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Legal Update

IP Law Update: Federal Circuit Holds that Prosecution History Estoppel Applies to Design Patents

16 January 2014
Mayer Brown Legal Update

Pacific Coast Marine Windshields Limited v. Malibu Boats, LLC et al., Appeal No. 2013-1199

On January 8, 2014, the US Court of Appeals for the Federal Circuit held that defendants Malibu Boats, LLC, Marine Hardware, Inc., Tressmark, Inc., MH Windows, LLC, and John Pugh (collectively, Malibu Boats) were not entitled to a finding of non-infringement based on prosecution history estoppel of plaintiff Pacific Coast Marine Windshields Limited’s (Pacific Coast) design patent for an ornamental boat windshield design. In particular, in the opinion by Judge Dyk, the Federal Circuit made clear that the principles of prosecution history estoppel apply to design patents and reversed the district court’s summary judgment of non-infringement because the accused infringing design was not among the designs surrendered during prosecution.

Pacific Coast is the assignee of US Patent No. D555,070 (“the ’070 patent”) claiming “[t]he ornamental design for a machine windshield, as shown and described.” The corresponding figures show alternate views of windshields with four circular vent holes and a hatch panel. As filed on April 27, 2006, however, the design patent application claimed five different ornamental boat windshield designs. The accompanying figures in the original application depicted various embodiments of the claimed design with different vent hole configurations and including or excluding a hatch on the front of the windshield. During prosecution, the examiner issued a restriction requirement, and the applicant selected six figures representing a single design with four circular vent holes in a corner post and a hatch panel. The applicant amended the claim to remove the original claim language stating “with vent holes and without said vent holes, and with a hatch and without said hatch” and canceled figures corresponding to the other designs. The applicant obtained one divisional (D569,783, with no holes) but never filed for patents on the originally filed designs with two holes or with no hatch.

In 2011, Pacific Coast brought suit in the Middle District of Florida, alleging that Malibu Boats manufactured and sold boat windshields with a design that infringed the ’070 patent. The accused infringing design was in a boat windshield with three trapezoidal holes on the corner post. The district court granted Malibu Boats’ motion for partial summary judgment of non-infringement on the grounds of prosecution history estoppel. The district court found that, during prosecution, the applicant had surrendered the designs reflected in the canceled figures and amended the claim in order to obtain the patent. Recognizing that the accused design has one fewer vent hole than the embodiment, the district court explained that the accused design was clearly within the territory surrendered between the original claim and the amended claim, citing Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 740 (2002). Pacific Coast appealed.

The Federal Circuit’s analysis focused on two issues: (i) whether the principles of prosecution history estoppel apply to design patents as well as utility patents; and (ii) whether those principles bar Pacific Coast’s infringement claim.

The Federal Circuit rejected Pacific Coast’s argument that prosecution history estoppel should not apply to design patents, reasoning that “[r]efusing to apply the principles of prosecution history estoppel to design patents would undermine the ‘definitional and public-notice functions of the statutory claiming requirement.’”
The Court set forth a three-part test for when prosecution history estoppel could prevent a claim of infringement by an accused design:

(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.

In finding that prosecution history estoppel does not bar Pacific Coast’s infringement claim, the Federal Circuit found that (i) by removing broad claim language referring to alternate configurations and canceling the individual figures showing the unelected embodiments, the applicant narrowed the scope of the original application, and surrendered subject matter; (ii) in the design patent context, the surrender resulting from a restriction requirement invokes prosecution history estoppel if the surrender was necessary to secure the patent, as it was in this case because design patents must claim only one design; and (iii) claiming different designs, such as four holes and no holes in this case, does not necessarily suggest that the territory between those designs is also claimed. Accordingly, because the applicant surrendered the claimed design with two holes on the windshield corner post, but neither submitted nor surrendered any three-hole design, the Court found that the accused design is not within the scope of the subject matter surrendered during prosecution and no presumption of prosecution history estoppel could arise.

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