Wednesday, January 08, 2014

CAFC in Pacific Coast v. Malibu: the principles of prosecution history estoppel apply to design patents, but patent holder wins

In Pacific Coast Marine v. Malibu Boats, the CAFC found that prosecution estoppel applies to design patents and, in this case, that an exclusive license was an assignment.

Yes, Gorham v. White is cited, as is Festo, and Egyptian Goddess.

The disposition:

Pacific Coast Marine Windshields Limited (“Pacific Coast”) is the assignee of all rights in U.S. Patent No. D555,070 (“the ’070 patent”) for an ornamental boat windshield design. Pacific 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. We hold that the principles of prosecution history estoppel apply to design patents, but reverse the district court’s summary judgment of non-infringement because the accused in- fringing design was not within the scope of the subject matter surrendered during prosecution, and remand for further proceedings.

Of note for this case

Although treatises2 and district court decisions going back to 18893 have recognized that the concept of prosecu- tion history estoppel applies to design patents as well as utility patents, this issue is one of first impression for our court.

The accused product did not fall within the scope of surrendered material:

The final question is whether the accused design is within the scope of the surrender. Prosecution history estoppel only bars an infringement claim if the accused design fell within the scope of the surrendered subject matter. See Wang Labs., Inc. v. Mitsubishi Elecs. Am., Inc., 103 F.3d 1571, 1578 (Fed. Cir. 1997) (“Once prosecution history estoppel limits the scope of a patent, the patentee may not recover for infringement where infringement would require an equivalence between a claim element and an aspect of the accused item that falls within the estoppel.”). Determining the reach of prosecu- tion history estoppel thus “requires an examination of the subject matter surrendered by the narrowing amend- ment.” Festo, 535 U.S. at 737.


Claiming different designs does not necessarily suggest that the territory between those designs is also claimed. As the defendant conceded during oral argu- ment, the record does not show that the submitted figures claimed “a design . . . that has zero to four holes.” Oral argument at 32:01-32:10, available at 13-1199.mp3. The applicant surrendered the claimed design with two holes on the windshield corner post, but neither submitted nor surrendered any three-hole design. The record only reflects the surrender of the two-hole embodiment.

As to colorable imitation:

We note that the defendant here did not argue that the scope of the surrendered two-hole embodiment ex- tended 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 embodi- ment. 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.


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