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IP Alert: Federal Circuit Holds Prosecution History Estoppel Is Applicable to Design Patents

January 13, 2014

On January 8, 2014, in Pacific Coast Marine Windshields Limited v. Malibu Boats, LLC, the Court of Appeals for the Federal Circuit addressed the doctrine of prosecution history estoppel. While this doctrine traditionally has been used to limit the application of the doctrine of equivalents for utility patent claims, the court had not previously addressed whether the doctrine was applicable to design patents. Faced with this question in Pacific Coast, the court answered in the affirmative.

Pacific Coast filed a design application directed to marine windshields. The application included several embodiments differing in the presence or absence of a hatch and the shape and number of vent holes. After a restriction requirement, the patentee elected an embodiment depicting four vent holes and a hatch. The patentee canceled figures that depicted the nonelected embodiments. Among the canceled figures were figures showing embodiments with zero holes and with two holes. Pacific Coast also amended the claim to recite “the ornamental design of a marine windshield with a frame, and a pair of tapered corner posts.” The claim originally recited a design for a windshield “with vent holes and without said vent holes, and with a hatch and without said hatch.”

Malibu Boat’s accused windshield had three trapezoidal holes on the windshield’s front corners. Pacific Coast brought suit alleging infringement of the design patent, and Malibu Boats moved for summary judgment of noninfringement. The district court, rejecting Pacific Coast’s argument that prosecution history estoppel should not apply to design patents, granted Malibu Boat’s motion for partial summary judgment of noninfringement. The court reasoned that the accused three-hole design was within the territory surrendered by the patentee when making the election, holding 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. Pacific Coast appealed.

On appeal, the Federal Circuit agreed that the doctrine of prosecution history estoppel is applicable to design patents. The court observed that for design patents, “the concepts of literal infringement and equivalents infringement are intertwined,” because the statute specifies that infringement occurs when copying the design “or any colorable imitation thereof.” In other words, “the test for design patent infringement is not identity, but rather sufficient similarity.” The court then reasoned that '[t]he same principles of public notice that underlie prosecution history estoppel apply to design patents as well as utility patents.” Accordingly, “[t]he fact that in design patents, unlike utility patents, the claimed scope is defined by drawings rather than language does not argue against application of prosecution history estoppel principles here.”

Having determined that the doctrine of prosecution history estoppel was potentially applicable, the court next determined whether the doctrine should apply to the patent at issue. The court examined the three elements of prosecution history estoppel, namely, whether there was surrender, whether the surrender was for reasons of patentability, and whether the accused design was within the scope of the matter surrendered.

For the first element, the court held that the acts of canceling figures directed to the unelected embodiments and amending the claim’s reference to alternate configurations amounted to surrender. The court observed that, in response to the examiner’s restriction requirement, the applicant amended the claim by canceling figures associated with all but one of the patentably distinct groups of designs identified by the examiner. “By cancelling figures showing corner posts with two holes and no holes,” held the court, “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.” The court characterized the surrender as one of claim scope as opposed to entry of a narrowing amendment, as per its earlier decision in Honeywell Int’l Inc. v. Hamilton Sundstrand.

For the second element, the court found that surrenders made to secure a patent are not limited to those made to avoid prior art. The court found that although the amendment in this case was not directly made for reasons of patentability, it was made in order to secure the patent. The court followed the Supreme Court’s guidance in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., specifically that “a narrowing amendment made to satisfy any requirement of the Patent Act may give rise to an estoppel.” The court specifically left open the question of whether a restriction requirement in a utility patent application similarly would give rise to a surrender of subject matter.

For the third element, the court disagreed with the district court’s determination of the scope of the subject matter surrendered. The court held that the surrender of a design with two holes did not result in the surrender of a three-hole design, because no three-hole design had ever been presented to the U.S. Patent and Trademark Office. Distinguishing earlier cases that concerned claims to ranges of values in utility patents, the court held “this range concept does not work in the context of design patents where ranges are not claimed, but rather individual designs.” Put another way, the court observed that “the record does not show that the submitted figures claimed ‘a design . . . that has zero to four holes,’” but rather a number of unique designs. Because the court held that there was no estoppel, the court then remanded the case to the district court for further proceedings consistent with its holding.

The Pacific Coast case is significant in several respects for those Fitch Even clients who are involved with the prosecution and litigation of design patents. For more information, please contact Fitch Even partner Calista J. Mitchell, the author of this alert.

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