surrender : CAFC Alert

In case of first impression, the CAFC determines that the principles of prosecution history estoppel apply to design patents.

Linda Shapiro | January 31, 2014

Pacific Coast Marine v. Malibu Boats, LLC

Decided January 8, 2014

Before Dyk, Mayer, and Chen. Opinion by Dyk.

Summary

Bach’s original design patent application included multiple embodiments of a marine windshield.  The Examiner issued a restriction requirement, in response to which Bach elected the first embodiment, canceled the other four, and filed a divisional for the third embodiment only.  After the patent issued, Bach assigned it to Pacific Coast, which sued Malibu Boats for infringement.  The Malibu Boats windshield differed slightly from the patented embodiment, as well as the non-elected embodiments.  The district court granted Malibu Boats’ motion for partial summary judgment of non-infringement on the grounds of prosecution history estoppel, finding that “that, during prosecution, the applicant had surrendered the designs reflected in the canceled figures and amended the claim ‘in order to obtain the patent.’”  The CAFC reversed, holding that although “there was a surrender of claim scope during prosecution,” the accused design was not “within the scope of the surrender.”


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