On January 8, 2014, the Federal Circuit in Pacific Coast Marine Windshields Ltd. V. Malibu Boats, LLC. et. al. confirmed that prosecution history estoppel applies to design patents. Although application of this doctrine to utility patents is well established, the court noted that the issue in regards to design patents was one of first impression. Nevertheless, in its decision, the Federal Circuit overturned a District Court's grant of Malibu Boats' motion for summary judgment of non-infringement on the grounds of prosecution history estoppel. This decision has immediate implications in the prosecution and enforcement of design patents as well as far reaching consequences on the licensing of their rights.
In 2006, the owner and CEO of Pacific Coast, Darren Bach, filed a design patent application claiming 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." The application as filed included multiple embodiments including or not including a front hatch and including or not including different numbers and shapes of vent holes. The original drawing showed embodiments with no vent holes, with two rectangular or elliptical vent holes and with four round, elliptical or square vent holes. The examiner determined that the embodiments represented at least five patentably distinct groups of designs and issued a restriction requirement. The applicant then elected without traverse the design corresponding to a marine windshield with a hatch and tapered corner posts with four vent holes and amended the claim and deleted the drawings showing the other embodiments. The amended application issued in November of 2007 as No. D555,070 (the '070 patent). In May of 2008, Darren Bach obtained a design patent for a marine windshield with no vent holes as a divisional of the originally filed application (D569,789, the '789 patent).
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