Federal Circuit, January 8, 2014, 2013-1199

The Federal Circuit holds that the principles of prosecution history estoppel do apply to design patents, but reverses the district court’s summary judgment of non-infringement. The court found that no estoppel could apply to the design in question in this case because the accused infringing design was not within the scope of the subject matter surrendered during prosecution.

During the prosecution of Pacific Coast’s patent to the design of a boat windshield, the Applicant responded to a requirement for restriction by canceling several figures and electing a design having four vent holes. The Applicant also obtained a divisional application directed to a design having no vent holes, but did not pursue any other of the non-elected embodiments, including a design with two vent holes.

Malibu Boats argued that Pacific Coast was barred from asserting an infringement claim against its product, having three vent holes, because the doctrine of prosecution history estoppel prevents a patentee from recapturing subject matter in an infringement action which was surrendered during prosecution. It was argued that the entire range between four holes and no holes was surrendered.

However, the Federal Circuit stated that the concept of ranges does not work in the context of design patents where ranges are not claimed, but rather individual designs. Neither side argued that a three hole design was colorably different from a two hole design, thus Pacific Coast was not barred from asserting its infringement claim based on the doctrine of equivalents.