Wednesday, August 01, 2018

No prosecution history estoppel in Advantek design patent case

The beginning of the opinion by Judge Pauline Newman:

Advantek Marketing, Inc. is the owner of design patent
No. D715,006 (“the D’006 patent”) for a portable
animal kennel that Advantek sells with the mark “Pet
Gazebo.” Advantek states that the Pet Gazebo is its
“flagship product,” that it has received awards and been
successful commercially, for “[i]t provided a great solution
for pet owners who wanted to take their pets with them,
whether to a friend’s house, on vacation, or simply out to
the backyard.” Appellant’s Br. at 2.
Advantek sued its former manufacturer, Shanghai
Walk-Long Tools Co., together with Advantek’s former
vice president and others (collectively, “Walk-Long”), for
patent infringement, breach of contract, and aiding and
abetting breach of fiduciary duty. The complaint alleged
that Walk-Long copied the Pet Gazebo and infringed the
D’006 patent with their device called the “Pet Companion.”
The district court granted Walk-Long’s motion for
judgment on the pleadings under Federal Rule of Civil
Procedure 12(c), holding that prosecution history estoppel
bars Advantek from enforcing the D’006 patent against
the Pet Companion. Final judgment was entered after
the parties stipulated to dismissal of the non-patent

We conclude that prosecution history estoppel does
not preclude enforcement of the D’006 patent against the
accused kennel. The judgment is reversed, and the case is
remanded for further proceedings.


We conclude that Advantek is not estopped by the
prosecution history from asserting the D’006 patent
against Walk-Long and its Pet Companion. The dismissal
under Rule 12(c) is reversed. We remand for further

Festo is cited:

Advantek stresses that the accused kennel’s structure
is the same as shown in the D’006 patent, whether or not
a cover is present. Advantek states that it elected the
broader scope of the kennel structure design, that is,
unlimited by the presence of a cover, and that prosecution
history estoppel does not arise, for “[e]stoppel arises when
an amendment is made to secure the patent and the
amendment narrows the patent’s scope.” Festo Corp. v.
Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 736

Regardless of whether Advantek surrendered claim
scope during prosecution, the accused product falls outside
the scope of the purported surrender, contrary to the
district court’s conclusion. Advantek elected to patent the
ornamental design for a kennel with a particular skeletal
structure. A competitor who sells a kennel embodying
Advantek’s patented structural design infringes the D’006
patent, regardless of extra features, such as a cover, that
the competitor might add to its kennel.2 Construed in the
light most favorable to Advantek, the complaint can be
read to accuse the skeletal structure of Walk-Long’s Pet
Companion. The complaint alleges that Walk-Long

infringes the D’006 patent “by making, using, offering for
sale, and/or selling the patented design without the
authority of Advantek,” and by “making, using, selling,
offering for sale or importing the Accused Product.” J.A.
25. Although Walk-Long argues that it was uncertain as
to what was being accused of infringement, if clarification
was needed, the district court should have granted Advantek
leave to file an amended complaint. Under Ninth
Circuit procedural law, “[a] simple denial of leave to
amend without any explanation by the district court is
subject to reversal.” Sharkey v. O’Neal, 778 F.3d 767, 774
(9th Cir. 2015) (quoting Eminence Capital, LLC v. Aspeon,
Inc., 316 F.3d 1048, 1052 (9th Cir. 2003)).


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