Curver Luxembourg v. Home Expressions - Motion To Dismiss

Case 2:17-cv-04079-KM-JBC Document 13 Filed 07/24/17 Page 1 of 3 PageID: 44
SQUIRE PATTON BOGGS (US) LLP

Sean Neafsey
sean.neafsey@squirepb.com
One Riverfront Plaza
1037 Raymond Blvd.
Newark, New Jersey 07102
Telephone: (973) 848-5600
Facsimile: (973) 848-5601
Steven M. Auvil
steven.auvil@squirepb.com
4900 Key Tower, 127 Public Square
Cleveland, OH 44114
Telephone: (216) 479-8500
Facsimile: (216) 479-8780
Jeremy W. Dutra
Jeremy.dutra@squirepb.com
2550 M Street Northwest
Washington, D.C. 20037
Telephone: (202) 457-6000
Facsimile: (202) 457-6315
Attorneys for Defendant

Home Expressions Inc.
UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF NEW JERSEY
CURVER LUXEMBOURG, SARL, Case No. 2:17-cv-04079-KM-JBC
Plaintiff, HOME EXPRESSIONS INC.’S

NOTICE OF MOTION TO
v. DISMISS
HOME EXPRESSIONS INC., Motion Date: August 21, 2017
Defendant.
TO: ALL COUNSEL OF RECORD
PLEASE TAKE NOTICE that Defendant Home Expressions Inc. (“Home
Expressions”) will move this Court at the Martin Luther King Building & U.S.
Courthouse, 50 Walnut Street, Room 4015, Newark, NJ 07101, on August 21,
2017, before the Honorable Kevin McNulty, U.S.D.J., for entry of an Order
granting Home Expressions’ motion to dismiss in its entirety.
PLEASE TAKE FURTHER NOTICE that Home Expressions will rely
upon the Memorandum submitted with this Notice of Motion.
PLEASE TAKE FURTHER NOTICE that a Proposed Order granting
Home Expressions’ motion is attached.
Dated: July 24, 2017 Respectfully submitted,
/s/ Sean Neafsey

Sean Neafsey
1037 Raymond Blvd.
Telephone: (973) 848-5600
Facsimile: (973) 848-5601
Steven M. Auvil
Cleveland, OH 44114
Telephone: (216) 479-8500
Facsimile: (216) 479-8780
Jeremy W. Dutra
Telephone: (202) 457-6000
Facsimile: (202) 457-6315

Case 2:17-cv-04079-KM-JBC Document 13-1 Filed 07/24/17 Page 1 of 12 PageID: 47

Sean Neafsey
1037 Raymond Blvd.
Telephone: (973) 848-5600
Facsimile: (973) 848-5601
Steven M. Auvil
Cleveland, OH 44114
Telephone: (216) 479-8500
Facsimile: (216) 479-8780
Jeremy W. Dutra
Telephone: (202) 457-6000
Facsimile: (202) 457-6315


Plaintiff, MEMORANDUM OF POINTS

AND AUTHORITIES IN
v. SUPPORT OF HOME
EXPRESSIONS INC.’S
HOME EXPRESSIONS INC.,
MOTION TO DISMISS
Defendant.
TABLE OF CONTENTS
I. BACKGROUND FACTS .................................................................................. 1

II. ARGUMENT .................................................................................................. 5
A. Governing legal principles. .......................................................................... 5
B. The accused basket does not infringe the ‘946 patent as a matter of law. ... 6
III. CONCLUSION............................................................................................... 8
i
TABLE OF AUTHORITIES
Page(s)
Cases
Ashcroft v. Iqbal,
556 U.S. 662 (2009) ............................................................................................ 5
James v. City of Wilkes-Barre,

700 F.3d 675 (3d Cir. 2012) ................................................................................ 5
Kellman v. The Coca-Cola Co.,

280 F. Supp. 2d 670 (E.D. Mich. 2003) .............................................................. 7
Mayer v. Belichick,
605 F.3d 223 (3d Cir. 2010) ................................................................................ 2
MSA Prods. v. Nifty Home Prods.,

883 F. Supp. 2d 535 (D.N.J. 2012)...................................................................... 5
New England Health Care Emps. Pension Fund v. Ernst & Young,
LLP,
336 F.3d 495 (6th Cir. 2003)............................................................................... 2
P.S. Products, Inc. v. Activision Blizzard, Inc.,

140 F. Supp. 3d 795 (E.D. Ark. 2014) ................................................................ 7
Vigil v. The Walt Disney Co.,

No. C-97-4147, 1998 U.S. Dist. LEXIS 22853 (N.D. Cal. Dec. 1,
1998)................................................................................................................ 6, 7
Statutes
35 USC § 171(a)....................................................................................................... 6
ii
The scope of a design patent is extremely narrow. It is limited entirely to the
ornamental features illustrated in the patent’s drawings. A design patent,
moreover, is directed to the ornamental design of a particular article of
manufacture. Here, Curver Luxembourg, SARL (“Curver”) only obtained its
patent after amending the application to claim an “ornamental design for a pattern
for a chair.” The accused product is not a chair but rather a storage basket, and a
storage basket is not a chair. This simple fact ends the inquiry regarding any
possible infringement of Curver’s patent. Indeed, Curver’s claim that its patent
covers articles of manufacture beyond the article to which the ‘946 patent claim is
directed is irreconcilable with design patent law. Dismissal is therefore
appropriate.
I. BACKGROUND FACTS
Curver filed suit against Home Expressions on June 6, 2017, asserting
infringement of United States Patent No. D677,946 (“the ‘946 patent”). (ECF
No. 1, Compl., ¶¶6, 10, 11.) Curver accuses a basket made and sold by Home
Expressions of infringing the ‘946 patent. (Compl., ¶10.)
The’946 patent is a design patent, entitled “Pattern for a Chair.” (ECF No 7,
‘946 patent.) As initially filed, however, the application claimed “[t]he ornamental
design for a rattan design for a furniture part,” the PTO objected to the patent
specification because “a design patent must be directed to the design for an
1
Neafsey Declaration, Ex. A).)1 To obtain

article.” (April 25, 2012 Office Action ((Neafsey
allowance of the pa
patent,
tent, the applicant amended the title, specification, and claim to
limit the scope of the invention to a “pattern for a chair.” (August 27, 2012
Amendment at pp. 2, 3, 5 ((Neafsey

Neafsey Declaration, Ex. B).)
The ‘946 patent issued on March 19, 2013. (Compl., ¶6

¶6.)
.) The claim of the
‘946 patent reads: “The ornamental design for a pattern for a chair, as shown and
described.” (‘946 patent, Claim.) The patent contains five figures. (‘946 patent,
Description.) Below is a representative figure of the claim:
(Com
(Compl.,
pl., ¶7; ‘946 patent, Fig. 1.)
1
In deciding a R
Rule
ule 12(b)(6) motion, the Court may consider “exhibits attached to the complaint,
matters of public record, as well as undisputedly authentic documents if the complainant’s claims
are based upon these documents.” Mayer v. Belichick
Belichick,, 605 F.3d 223, 230 (3d C
Cir.
ir. 2010). Courts
consider the PTO prosecution history of the asserted patent in the context of deciding a motion to
dismiss because the prosecution history is a public record. See, e.g.
e.g., New England Health Care
Emps. Pension Fund v. Ernst & Young, LLP LLP,, 336 F.3d 495, 501 (6th Cir. 2003).
2
What Curver characterizes as its “overlapping ‘Y’ design” (Compl. ¶7) is
hardly novel. Its claimed interlacing pattern is well

well-known
known in Islamic art for
millennia.2 Indeed, the claimed design is a veritable copy of a two tho

thousand
usand years
old geometric design adorning the walls of the Kharraqan Towers, two
mausoleums constructed in 1067 and 1093 in the plains in northern Iran.
2
Home Expressions’ motion is directed to Curver’s failure to state a claim of infringement
against Home Expressions as a matter of law. Home Expressions nevertheless offers this
additional background information to prov
provide
ide the Court with the context for the asserted patent.
3
Carol Bier, Geometric Patterns and the Interpretation of Meaning: Two
Monuments in Iran, in BRIDGES: MATHEMATICAL CONNECTIONS IN ART, MUSIC,
AND SCIENCE 67, 70 (Reza Sarhangi ed. 2002); Shannon Hall, Material that can
grow when stretched is inspired by Islamic art, New Scientist (Mar. 16, 2016),
https://www.newscientist.com/article/2081174-material-that-can-grow-when-
stretched-is-inspired-by-islamic-art/.
A 1976 publication collecting patterns in Islamic art, moreover, disclosed an
elemental isometric pattern that is virtually identical to the pattern claimed in the
‘946 Patent.
4
Compare DAVID WADE, PATTERNS IN ISLAMIC ART 81 (Overlook Books, 1st ed.
1976) (https://patterninislamicart.com/drawings-diagrams-analyses/6/pattern-
islamic-art/pia081) (accessed on July 20, 2017) with ‘946 Patent, Fig. 1.
II. ARGUMENT
A. Governing legal principles.
“To survive a motion to dismiss, a complaint must contain sufficient factual
matter, accepted as true, ‘to state a claim to relief that is plausible on its face.’”
Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atlantic Corp. v.
Twombly, 550 U.S. 544, 570 (2007)). A claim is plausible on its face only “when
the plaintiff pleads factual content that allows the court to draw the reasonable
inference that the defendant is liable for the misconduct alleged.” Id. While a
court will accept well-pled allegations as true for the purposes of the motion, it will
“disregard rote recitals of the elements of a cause of action, legal conclusions, and
mere conclusory statements.” James v. City of Wilkes-Barre, 700 F.3d 675, 679
(3d Cir. 2012).
Dismissal of design patent infringement claims on Rule 12(b)(6) motions is
appropriate “where, as a matter of law, the court finds that no reasonable fact-
finder could find infringement.” MSA Prods. v. Nifty Home Prods., 883 F. Supp.
2d 535, 540 (D.N.J. 2012).
5
B. The accused basket does not infringe the ‘946 patent as a matter
of law.
The ‘946 patent specifically claims—and is plainly directed to—the
“ornamental design for a pattern for a chair, as shown and described.” (ECF No. 7,
‘946 patent) The ‘946 patent does not claim the ornamental design for a pattern for
a storage basket, nor does it claim the ornamental design for a pattern applied to
anything. The ‘946 claims an ornamental design for a pattern for a chair, and the
accused storage container is plainly not a chair.
Curver’s attempt to expand the scope of its claim from a chair pattern to a
pattern embodied in any product under the sun is unsupported by the law. Section
171 of the Patent Act makes certain “design[s] for an article of manufacture”
eligible for design patent protection. 35 USC § 171(a). Patent Rule 1.153 requires
an applicant to “designate the particular article,” and mandates that the claim “be
in formal terms to the ornamental design for the article (specifying name) as
shown, or as shown and described.” 37 CFR 1.153(a). In short, the design patent
grant is not to an ornamental design generally; rather, it is tethered to the particular
article of manufacture identified in the claim.
Several courts have rejected attempts by patentees, like Curver, to expand
the scope of a design patent beyond the particular article of manufacture specified
in the claim. For example, in Vigil v. The Walt Disney Co., No. C-97-4147, 1998
U.S. Dist. LEXIS 22853 (N.D. Cal. Dec. 1, 1998), the plaintiff accused a Disney
6
hockey stick key chain of infringing plaintiff’s design patent for a hockey stick
duck call. Id. at *9. The court dismissed the infringement claim because
“plaintiff’s duck call is not even an analogous article of manufacture when
compared with Disney’s key chain.” Id. Likewise, in Kellman v. The Coca-Cola
Co., 280 F. Supp. 2d 670 (E.D. Mich. 2003), plaintiffs accused defendants’ t-shirts
and bottle caps of infringement because they contained images substantially
similar to the “wing nut” novelty hat design depicted in plaintiffs’ design patent.
Id. at 672-73. The court dismissed plaintiffs’ design patent claims because the
article of manufacture to which the claimed design is directed—a novelty hat—is
“so entirely different” than the articles of manufacture accused of infringement—a
t-shirt and bottle cap. Id. at 679-80. In P.S. Products, Inc. v. Activision Blizzard,
Inc., 140 F. Supp. 3d 795 (E.D. Ark. 2014), plaintiffs accused defendants of
infringement based on defendants’ use of the ornamental design for a stun gun
depicted in plaintiffs’ design patent in defendants’ Call of Duty and Black Ops II
video games. Id. at 798-99. The court dismissed the infringement claim for failure
to state a claim because the asserted design patent was directed to a stun gun, not a
computer icon. Id. at 803.
Like in Vigil, Kellman, and P.S. Products, the article of manufacture to
which the claim of the ‘946 patent is directed—a chair—is entirely different than
the article of manufacture accused of infringement—a storage basket. There is no
7
legal merit to Curver’s claim that the accused storage baskets manufactured, sold,
and offered for sale by Home Expressions infringe the ‘946 patent.
III. CONCLUSION
Curver accuses Home Expressions’ basket of infringing the ‘946 patent.
That patent, however, is narrowly directed to an ornamental design for a particular
article of manufacture: a chair. A basket is not a chair. Curver cannot establish a
legal claim for relief; therefore, its Complaint must be dismissed.
Dated: July 24, 2017 Respectfully submitted,
/s/ Sean Neafsey

Sean Neafsey
1037 Raymond Blvd.
Telephone: (973) 848-5600
Facsimile: (973) 848-5601
Steven M. Auvil
Cleveland, OH 44114
Telephone: (216) 479-8500
Facsimile: (216) 479-8780
Jeremy W. Dutra
8

Telephone: (202) 457-6000
Facsimile: (202) 457-6315

9

Plaintiff, DECLARATION OF SEAN P.

NEAFSEY IN SUPPORT OF
v. HOME EXPRESSIONS INC.’S
MOTION TO DISMISS
Defendant.
I, Sean P. Neafsey, of full age and under penalty of perjury, declare as follows:
1. I am an attorney at Squire Patton Boggs (US) LLP, counsel for Home
Expressions Inc., in the above-captioned matter. I submit this Declaration in
support of Home Expressions Inc.’s Motion to Dismiss.
2. Attached hereto as Exhibit A is a true and correct copy of the April
25, 2012 Office Action, excerpted from the prosecution history of U.S. Patent No.
D677,946.
3. Attached hereto as Exhibit B is a true and correct copy of the August
27, 2012 Office Action Response, excerpted from the prosecution history of U.S.
Patent No. D677,946.
Dated: July 24, 2017 /s/ Sean P. Neafsey

Sean P. Neafsey
EXHIBIT A
EXHIBIT B

Plaintiff, [PROPOSED] ORDER

GRANTING HOME
v. EXPRESSIONS INC.’S
MOTION TO DISMISS
Defendant.
THIS MATTER having been opened by counsel for Defendant Home
Expressions Inc. for entry of an Order granting Home Expressions Inc.’s Motion to
Dismiss; and the Court having considered the submissions and arguments made in
support of and in opposition to the instant motion, and for the reasons set forth in
its corresponding Opinion;
IT IS on this ______ day of __________________, 2017,
ORDERED that Home Expressions Inc.’s Motion to Dismiss is hereby
GRANTED in its entirety; and it is further
ORDERED that Plaintiff’s Complaint is hereby dismissed with prejudice.
Honorable Kevin McNulty, U.S.D.J.

CERTIFICATE OF SERVICE
The undersigned hereby certifies that on this 24th day of July, 2017, copies
of Defendant Home Expressions Inc.’s Notice of Motion to Dismiss, Memorandum
of Points and Authorities in Support of Motion to Dismiss, Declaration of Sean P.
Neafsey with Exhibits, and Proposed Order were filed electronically with the Court
and notification of such filing was sent via CM/ECF to all attorneys of record.
/s/ Sean Neafsey

Sean Neafsey

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Case 2:17-cv-04079-KM-JBC Document 13 Filed 07/24/17 Page 1 of 3 PageID: 44

SQUIRE PATTON BOGGS (US) LLP

Attorneys for Defendant

UNITED STATES DISTRICT COURT

CURVER LUXEMBOURG, SARL, Case No. 2:17-cv-04079-KM-JBC

Plaintiff, HOME EXPRESSIONS INC.’S

TO: ALL COUNSEL OF RECORD

PLEASE TAKE NOTICE that Defendant Home Expressions Inc. (“Home

Courthouse, 50 Walnut Street, Room 4015, Newark, NJ 07101, on August 21,

granting Home Expressions’ motion to dismiss in its entirety.

PLEASE TAKE FURTHER NOTICE that Home Expressions will rely

upon the Memorandum submitted with this Notice of Motion.

PLEASE TAKE FURTHER NOTICE that a Proposed Order granting

Home Expressions’ motion is attached.

Dated: July 24, 2017 Respectfully submitted,

/s/ Sean Neafsey

Attorneys for Defendant

SQUIRE PATTON BOGGS (US) LLP

Attorneys for Defendant

UNITED STATES DISTRICT COURT

CURVER LUXEMBOURG, SARL, Case No. 2:17-cv-04079-KM-JBC

Plaintiff, MEMORANDUM OF POINTS

I. BACKGROUND FACTS .................................................................................. 1

James v. City of Wilkes-Barre,

Kellman v. The Coca-Cola Co.,

MSA Prods. v. Nifty Home Prods.,

P.S. Products, Inc. v. Activision Blizzard, Inc.,

Vigil v. The Walt Disney Co.,

The scope of a design patent is extremely narrow. It is limited entirely to the

ornamental features illustrated in the patent’s drawings. A design patent,

moreover, is directed to the ornamental design of a particular article of

manufacture. Here, Curver Luxembourg, SARL (“Curver”) only obtained its

directed is irreconcilable with design patent law. Dismissal is therefore

Curver filed suit against Home Expressions on June 6, 2017, asserting

Expressions of infringing the ‘946 patent. (Compl., ¶10.)

The’946 patent is a design patent, entitled “Pattern for a Chair.” (ECF No 7,

specification because “a design patent must be directed to the design for an

Neafsey Declaration, Ex. A).)1 To obtain

Amendment at pp. 2, 3, 5 ((Neafsey

The ‘946 patent issued on March 19, 2013. (Compl., ¶6

Description.) Below is a representative figure of the claim:

What Curver characterizes as its “overlapping ‘Y’ design” (Compl. ¶7) is

hardly novel. Its claimed interlacing pattern is well

millennia.2 Indeed, the claimed design is a veritable copy of a two tho

mausoleums constructed in 1067 and 1093 in the plains in northern Iran.

Carol Bier, Geometric Patterns and the Interpretation of Meaning: Two

Monuments in Iran, in BRIDGES: MATHEMATICAL CONNECTIONS IN ART, MUSIC,

A 1976 publication collecting patterns in Islamic art, moreover, disclosed an

islamic-art/pia081) (accessed on July 20, 2017) with ‘946 Patent, Fig. 1.

A. Governing legal principles.

“To survive a motion to dismiss, a complaint must contain sufficient factual

(3d Cir. 2012).

Dismissal of design patent infringement claims on Rule 12(b)(6) motions is

2d 535, 540 (D.N.J. 2012).

The ‘946 patent specifically claims—and is plainly directed to—the

accused storage container is plainly not a chair.

grant is not to an ornamental design generally; rather, it is tethered to the particular

article of manufacture identified in the claim.

IT IS on this day of ____________, 2017,