United States: Prosecution History Estoppel Applies To Design Patents

In Pacific Coast Marine Windshields Ltd. v. Malibu Boats, LLC, No. 13-1199 (Fed. Cir. Jan. 8, 2014), the Federal Circuit reversed the district court's grant of SJ of noninfringement in favor of Malibu Boats, LLC ("Malibu Boats") based on prosecution history estoppel and remanded for further proceedings.

Pacific Coast Marine Windshields Limited ("Pacific Coast") is the assignee of U.S. Patent No. D555,070 ("the '070 patent") for an ornamental boat windshield design.  As originally filed, the '070 patent's application 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."  Slip op. at 2-3 (citation omitted).  During prosecution, the examiner issued a restriction requirement for five distinct groups of windshield designs:  windshields with (1) four vent holes and a hatch, (2) four holes and no hatch, (3) two holes and a hatch, (4) no holes and a hatch, and (5) no holes and no hatch.  The applicant elected Group I depicting four holes and a hatch, canceled figures representing the other design groups, and amended the claim accordingly.  The amended application issued as the '070 patent.  The applicant later obtained a patent for the no-hole design from a divisional of the originally filed application.

Pacific Coast sued Malibu Boats for infringement of the '070 patent based on a boat windshield with three vent holes on the corner post.  The district court granted Malibu Boats' motion for partial SJ of noninfringement on the ground of prosecution history estoppel.  The district court found that the applicant had surrendered the designs reflected in the canceled figures and amended the claim during prosecution in order to obtain the patent, and that the accused three-hole design fell within the territory surrendered between the original and amended claim.  Pacific Coast appealed.

"We conclude that the principles of prosecution history estoppel apply to design patents as well as utility patents."  Slip op. at 11.

The Federal Circuit held as an issue of first impression that the principles of prosecution history estoppel apply to design patents.  Reviewing the public-notice function of prosecution history estoppel in limiting infringement liability under the DOE for utility patents, the Court explained that the statutory "colorable imitation" standard for design patent infringement requires not identity but rather "sufficient similarity," and thus likewise involves the concept of equivalents.  Id. at 9.  The Court reasoned that, although claim scope in design patents is defined by drawings rather than language, refusing to apply the principles of prosecution history estoppel would undermine the definitional and public-notice functions of these claims, and thus held that prosecution history estoppel applies to design patents as well as utility patents. 

Applying the principles of prosecution history estoppel to the '070 patent, the Federal Circuit first held that there was a surrender of claim scope during prosecution.  The Court explained that because the applicant in response to the examiner's restriction requirement amended the claim by canceling figures showing corner posts with two holes and no holes, the applicant had surrendered such designs and limited the claim to the four-hole design and colorable imitations thereof. 

The Court next held that the claim scope was surrendered in order to secure the '070 patent.  According to the Court, although the surrender was made because of a restriction requirement and not to avoid prior art, and thus not for reasons of patentability, the doctrine is broader than that and "arises when an amendment is made to secure the patent and the amendment narrows the patent's scope."  Id. at 14 (quoting Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 736 (2002)).  The Court explained that because design patents may include only a single claim, and thus only one patentable design, "in design patents, unlike utility patents, restriction requirements cannot be a mere matter of administrative convenience."  Id.  Accordingly, the Court held that, in the design patent context, the surrender resulting from a restriction requirement invokes prosecution history estoppel if the surrender was necessary, as in Festo, to secure the patent. 

Lastly, the Federal Circuit held that Malibu Boats' accused design was not within the scope of the surrendered subject matter.  The Court rejected the district court's reasoning that by abandoning the
two-hole design and obtaining patents on the four-hole and no-hole designs, the applicant abandoned the range between four and zero, which included the accused three-hole design.  The Court concluded that the range concept did not work in the context of design patents where individual designs, instead of a range, were claimed, and that the applicant surrendered only the two-hole and not the accused
three-hole design.  Accordingly, the Court held that prosecution history estoppel did not bar Pacific Coast's infringement claim, reversed the district court's grant of SJ of noninfringement, and remanded for further proceedings.

This article previously appeared in Last Month at the Federal Circuit, February 2014.

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