“Surgisil appears to continue a recent trend of court decisions and academic literature focusing on the statutory phrase ‘the article of manufacture’ with regard to both patent prosecution and patent infringement enforcement.”
Last week, the Federal Circuit Court reversed the Patent Trial and Appeal Board decision in In re Surgisil, L.L.P., overturning the Board’s ruling that a design for a rolled-paper art tool for blending anticipated Surgisil’s (Applicant) claimed lip implant. In re Surgisil, L.L.P., No. 2020-1940, 2021 WL 4515275 (Fed. Cir. Oct. 4, 2021). Although the “stump” art tool cited as prior art in Surgisil resembled Applicant’s lip implant (see below), the Federal Circuit found that Applicant’s “claim is limited to lip implants and does not cover other articles of manufacture.” Id. at *2.
From this finding, the Surgisil court appears to extrapolate a symmetry by which a design for an artist’s stump is both ineligible for citation against Applicant’s lip implant in patent prosecution and also not covered in a putative enforcement of Applicant’s design.
From Glavas to Surgisil
Since 1956, the general art in which a reference arises has been one consideration as to whether a reference is applicable as prior art in antedating a design patent application. See generally In re Glavas, 230 F.2d 447 (C.C.P.A. 1956). In Glavas, where the claimed design illustrated a swim float, the CCPA deemed it “plausible” that cited references directed to pillows may be combined in rejecting a swim float, whereas references directed to bottles, razor blade sharpeners, or soap were deemed to arise in arts too remote to be applicable. Id. at 802.
Although Glavas may have foreshadowed the ultimate result in Surgisil, i.e., disqualification of an artist’s stump as too remote in art from a lip implant, Surgisil’s alternative path to that result bears consideration. In particular, Surgisil suggests an analysis in which the standard for citation of prior art is not “art related” as articulated in Glavas, which could be analogized to the “non-analogous art” doctrine used for (non)obviousness arguments (MPEP 1504.02 “Anticipation does not require that the claimed design and the prior art be from analogous arts”). Rather, in Surgisil, the relevant test for applicable prior art is based upon the “article of manufacture” to which the claim applies.
Indeed, application of a standard tied to the article of manufacture extends a recent trend in the courts. For example, in a line of cases originally brought by Apple, Inc., the Supreme Court ultimately set forth the necessity to identify the article of manufacture to which a design patent applies in order to properly apportion damages in enforcement of a design patent. Likewise, the Federal Circuit issued a recent decision emphasizing the importance of the recited article of manufacture in enforcement of a design patent application. See, e.g., Curver Luxembourg SARL v. Home Expressions Inc., 938 F.3d 133 (Fed. Cir. 2019). The Curver court found that the article of manufacture recited in the title, figure descriptions, and claims limited the scope of enforceability of a design patent. In particular, a claimed “Pattern for a Chair” (see FIG. 1 below) was not enforceable against an accused infringer’s storage baskets, although the narrowed scope in that case also relied upon a Festo estoppel due to amendment of the title from “Furniture” (which arguably might have encompassed a basket) to “Pattern for a Chair,” which doomed the patentee’s enforcement effort.
As such, Surgisil appears to continue a recent trend of court decisions and academic literature focusing on the statutory phrase “the article of manufacture” with regard to both patent prosecution and patent infringement enforcement. The Surgisil case may have both positive and negative effects on patentability and enforcement as illustrated in the following exemplary considerations.
- It may be easier to prosecute a design patent, and more difficult to invalidate one, where prior art from a different “article of manufacture” is necessarily inapplicable.
- There may now be a symmetry, and attendant public perception of fairness, where art citable in relation to patentability is limited to designs against which the resulting patent would be enforceable. It remains to be seen whether the Federal Circuit will actually apply this rule going the other way: e.g., if Surgisil’s patent with a claim for “lip implant” were enforced against an art stump product, would the accused product be found to infringe?
- Applicants must think carefully before assigning (and/or amending) a title and claim in a design patent application because the words of the specification may be construed to connote an underlying article of manufacture. This process may further include providing verbal definition, such as a description of the title or terms used in the claim, in order to better support a desired scope for the article of manufacture.
- It is possible that the U.S Patent and Trademark Office may engage in further rulemaking related to the article of manufacture in a design patent, potentially making broad claiming of a design more difficult.
- Patentees who drafted patents under the Glavas “related art” standard may encounter even stricter limits on enforceable scope.
Position Yourself for a Positive Outcome
Thus, in the end, whether one finds that Surgisil is a boon, a burden, or something in between will depend upon the facts of a particular case. In order to best position themselves for a positive outcome, design patent applicants must think carefully before assigning a title and claim, knowing that the words of the specification will likely be construed to connote an underlying article of manufacture. Also, prospective patentees will want to ensure that their title and claim fully capture the breadth of any known or plausible future articles of manufacture.