Be Careful What You Draw: Prosecution History Estoppel Applies to Design Patents - Pacific Coast Marine v. Malibu Boats, LLC

by McDermott Will & Emery

Addressing for the first time the applicability of prosecution history estoppel in design patent cases, the U.S. Court of Appeals for the Federal Circuit reversed the lower court, holding that while prosecution history estoppel does apply to design patents, the accused infringing design must be within the scope of the subject matter surrendered during prosecution. Pacific Coast Marine v. Malibu Boats, LLC, Case No. 13-1199 (Fed. Cir., Jan. 8, 2014) (Dyk, J.).

Pacific Coast Marine (PCM) filed a design patent application for 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 drawings depicted embodiments with four, two, or zero vent holes.  The examiner issued a restriction requirement, finding patentably distinct groups of designs.  PCM elected a design with four vent holes and removed claim language and any figures referring to other embodiments.  The application issued into a patent with the claim “[t]he ornamental design for a marine windshield, as shown and described” and was assigned to PCM.

PCM sued Malibu Boats (Malibu) alleging infringement of the patent by a boat windshield manufactured and sold by Malibu, which contained three trapezoidal holes in the corners of the windshield.  The district court, recognizing that the accused design had one fewer hole than the PCM patented design, concluded that the accused design was within the territory surrendered by PCM during prosecution and granted Malibu’s summary judgment motion of non-infringement based on prosecution history estoppel.  PCM appealed.

The Court held that although the claimed scope of design patents is defined by drawings rather than language, the principles of prosecution history estoppel applies to design patents as well as utility patents.  The Court relied on a three-part inquiry to determine whether prosecution history estoppel bars infringement: “(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.”

First, to determine whether surrender existed, the Court looked at the drawings, which provide the scope and description of the invention.  PCM amended the claim in response to a restriction requirement by cancelling all figures except the four-hole embodiment and removed reference to alternate configurations from the text.  “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.”  Thus, the applicant surrendered subject matter by narrowing the scope of the original application.

Second, the surrender must be for reasons of patentability PCM argued that surrenders to avoid prior art are the only surrenders within the prosecution history estoppel doctrine.  The Court disagreed, citing to Festo:  “[t]he rationale behind prosecution history estoppel does not cease simply because the narrowing amendment, submitted to secure a patent, was for some purpose other than avoiding prior art.”  Festo.  The Court held that even though the surrender was made in response to a restriction requirement and not a patentability issue, claim scope was indeed surrendered in order to secure the patent as contemplated by Festo

Finally, the Court addressed whether the accused design was within the scope of the surrender.  The district court found that a three-hole design was within the territory of the original claim (which included a two-hole design) and the patented claim (directed to a four-hole design).  Malibu argued that PCM abandoned the range between two- and four-holed embodiments.  However, the Court explained that the “range concept does not work in the context of design patents where ranges are not claimed, but rather individual designs. Claiming different designs does not necessarily suggest that the territory between those designs is also claimed.”  For this reason, the Court held that the principles of prosecution history estoppel did not bar PCM’s infringement claim.

Practice Note:  While claiming multiple embodiments in design patents may result in a stronger patent, there is a risk of receiving a restriction requirement from the examiner.  Filing divisional applications for the unelected embodiments is one option for avoiding prosecution history estoppel.

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McDermott Will & Emery

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