IP News

The district court concluded that the claims were directed to laws of nature, specifically Hooke's law and friction damping. See, id. The Federal Circuit followed the two-step test in Alice Corp. Pty. Ltd. v. CLS Bank International, 573 U.S. 208 (2014) to conduct its §101 analysis. See, id. at 9. At step one, the court looks to whether the claims are directed to "a law of nature, natural phenomenon, or abstract idea." Id. Here, the Federal Circuit found that the claims "are directed to tuning liners," and even AAM agreed that "the selection of frequencies for the liners to damp the vibrations … involves an application of Hooke's law." Id. at 10. The Federal Circuit found that "the patent claims do not describe a specific method for applying Hooke's law." Id. at 11.

While AAM argued that "tuning a liner such that it attenuates two different vibration modes is a process that involves more than simple application of Hooke's law," the Federal Circuit determined that this argument fails because "the solution to these desired results is not claimed in the patent." Id. at 12-13. Further, the court noted that it has "repeatedly held that features that are not claimed are irrelevant as to step 1 or step 2 of the Mayo/Alice analysis." Id. at 13. The Federal Circuit further found that there was "neither the specific of any novel computer modelling nor experimental modal analysis" disclosed in the patent, particularly in the independent claims at issue. Id. at 15. More specifically, "the claims' general instruction to tune a liner amounts to no more than a directive to use one's knowledge of Hooke's law, and possibly other natural laws, to engage in an ad hoc trial-and-error process of changing the characteristics of a liner until a desired result is achieved." Id. The court looked to the Supreme Court's analysis in Parker v. Flook to "reinforce [its] conclusion that a claim to a natural law concept without specifying the means of how to implement the concept is ineligible under section 101." Id. at 17.

With respect to step two, the Federal Circuit determined "nothing in the claims qualifies as an 'inventive concept' to transform the claims into patent eligible matter." Id. at 21. "The claimed advance is simply controlling various known characteristics of the liner so as to achieve attenuation of two vibration modes simultaneously." Id.

The dissent found that the majority "expands §101 well beyond its statutory gate-keeping function and the role of this appellate court well beyond its authority." Dissent at 1. In part, the dissent argued that the majority disregarded step two of the Alice/Mayo test. See, id. at 2. Judge Moore argued that the analysis conducted by the majority was based instead on enablement under 35 U.S.C. §112. See, id. Judge Moore stated that there are "many" inventive concepts in the '911 patent. See, id. at 4. She argued further that the majority rejected step two of the Alice/Mayo test. See, id. at 9. "Section 101 simply should not be this sweeping and manipulative. It should not be used to invalidate claims under standards identical to those clearly articulated in other statutory sections." Id. at 14. Judge Moore concluded by stating "the majority's validity goulash is troubling and inconsistent with the patent statute and precedent." Id. In briefly addressing the dissent, the majority stated that "an inadequately concrete claim is not saved from ineligibility by the presence of adequate concrete recitations in the specification or in other claims." Majority at 21.

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A Claim for a Chair Limits the Claim to a Chair

On Sept. 12, 2019, a Federal Circuit panel of Judges Chen, Hughes, and Stoll issued a per curium decision in Curver Luxembourg, SARL v. Home Expressions Inc., No. 2018-2214 (Fed. Cir. 2019). The Federal Circuit affirmed the decision of the United States District Court for the District of New Jersey that the claim language in U.S. Design Patent No. D677,946 (the '946 patent) limited the scope of the claimed invention to a chair.

The '946 patent is entitled "Pattern for a Chair" and claims "an ornamental design for a pattern for a chair." Id. at 2. However, the design figures just show the design pattern "disembodied from any article of manufacture." Id. Curver Luxembourg, SARL (Curver) owns the '946 patent and accused Home Expressions Inc. (Home Expressions) of patent infringement, accusing Home Expressions of making and selling baskets that incorporate the claimed design pattern. See, id. at 2. Home Expressions filed a 12(b)(6) motion to dismiss because the "accused baskets could not infringe because the asserted design patent was limited to chairs only." Id. The district court granted the motion. In affirming, the Federal Circuit found that the claim language "ornamental design for a pattern for a chair" limits the scope of the claimed design. Id.

The Federal Circuit noted that the term "chair" first appeared during the prosecution history of the '946 patent. See, id. at 3. While the original claim language was for "design for a furniture part," the Patent Office stated that this language was too vague. See, id. at 3-4. Curver adopted the Patent Office's recommendation and amended the title and claim language to read "Pattern for a Chair." See, id. at 4. At the district court, the claims were construed as being limited in scope to the design pattern of a chair. See, id. at 5. Since the accused product was a basket, the district court found that there was no infringement. See, id.

Curver argued that this was an improper limitation on the scope of its design patent. See, id. at 6. It argued that the figures are "devoid of any chair characteristics." Id. On appeal, the Federal Circuit noted that the 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." Id. at 7. The court declined to construe the scope of the patent so broadly. See, id. Somewhat atypically, none of the drawings in the '946 patent depicted an article of manufacture for the ornamental design. The only reference to the "chair" was in the claim language, and in a case of first impression, the Federal Circuit had to decide "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." Id. at 7-8. The court found that such language can limit the scope, particularly because design patents are granted for "design applied to an article of manufacture, and not a design per se." Id. at 8. The Federal Circuit noted that the Patent Office's guidelines require a design patent be applied to an article of manufacture in order to be granted. See, id. at 10. The court found it "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 the figures." Id. at 11.

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George Soussou is an associate at Patterson Belknap Webb & Tyler LLP. Jeff Ginsberg is a Partner at the firm and Assistant Editor of this newsletter.