United States: Fresh From The Bench: Recent Patent Cases From The Federal Circuit

Last Updated: February 11 2014
Article by Peter Heuser

The Supreme Court agrees to hear Akamai and Nautilus cases.

ln Akamai Limelight Networks, Inc.,692 F.3d 1301 (Fed. Cir. 2012), a 6-5 majority of the en banc Federal Circuit significantly altered the landscape of indirect patent infringement by making it easier to prove induced infringement in patent cases involving multiple actors. A majority of the court overruled BMC Resources, lnc. v. Paymentech, L.P.,498 F.3d 1373 (Fed. Cr.2007), in holding that a patentee claiming induced infringement no longer has to show that a single entity is liable for direct infringement. The majority opinion in Akamai established what has been called an "inducement only rule," which makes the inducing entity liable on greatly enlarged grounds, such as potentially advising or encouraging acts that may constitute direct infringement, even though there is no single party, alone or vicariously, that is a direct infringer of the patented method.

ln Nautilus, lnc. v. Biosig lnstruments, 1nc.,715 F. 3d 891 (Fed. Cir. 2013), the issue is whether the Federal Circuit's acceptance of ambiguous patent claims with multiple reasonable interpretations - so long as the ambiguity is not "insoluble" by a court - defeats the statutory requirement of particular and distinct patent claiming. This case has localflavor because Nautilus is based in Vancouver and the case is being handled by our colleague John Vandenberg of Klarquist Sparkman.

Pacific Coast Marine Windshields Limited v. Malibu Boats. Fed. Cir. No. 2013-1199 (1/8/2014)

This is a design patent infringement case in which the Circuit reversed summary judgment of non-infringement. The district court found that prosecution history estoppel barred the infringement claim. The panel rejected Pacific's contention that prosecution history estoppel did not apply to design patents but reversed the summary judgment based upon its holding that the accused design was not within the scope of the subject matter surrendered during prosecution.

The patent applicant filed an application directed to several different embodiments of a marine windshield. ln response to a restriction requirement in which the examiner determined that there were five patentably distinct groups of designs, the applicant elected the embodiment of Figure 1, amending the claim to recite "the ornamental design of a marine windshield with a frame, and a pair of tapered corner posts," removing the original claim language stating "with vent holes and without said vent holes, and with a hatch and without said hatch."

Figures in original patent filing.

The design patent subsequently issued and Pacific Coast sued Malibu Boats that sold the boat windshield shown below that included three trapezoidal holes in the corner post.

Accused Malibu Boats Windshield.

The district court granted Malibu Boats' motion for summary judgment of non-infringement based on prosecution history estoppel, determining that the applicant had surrendered the designs reflected in the cancelled figures.

The Federal Circuit first considered whether prosecution history estoppel should even apply to design patents, an issue which it stated had not yet been decided by the Circuit. Before doing so, however, the court compared the infringement tests for utility and design patents.

For design patents, the concepts of literal infringement and equivalents infringement are intertwined. Unlike the provisions defining infringement of a utility patent, the statutory provision on design patent infringement does not require literal identity, instead imposing liability on anyone who applies the patented design, or any colourable imitation thereof, to any article of manufacture for sale, or sells an article of manufacture to which such design has been applied. 35 USC § 289. Under the leading Supreme Court case of Gorham Mfg. Co. v. White, 81 U.S. 511 (1871), the test for design patent infringement is whether in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other. Id. at 528. Thus, the test for design patent infringement is whether "the accused design could not reasonably be viewed as so similar to the patented 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. Egyptian Goddess, Inc. v. Swisa, Inc., 543 F. 3d 665, 683 (Fed. Cir. 2008) (quoting Gorham, 81 U.S. at 528).

Turning to the issue of whether prosecution history estoppel should apply to design patents, the panel stated that the same principles of public notice that underlie prosecution history estoppel apply to design patents as well as utility patents. With each type of patent, prosecution history estoppel promotes the "clarity [that] is essential to promote progress." Festo Corp. v. Shokefsu Kinzoku Kogyo Kabushiki Co., 535 U.5.722,730 (2002). Refusing to apply the principles of prosecution history estoppel to design patents would undermine the "definitional and public-notice functions of the statutory claiming requirement." Warner-Jenkinson Co. v. Hilton Davis Chem. Co.,520 U.S. 17, 29 (1987).

The panel then turned to whether the principles of prosecution history estoppel bar the infringement claim in this case, and asked three questions: (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. ln answer to the first question the panel found that there was a surrender because it is the drawings of a design patent that provide the description of the invention. Here, in response to a restriction requirement, the applicant cancelled figures associated with all but one of the groups identified by the examiner. By cancelling figures showing corner posts with two holes and no holes, the applicant surrendered such designs and conceded that the claim was limited to what the remaining figure showed-a windshield with four holes in the corner post- and colorable imitations thereof.

As to the second question, the panel concluded that claim scope was surrendered in order to secure the patent, as required by the Supreme Court's decision in Fesfo. Here, while the surrender was not made for reasons of patentability (for example, anticipation, obviousness, or patentable subject matter), the surrender was made in order to secure the patent and, pursuant to Fesfo, that is sufficient.

The final question is whether the accused design is within the scope of the surrender. Here, the surrendered designs included windshields with two holes on the corner post. Although the accused design had a three-hole configuration and the originally-claimed design did not include a three-hole configuration, the district court found that "the accused design is still clearly within the 'territory between the original claim and the amended claim," i.e., between the claimed four-hole embodiment and the surrendered two-hole embodiment. However, the panel noted that the defendant did not argue that the scope of the surrendered two-hole embodiment extended to the three-hole embodiment because the three-hole embodiment was not colorably different from the two-hole embodiment. Since the patentee here did not argue that the accused design was within the scope of the surrendered two-hole embodiment, no presumption of prosecution history estoppel could arise. The panel thus held that prosecution history estoppel principles do not bar the infringement claim.

This case has implications on how we file design patent applications. We normally include embodiments with minor variations in order to avoid multiple filing, issue and maintenance fees. The examiners' review to determine if there must be a restriction is highly discretionary. Examiners typically are fairly lenient in that regard. However, this case tells us that if there is a restriction requirement, care must be taken to file divisional applications to alternate embodiments that might be commercially significant.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Emails

From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

*** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.