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).
In 2011, Pacific Coast filed suit against Malibu Boats, alleging
that Malibu's design of a boat windshield with three vent holes
and a hatch infringed the '070 patent which explicitly
covered a design of a hatch with four vent holes . The
district court granted Malibu Boats' motion for summary
judgment of non-infringement on the grounds of prosecution history
estoppel because Pacific Coast had surrendered the designs
reflected in the canceled drawings. The court recognized that that
the accused the design was within the territory surrendered between
the original and amended claim. Lastly, the court found that the
patentee was unable to overcome the presumption of prosecution
history estoppel. Pacific Coast appealed the decision to the
Federal Circuit.
The court noted that although the doctrine of prosecution history
estoppel is well established for utility patents, the issue in
regards to design patents was one of first impression. Utility
patents may be infringed literally and/or under the doctrine of
equivalents when there are only "insubstantial
differences" between the claimed and accused elements.
Prosecution history estoppel limits the patentee's ability to
recover under the doctrine of equivalents by limiting what the
patentee can claim as equivalent. More specifically, if a patentee
is obliged to surrender subject matter during patent prosecution to
obtain a patent, prosecution history estoppel prevents the patentee
from recapturing the surrendered matter under the doctrine of
equivalents. Additionally, prosecution history estoppel is an
integral component of public notice and provides the public with a
clear definition of the metes and bounds of a claimed
invention.
For design patents, the issue becomes more complicated, because the
line between literal and equivalent infringement is less well
defined. With design patents, the test for infringement is "if
the resemblance is such as to deceive such an observer, inducing
him to purchase one supposing it to be the other, the first one
patented is infringed by the other." As such, Pacific Coast
argued that the doctrine of prosecution history estoppel should not
be applied design patents. The Federal Circuit disagreed on the
grounds that the same principles of public notice that apply to
utility patents apply to design patents. The Federal Circuit
decided that not applying the doctrine of prosecution estoppel to
design patents would undermine the public-notice functions of the
statutory claiming requirement.
The Federal Circuit then addressed whether the principles of the
prosecution history estoppel barred the infringement claim in this
particular instance by addressing three issues: 1) whether there
was a surrender of subject matter; 2) whether such a surrender was
for reasons of patentability; and 3) whether the accused design is
within the scope of the surrender.
In regards to the first issue, the Federal Circuit found that
Pacific Coast did
surrender subject matter by electing without traverse one design
and amending the claim to include only windshield designs
containing corner posts with four vent holes.
In regards to the second issue, the Federal Circuit found that
Pacific Coast did
surrender subject matter for reasons of patentability. Although the
subject matter was not surrendered in view of prior art, the
Federal Circuit noted that in a design patent, a restriction
requirement is not simply a matter of administrative convenience
(as can be the case in a utility patent), but rather a necessity
because a design application by statute can only contain a single
claim for a single design. Therefore in this case, the election of
a single design was necessary for patentability.
In regards to the third issue, the Federal Circuit reasoned that
prosecution history estoppel only bars infringement claims if the
accused design falls within the scope of the surrendered subject
matter. Malibu Boats had argued that because Pacific Coast
surrendered subject matter to a corner post with two vent holes,
they also surrendered claim to a corner post with three vent holes
since three vent holes falls within the "range" of 0-4
vent holes. The Federal Circuit did not agree and found that this
argument did not apply to design patents and that Pacific Coast did
not claim a range of 0-4 vent holes in the original application.
The Federal Circuit held that the principle of prosecution history
estoppel did not bar Pacific Coast's infringement claim and
remanded for further proceedings.
It seems that the court was influenced by the difference between
infringement standards for design patents versus utility patents as
well as the ability to file divisional applications to capture
subject matter cancelled in response to a restriction requirement.
Pacific Coast originally showed embodiments with zero, two and four
vent holes. In electing the four-hole embodiment Pacific Coast
clearly preserved its ability to capture the other embodiments in
divisional applications. Although only the zero-hole and four-hole
embodiments issued as divisional applications, the question is
whether or not Malibu Boats' three-hole product infringes
either of these patents. This will turn on whether the observer
test will determine that two holes resembles four holes
sufficiently to deceive the observer. It will be interesting to see
how the lower court decides the infringement allegations of Pacific
Coast. Although the Federal Circuit has determined that prosecution
history estoppel applies to design patent in principal, it is
difficult to see how it applies in practice because a restriction
requirement is the most likely place a design patent applicant
could surrender matter—and the Federal Circuit has now
decided that such a surrender does not invoke prosecution history
estoppel. It seems likely that the situations in which prosecution
estoppel will apply to design applications will be fairly narrow.
One possible situation might be where the examiner objects to the
drawings as being unclear—for example, for not being properly
shaded so as to indicate whether a particular feature is protruding
from or is actually penetrating into a surface (e.g., concave
versus convex). In response the applicant argues that the feature
is clearly protruding and supplies drawings with corrected shading.
In a subsequent infringement contest the observer test should not
be allowed to conclude that the resemblance between protruding and
penetrating features is such as to deceive the observer. In such a
case, the penetrating feature has clearly been disclaimed.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
