Federal Circuit Review – Issue 4 – 01-15-2014

Each week in the Federal Circuit Review, we succinctly summarize the preceding week of Federal Circuit precedential patent opinions. We provide the pertinent facts, issues, and holdings. Our Review allows you to keep abreast of the Federal Circuit’s activities – important for everyone concerned with intellectual property. We welcome any feedback you may provide.

– Joe Robinson and Bob Schaffer




Court Adopts “Principles” of Prosecution History Estoppel for Design Patents

Pacific Coast Marine Windshields Ltd. v. Malibu Boats, LLC, No. 2013-1199, 2014 U.S. App. LEXIS 301 (Fed. Cir. Jan. 8, 2014) (Dyk, J.). Click here for a copy of the opinion.

Pacific Coast accused Malibu Boats (Malibu) of infringing a design patent claiming an ornamental design of a windshield for a boat. Malibu moved for summary judgment of non-infringement, and the district court granted the motion based on the prosecution history estoppel.

In a case of first impression, the Federal Circuit held that the doctrine of prosecution history estoppel applies to design patents as well as utility patents. The court explained how the doctrine limits a (utility) patent under the doctrine of equivalents, and how, in the design patent context, “the concepts of literal infringement and equivalents are intertwined.” Slip op. at 8. Thus, the “same principles of public notice” underlying prosecution history estoppel apply equally to design and utility patents.

The court applied a three-part test to determine whether the doctrine barred the claim at issue: (1) was there a surrender of subject matter, (2) was it for reasons of patentability, and (3) was the accused design within the scope of the surrender? The court held there was a surrender, when Pacific Coast cancelled figures for some embodiments in response to a restriction requirement, which the PTO treated as “an election without traverse.” However, the accused windshield — featuring three square vent holes — was not within the scope of the surrendered territory: “The applicant surrendered the claimed design with two holes on the windshield corner post, but neither submitted nor surrendered any three-hole design.” Id. at 16. Thus, no presumption of prosecution history estoppels arose, so Pacific Coast’s infringement claim was not barred. Accordingly, the court reversed and remanded to the district court.


The following opinions are not reported in this newsletter:

Nazomi Communications, Inc. v. Nokia Corp., No. 2013-1165, 2014 U.S. App. LEXIS 491 (Fed. Cir. Jan. 10, 2014) (affirming district court’s claim construction requiring claim to include both hardware and software components because the claim required “a hardware-software combination that must perform the described functions” and affirming grant of summary judgment of non-infringement based on that construction) (Dyk, J.). Click here for a copy of the opinion.


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