United States: "Cover Up What You Don't Want To See": Advantek Marketing v. Shanghai Walk-Long Tools (Fed. Cir., Aug. 1, 2018)

Advantek obtained U.S. Design Patent No. D715,006 ("D '006") on a "gazebo" without a cover, the gazebo essentially being a portable kennel. Figs. 1 and 2 from D '006 are reproduced below.

During prosecution of the application that later became D '006, the Examiner issued a Restriction Requirement. The Requirement split the application into two groups: a gazebo without a cover, and a gazebo with a cover. According to the Examiner, the "designs as grouped are distinct from each other...." Despite disagreeing with the Requirement, Advantek elected to prosecute the "gazebo without a cover" (as shown above) and cancelled a drawing that showed the gazebo with a cover. After further prosecution to overcome formalities objections and § 112 rejections, the D '006 patent issued.

Advantek sued Shanghai Walk-Long Tools ("Walk-Long") in the Central District of California (2:16-cv-03061), accusing a Walk-Long product of infringing the D '006 patent. Advantek included the following comparative image in its complaint. See Complaint, p. 5, ¶ 15 (labels from Complaint – though we note that the image labeled "The '006 Patent" appears to be from the prosecution history and is a more clear version of Fig. 1 than the one that actually appears in the '006 patent).

Walk-Long's response asserted that Advantek had accused the gazebo with a cover of infringement—not the patented gazebo without a cover. Walk-Long moved to dismiss under FRCP 12(c), arguing that Advantek had intentionally surrendered the design for a gazebo with a cover in order to obtain a patent on the design for a gazebo without a cover. The district court agreed with Walk-Long and dismissed the Complaint with prejudice. According to the district court, Advantek's infringement accusation was "barred by the doctrine of prosecution history estoppel." Dist. Ct. Order, p. 4.

Advantek appealed the dismissal. At the Federal Circuit, a panel of judges Newman, Clevenger, and Chen cited Pacific Coast v. Malibu (Fed. Cir., 2014), which held that a finding of prosecution history estoppel in a design patent case depends on 3 factors: (1) whether there was a surrender; (2) whether the surrender was for reasons of patentability; and (3) whether the accused design is within the scope of the surrender.

In an opinion by Judge Newman, the court focused on the third factor. The court noted Advantek's argument on appeal that "its elected design is the 'skeletal structure design' [of the gazebo], and that this design is present in the accused [design], with or without a cover." Advantek, Slip Op., p. 8. The opinion also noted Advantek's argument that the requirements of prosecution history estoppel were "not met because Advantek's election during prosecution broadened its ability to prevent infringement of its skeletal design, whether the skeleton was used alone or in combination with other parts." Id. (emphasis added).

The opinion then discussed the Supreme Court's opinion in Samsung Electronics v. Apple (U.S. 2016), which "reaffirmed that a design patent may be for a component of a product." Id., p. 9. In view of this, the Federal Circuit explained that:

[r]egardless of whether Advantek surrendered claim scope during prosecution, the accused product falls outside the scope of the purported surrender, contrary to the district court's conclusion. Advantek elected to patent the ornamental design for a kennel with a particular skeletal structure. A competitor who sells a kennel embodying Advantek's patented structural design infringes the ... patent, regardless of extra features, such as a cover, that the competitor might add to its kennel.

Slip Op., p. 10 (emphases added). In a footnote to this explanation, the court further noted in dicta that: "Of course, if the accused skeletal structure is only a component of an accused multicomponent product, Advantek would only be able to seek damages based on the value of the component, not the product as a whole." Id.

The Federal Circuit then reversed the district court, concluding that, "[c]onstrued in the light most favorable to Advantek, the complaint can be read to accuse the skeletal structure of Walk-Long's" product, and that "Advantek is not estopped by the prosecution history from asserting the D '006 patent against Walk-Long." Id., pp. 10 and 11.

The Advantek decision will likely spawn a host of discussions on prosecution history estoppel in the design patent context. However, we confine ourselves to a few more general observations:

Patent owners should be heartened by the Federal Circuit's general statement that a competitor who sells a product embodying a patented design infringes a design patent, "regardless of extra features ... that the competitor might add." Patent owners should also be pleased that infringement in such cases can be alleged even if the product with extra those features was present in the original drawings of the design application despite later being nonelected during prosecution. That said, even the most optimistic patent owner should recognize that the court's general statement must have some limits. For example, if enough extra features are added to a patented design, at some point an accused infringer will be able to successfully argue that the visual impression created by the accused design and the patented design are distinct and therefore would not confuse an ordinary observer.

But Advantek did not provide hope only for patent owners. The court's footnote concerning damages is telling: Advantek will only be able to seek damages based on the value of the patented component (i.e., the gazebo without a cover), and not on the value of the gazebo with a cover. As in Samsung Electronics v. Apple and subsequent cases, this begs the still-unresolved question of how one should determine the value of a patented component when the patented component is only sold in a product that also has non-patented components.

Questions also arise in this case as to when in the life of the product could the patented design be infringed, i.e., considering when the allegedly infringing features are visible to the ordinary observer. In Advantek, for example, is the patented design of the gazebo (the skeletal frame) visible only during assembly (or disassembly) of the Walk-Long product and before (or after) the cover is added? Or is it visible even when the gazebo is being used with a cover? Does it matter whether the ordinary observer would have to bend down to see inside the gazebo and underneath the cover? Does it matter if the ordinary observer can only see the skeletal frame from underneath the cover rather than from above as shown in D '006 Fig. 1? What if only the ordinary observer's pet could ever see the skeletal frame? Further, does it even matter for how long during the life of a product that the patented design is infringed, so long as there is infringement at some point (given that under 35 U.S.C. § 289 a patent owner is entitled to an infringer's profits as a remedy)? Even if profits under 35 U.S.C. § 289 would be somehow lower than the patent owner hoped, could the patent owner instead pivot to 35 U.S.C. § 284 and argue for higher damages because sales of the unpatented cover flowed directly from, and were proximately caused by, infringing sales of the patented article?

It is not hard to envision what each side would argue in response to these questions, but what a court will decide after peering underneath the cover remains to be seen.

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