Fed.
Cir. 2008) (holding that “the ‘point of novelty’ test should
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
the accused product and claimed design). Because we use
the same test for determining infringement and anticipation,
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
Egyptian Goddess, “we now conclude that the ordinary
well”). To the extent Glavas’s dictum discussing anticipation
is in tension with Egyptian Goddess, that dictum must give
way to the ordinary observer test, which controls for purposes
of Curver’s appeal in this design patent infringement case.
Under this ordinary observer test, Curver does not dispute
that the district court correctly dismissed Curver’s claim of
infringement, for no “ordinary observer” could be deceived
into purchasing Home Expressions’s baskets believing they
were the same as the patterned chairs claimed in Curver’s
patent. See Oral Arg. at 6:26–6:59. Thus, for all of the above
reasons, we find that Curver’s reliance on Glavas lacks merit.
CONCLUSION
*6 We have considered Curver’s remaining arguments and
find them unpersuasive. Accordingly, we affirm the district
court’s grant of Home Expressions’s motion to dismiss the
complaint for failure to state a plausible claim of design patent
infringement.
AFFIRMED
COSTS
No costs.
All Citations
--- 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)
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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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