CAFC Says Prosecution History Disclaimer Applies to Design Patents, Too

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision on Thursday holding that the principles of prosecution history disclaimer apply to design patents, thus reversing a jury verdict that had found Top Brand LLC had infringed Cozy Comfort Company LLC’s trademarks and design patent.

Cozy Comfort and Top Brand both manufacture “oversized hooded sweatshirts.” Cozy Comfort owns U.S. Design Patent No. D859,788 (the “D788 patent”) and two trademarks for “THE COMFY” for goods and services relating to blanket throws. After Top Brand sought declaratory judgment of non-infringement from the U.S. District Court for the District of Arizona, Cozy Comfort counterclaimed for infringement of the patent and trademarks. A jury ultimately found Top Brand had infringed and the district court denied Top Brand’s motion for judgment as a matter of law (JMOL) on noninfringement.

On appeal, the CAFC first rejected Cozy Comfort’s argument that Top Brand had waived its claim construction argument because it failed to object to a jury instruction adopting an alternate construction. In district court, Top Brand had argued for “a detailed verbal limiting construction of the D788 patent claim based on Cozy Comfort’s statements during prosecution,” but the court declined and the jury was instructed that it “must determine whether or not there is infringement by comparing the accused products to the design defined in the [D788] patent.” Because Top Brand did not object to this instruction, Cozy Comfort said its claim construction on appeal should be waived. But the CAFC explained:

“In the utility patent context, we have held that a party does not waive a claim construction argument by failing to object at the jury instructions stage when the construction proposed on appeal is the same as the construction proposed during earlier claim construction proceedings…. The same principles apply in the design patent context.”

Cozy Comfort next attempted to argue that “the doctrine of prosecution history disclaimer does not apply to design patents because ‘[t]he nature of design patents renders any purported disavowal ambiguous,’” according to the opinion. During prosecution of the D788 patent, Cozy Comfort disclaimed certain features due to overall similarity between those features and a prior art patent (“White”) by making statements distinguishing its claimed design from the prior art. While Cozy Comfort argued these statements did not represent an “unambiguous disavowal of claim scope,” the CAFC disagreed. The opinion explained:

“We see no reason to distinguish between disclaimer by amendment and disclaimer by argument and conclude that a patentee may surrender claim scope of a design patent by its representations to the Patent Office during prosecution. This approach is supported by our en banc decision in Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (en banc), where we recognized that ‘a trial court can usefully guide the finder of fact by addressing a number of other issues that bear on the scope of the claim,’ including ‘assessing and describing the effect of any representations that may have been made in the course of the prosecution history.’”

Turning to infringement of the design patent, the CAFC said that under the proper construction of the patent, and in light of the prosecution history disclaimer, no reasonable jury could find infringement.

As to trademark infringement, the CAFC said there was insufficient evidence to support the jury’s determination of infringement because Cozy Comfort did not present any showing that Top Brand used THE COMFY in full (“Cozy Comfort only submitted evidence showing Top Brand used the word “Comfy” on an archived website…”), “comfy” was used only as a descriptor on its website, and Cozy Comfort’s evidence of actual consumer confusion was insufficient. The district court’s denial of JMOL as to noninfringement was thus reversed.