Pacific Coast Marine Windshields v. Marine Hardware: Prosecution History Estoppel Applies to Design Patents

Category: Design Patents 
By: Jesus Hernandez, Blog Editor/Contributor 
TitlePacific Coast Marine Windshields Ltd. v. Marine Hardware Inc., No. 2013-1199 (Fed. Cir. Jan. 8, 2014).
IssuePacific Coast, in its briefs, argued that prosecution history estoppel should not apply to design patents at all.
Pacific Coast Marine Windshields Ltd. at *10.
HoldingWe conclude that the principles of prosecution history estoppel apply to design patents as well as utility patents.
Id. at *11.

Procedural HistoryPacific Coast brought suit against Malibu Boats, LLC, Marine Hardware, Inc., Tressmark, Inc., MH Windows, LLC, and John F. Pugh (collectively “Malibu Boats”) in the Middle District of Florida, alleging infringement. The district court granted Malibu Boats’ motion for summary judgment of non-infringement, finding that prosecution history estoppel barred the infringement claim. Pacific Coast appeals.
Pacific Coast Marine Windshields Ltd. at *2.
Legal Reasoning (Dyk, Mayer, Chen)
Prosecution History[Applicant] amended 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.” JA 390 (emphases removed). The applicant also cancelled figures 7-12, leaving only the embodiment with four circular holes on the corner post and a hatch on the front of the windshield.
Pacific Coast Marine Windshields Ltd. at *4 (text added).
Prosecution history estoppel applicable to design patents
First ImpressionAlthough treatises and district court decisions going back to 1889 have recognized that the concept of prosecution history estoppel applies to design patents as well as utility patents, this issue is one of first impression for our court.
Pacific Coast Marine Windshields Ltd. at *7.
Prosecution History Estoppel and Literal Infringment
Regarding Utility PatentsWith respect to utility patents, prosecution history estoppel limits a patentee’s ability to recover under the doctrine of equivalents, but does not limit literal infringement. The doctrine is founded on the public notice function of patents.
Id. at *8.
Regarding Design PatentsFor 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 […] [T]he test for design patent infringement is not identity, but rather sufficient similarity—whether “the accused design could not reasonably be viewed as so similar to the claimed 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). We have held that the “colorable imitation” standard of the design patent statute involves the concept of equivalents.
Id. at *8-9 (internal citations omitted).
Analysis: Having determined that the principles of prosecution history estoppel apply to design patents, we consider whether those principles bar the infringement claim in this case. This turns on the answers to 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.
Pacific Coast Marine Windshields Ltd. at *11.
(1) whether there was a surrenderHere, in response to the examiner’s restriction requirement, the applicant amended the claim by cancelling figures associated with all but one of the patentably distinct groups of designs identified by the examiner—the four-hole embodiment—and striking references to alternate configurations from the text. The PTO treated the response as “an election without traverse” and withdrew the unelected designs from consideration. JA 394. […] 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 […].
Id. at *12.
(2) whether it was for reasons of patentability
As to the second question, we conclude that claim scope was surrendered in order to secure the patent, as required by the Supreme Court’s decision in Festo. Here, the surrender was not made to avoid prior art but because of a restriction requirement under 35 U.S.C. § 121. Thus, the surrender was not made for reasons of patentability (for example, anticipation, obviousness, or patentable subject matter). However, the surrender was made to secure the patent (because unlike utility patents, restrictions of design patents are not a matter of administrative convenience, they are mandatory).
Id. at *13 (text added).
In contrast to utility patents, “a design patent application may only include a single claim.” […] In light of that requirement, if an application for a design patent includes more than one patentable design, the PTO must require the applicant to restrict his claims to a single inventive design under 35 U.S.C. § 121. Thus, in design patents, unlike utility patents, restriction requirements cannot be a mere matter of administrative convenience. Here, the examiner imposed a restriction requirement on the ground that the different drawings showed “patentably distinct groups of designs,” contravening the requirement that design patents must claim only one design. JA 386. The examiner identified the specific design groups and associated figures, giving the applicant the option to elect one group.
Id. at *13-14 (internal citations omitted).
(3) whether the accused design is within the scope of the surrenderThe applicant surrendered the claimed design with two holes on the windshield corner post, but neither submitted (in the drawings) nor surrendered (in the response to the restriction) any three-hole design (which the accused infringing product has). The record only reflects the surrender of the two-hole embodiment (and the case must be remanded to ascertain whether a three-hole design is colorably different from the non-elected/surrendered two-hole design).
Id. at *16 (text added).
Dicta on Colorable Imitation StandardWe note that the defendant here 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. At oral argument, the defendant disclaimed the theory that the three-hole design was a colorable imitation of the surrendered two-hole embodiment. Under these circumstances, we need not decide whether the scope of the surrender is measured by the colorable imitation standard. Since the patentee here does not argue that the accused design was within the scope of the surrendered two-hole embodiment, no presumption of prosecution history estoppel could arise.
Id. at *16.
We hold that prosecution history estoppel principles do not bar Pacific Coast’s infringement claim, and remand for further proceedings.
Pacific Coast Marine Windshields Ltd. at *16-17.
Image Attribution Statement: Pacific Coast Marine Windshields Ltd. at *3. 
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