By Sarah Burstein, Associate Professor of Law at the University of Oklahoma College of Law

Pacific Coast Marine Windshields, Ltd. v. Malibu Boats, LLC (Fed. Cir. 2014)
Panel:  Dyk (author), Chen, Mayer

In this case, the Federal Circuit determined—as a matter of first impression—that “the principles of prosecution history estoppel apply to design patents.” This case has a number of implications for design patent application strategy, including for applications filed under the Hague System.

Pacific Coast Marine Windshields Limited (“PCMW”) accused Malibu Boats (“Malibu”) of infringing U.S. Patent No. D555,070 (the “D’070 patent”). Here is a comparison of the patent drawings and the accused design, as shown in PCMW’s opening appellate brief:

As can be seen from this illustration, a major difference between these two designs is that the patented design features four circular vent holes while the accused design has three roughly rectangular-shaped holes.

The D’070 patent matured from a patent application filed (apparently pro se) by PCMW’s owner and CEO, Darren Bach. In the original design patent application, Bach claimed 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 submitted figures included the following:

A design patent may contain only one claim. It is possible to claim multiple embodiments—but only if those embodiments involve the same inventive concept. The question of whether a claimed embodiment satisfies this standard is left largely to the examiner’s discretion.

In this case, the examiner decided that Bach’s application included five “patentably distinct groups of designs” and issued a restriction requirement. Bach did not challenge the restriction requirement. He elected to prosecute the design shown in Figure 1 above—i.e., the version with “four circular holes and a hatch.” He also amended the claim language, deleting the reference to any hole and hatch variations. So when the D’070 patent issued, it simply claimed “[t]he ornamental design for a marine windshield, as shown and described.” Bach later filed a divisional application for the no-holes-with-hatch variant, which matured into U.S. Pat. No. D569,782. But he did not pursue design patents for any of the other variations, including the two-hole variation shown above.

Malibu moved for partial summary judgment, arguing that PCMW’s infringement claim was barred by prosecution history estoppel. Malibu argued that PCMW surrendered the two-hole design during prosecution and that the accused three-hole design fell within the territory surrendered “between the original claim and the amended claim.” The district court agreed and entered judgment of noninfringement based on prosecution history estoppel.

On appeal, PCMW argued that the principles of prosecution history estoppel should not apply to design patents at all. It argued, among other things, that there was no good policy reason to extend the doctrine to design patents. The Federal Circuit did not agree, noting that “[t]he same principles of public notice that underlie prosecution history estoppel apply to design patents as well as utility patents.”

The Federal Circuit then considered whether prosecution history estoppel barred PCMW’s infringement claim. That issue “turn[ed] on the answers to three questions: (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.” The court concluded Bach did surrender the cancelled figures and that the surrender was done for reasons of patentability. In doing so, the Federal Circuit rejected PCMW’s argument that the restriction requirement was merely “administrative” or “procedural.” The court concluded “that, in the design patent context, the surrender resulting from a restriction requirement invokes prosecution history estoppel if the surrender was necessary . . . ‘to secure the patent.’”

However, the Federal Circuit decided that the accused design was not within the scope of the surrender. It rejected Malibu’s argument that “by abandoning a

design with two holes and obtaining patents on designs with four holes and no holes, the applicant abandoned the range between four and zero.” The court noted that “[c]laiming different designs does not necessarily suggest that the territory between those designs is also claimed.” Moreover, according to the Federal Circuit, neither party claimed that the three-hole design was a colorable imitation of the surrendered two-hole design. (The Federal Circuit expressly avoided answering “whether the scope of surrender is measured by the colorable imitation standard”—an interesting issue for another day.) Therefore, prosecution history estoppel did not bar PCMW’s claim.

On remand, it will be interesting to see how PCMW argues its infringement case. It seems difficult to argue that the accused three-rectangular-hole design is not a colorable imitation of the surrendered two-rectangular-hole design but that it is a colorable imitation of the claimed four-round-hole design.

This decision also has important implications for other cases. Design patent applicants often claim multiple embodiments. If the examiner approves those embodiments, the resulting patent will be (at least arguably) stronger and more flexible. Following Pacific Coast Marine, however, this is a riskier—or, at least, potentially more expensive—strategy. If an applicant claims multiple variations on a design and the examiner decides they are patentably distinct, the applicant must file divisional applications for the unelected variants to avoid prosecution history estoppel. And more applications means more fees.

This case also will be important when the United States becomes a party to the Hague System for the International Registration of Industrial Designs. The Hague System allows applicants to file up to 100 designs in a single registration, as long as the designs are all in the same Locarno class. But the PTO has indicated that it will apply its single-invention rule to any applications it receives via the Hague System. So applicants who include multiple designs in their Hague applications should expect restriction requirements, with all the attendant estoppel risks.