Prosecution History Estoppel Applies to Design Patents, But the Accused Design Was Not Surrendered

Pac. Coast Marine Windshields Ltd. v. Malibu Boats, LLC, ___ F.3d ___ (Fed. Cir. Jan. 8, 2014) (DYK, Mayer, Chen) (M.D. Fla.: Antoon, II) (2 of 5 stars)

Fed Cir reverses summary judgment of non-infringement. Pacific Marine asserted a design patent on a boat windshield with corner posts having 4 vent holes. The district court applied prosecution history estoppel to conclude the defendant's design which had 3-holed corner posts did not infringe.--more-->

Prosecution History Estoppel: The Fed Cir, noting the issue was "one of first impression," held that prosecution history estoppel can limit a design patent. "For design patents, the concepts of literal infringement and equivalents infringement are intertwined," slip op. at 8-9, and "the same principles of public notice that underlie prosecution history estoppel apply to design patents as well as utility patents." Slip op. at 11. Applying the prosecution history estoppel rules adopted in Festo and Honeywell, the Fed Cir concluded that the patentee surrendered claim scope by cancelling figures showing windshields with posts having 0 or 2 holes in response to a restriction requirement. Moreover, "in the design patent context, the surrender resulting from a restriction requirement invokes prosecution history estoppel if the surrender was necessary, as in Festo, to secure the patent," id. at 14, and it was necessary here to comply with the requirement that a design patent can claim only one design.

Infringement: The Fed Cir reversed the judgment of noninfringement because the surrendered matter did not include the accused 3 hole design. A separate 3 hole design was never submitted nor cancelled, and the defendant did not argue that a 3 hole design was a colorable imitation of the surrendered 2 hole design. The defendant's theory that the patentee had surrendered all designs in the range from 4 holes to 0 holes failed because 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." Id. at 16.

Note: The Court also held that, assuming that prosecution history estoppel is an affirmative defense that must be pled (an issue it did not reach), the defendant had done so by alleging the plaintiff's claims were "barred in whole or in-part by the doctrine[] of ... estoppel." Id. at 10 n.4.