In case of first impression, the CAFC determines that the principles of prosecution history estoppel apply to design patents.
| 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.”
Details
Bach’s original design patent application included five embodiments of a marine windshield:
| Windshield with four circular holes on the corner post, and a hatch(Figure 1) |  |
| Windshield with four circular or square holes on the corner post, and no hatch (Figures 7 and 12) |   |
| Windshield with no holes on the corner post, and a hatch (Figure 8) |  |
| Windshield with no holes on the corner post, and no hatch (Figures 9) |  |
| Windshield with two oval or rectangular holes on the corner post, and a hatch (Figures 10 and 11) |   |
The application as filed claimed an “ornamental design of a marine windshield with a frame, a tapered corner post with vent holes and without said vent holes, and with a hatch and without said hatch, as shown and described.”
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. Bach also amended the claim to read “the ornamental design of a marine windshield with a frame, and a pair of tapered corner posts.”
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, in that it had three trapezoidal holes on the corner post:
At the district court, Malibu Boats moved for partial summary judgment of non-infringement, asserting that Pacific Coast was estopped from asserting infringement on the grounds of prosecution history estoppel. The district court granted the motion, finding “that, during prosecution, the applicant had surrendered the designs reflected in the canceled figures and amended the claim ‘in order to obtain the patent’”; and that although there were differences between the accused design and the patented design, the accused design was “‘within ‘the territory [surrendered] between the original claim and amended claim.’”
The CAFC first had to consider whether the doctrine of prosecution history estoppel applies to design patents as well as utility patents. It noted that 35 U.S.C. 289 makes the test of design patent infringement either identity or “any colorable imitation thereof”; and that the Supreme Court, in interpreting the statute, has made the test
sufficient similarity—whether “the accused design could not reasonably be viewed as so similar to the claimed design that a purchaser familiar with the prior art would be deceived by the similarity between the claimed and accused designs, “‘inducing him to purchase one supposing it to be the other.’”
Nonetheless, the CAFC determined that prosecution history estoppel should apply to design patents because the principles of public notice that underlie prosecution history estoppel apply to design patents.
The CAFC then turned to the three questions that govern whether Bach’s actions resulted in prosecution history estoppel with respect to the design of Malibu Boats’ windshield: “(1) whether there was a surrender; (2) whether it was for reasons of patentability; and (3) whether the accused design is within the scope of the surrender.”
As to the first question, there was no serious doubt that there was in fact a surrender. As to the second question, the court concluded that in the context of a design application, the cancellation of drawings in response to a restriction requirement is an amendment necessity to secure the patent. The CAFC reasoned that the application as filed had multiple embodiments, the claim of a design application is defined by the drawings, and therefore the cancellation of drawings as the result of a restriction requirement constitutes a surrender. In so holding the CAFC reaffirmed that “[i]t does not matter that the surrender involved the cancellation of claims rather than amendment”; and that it also does not matter that the amendment was made for a reason other than to avoid prior art.
As to the third question, the critical factor was that none of the embodiments in the application as filed had three holes. Malibu Boats had argued that “that by abandoning a design with two holes and obtaining patents on designs with four holes and no holes, the applicant abandoned the range between four and zero.” The court rejected this argument, holding that “this range concept does not work in the context of design patents where ranges are not claimed, but rather individual designs. Claiming different designs does not necessarily suggest that the territory between those designs is also claimed.” Consequently, only the two-hole embodiment was surrendered. The record did not reflect surrender of a three-hole embodiment.
The CAFC accordingly reversed, holding that although “there was a surrender of claim scope during prosecution,” the accused design was not “within the scope of the surrender.”
Takeaway
Design patent applicants should continue to feel comfortable including multiple embodiments in a single application. However, they should be aware that the cancellation of embodiments in response to a restriction requirement may result in prosecution history estoppel.
