Pacific Coast Marine Windshields, Ltd. v. Malibu Boats, LLC – Prosecution History Estoppel in Design Patent Cases

As 2012 draws to a close, the Middle District of Florida has released a late Christmas present in the form of a new argument for litigants defending claims of design patent infringement.  On December 27, 2012, Judge John Antoon II issued his decision on motion for partial summary judgment of noninfringement in Pacific Coast Marine Windshields Ltd. v. Malibu Boats, LLC, No. 6:12-cv-33, 2012 WL 6721060 (M.D. Fla. December 27, 2012).  In his decision, which appears to be a case of first impression, Judge Antoon applied prosecution history estoppel to limit the claims of Pacific Coast's design patent to its literal scope and concluded that Pacific Coast was estopped from claiming that Malibu’s accused product infringed the patent-in-suit.

In this case, Pacific Coast accused Malibu Boats of infringing U.S. Design Patent No. 555,070 for a “Marine Windshield.”  A figure from the ‘070 Patent appears below alongside an image of the accused Malibu product:

                        

The ‘070 Patent and the Malibu windshield are arguably similar except for the vents that appear on the corners of the windshields.  The ‘070 Patent has four circular vents whereas the Malibu windshield has three rectangular vents.  Although some might argue that this difference, alone, should be sufficient to distinguish the design under the ordinary observer test, courts have noted that the ordinary observer test subsumes a doctrine of equivalents analysis.  See, e.g. Lee v. Dayton–Hudson Corp., 838 F.2d 1186, 1189–90 (Fed.Cir.1988); Minka Lighting, Inc. v. Craftmade Int'l, Inc., 93 Fed. Appx. 214, 217 (Fed. Cir. 2004).  Therefore, Malibu went one step further, arguing that Pacific Coast should be estopped from claiming infringement under the doctrine of equivalents.  

During prosecution of the ‘070 Patent, Pacific Coast had initially submitted twelve different versions of the underlying windshield design.  One of the initial embodiments claimed a marine windshield with a hatch and two oval or rectangular holes:

However, the PTO issued a restriction requirement to select which one of the five groups of designs Pacific Coast wished to prosecute.  The Examiner also noted that if Pacific Coast wished to contest the election requirement, it would need to show that the design groups in question were not distinct.  In response, Pacific Coast amended the application to delete the figures for the the non-elected designs and proceeded on the merits with respect to the figures that resulted in the ‘070 Patent.  Notably, Pacific Coast never prosecuted divisional applications based on the other embodiments, allowing them to be abandoned.  

Before the district court, Malibu argued that Pacific Coast’s election gave rise to prosecution history estoppel with regard to any windshields with less than four vent holes.  Malibu argued that under Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Pacific Coast’s amendment and election constituted a narrowing amendment made for the purpose of patentability and that Pacific Coast had thereby relinquished any equivalent designs that incorporated fewer than four vent holes.  See 535 U.S. 722, 737 (2002) (“A patentee who narrows a claim as a condition for obtaining a patent disavows his claim to the broader subject matter.”).

Judge Antoon agreed with Malibu that Pacific Coast’s limiting amendment estopped their infringement contentions against Malibu.  Pacific Coast attempted to argue that the restriction requirement was merely administrative, and thus did not give rise to prosecution history estoppel, citing cases regarding restriction requirements in utility cases.  However, the Court found that restriction requirements in design cases were distinguishable because, although restriction requirements are discretionary in utility cases, they are mandatory in design cases where applications may not contain more than one inventive concept.  (citing  MPEP §§ 1504.05, 1502.01(D)).  

Finally, the Court concluded that Pacific Coast had failed to overcome the presumption in favor of a disclaimer of equivalents.  Pacific Coast attempted to argue that its limiting amendment had deleted figures with two vent holes, not three, as found in the accused product and that windshields with three vent holes was not within the scope relinquished by Pacific Coast’s amendment.  The Court dismissed this argument without clearly addressing it, stating only that “the accused design is still clearly within ‘the territory between the original claim and the amended claim.’”  2012 WL 6721060, at * 4 (quoting Festo, 535 U.S. at 740).

In any event, Pacific Coast is likely to be an important case for both patentee’s and defendants. Design patent applicants who fail to pursue alternative embodiments after an election requirement will now do so at their own peril. Failure to follow-up with a timely divisional application runs the risk of dedicating unclaimed embodiments to the public. Likewise, design patent defendants should be mindful of election requirements made on the patents-in-suit during prosecution. Any similarities between the accused product and any non-elected embodiments should be exploited.

Design Patent Roundup – Week ending Dec. 14, 2012

A number of cases have been filed since our last roundup which we summarize below. Of particular interest this week is a case involving the now famous plaintiff Egyptian Goddess asserting another design patent for a nail buffer. As always, we will continue to monitor the dockets for these cases and provide any noteworthy updates.

Design Patent Roundup – Week Ending Dec. 7, 2012

There was moderate activity since our last roundup, with six new cases filed this week.  We will continue to monitor the dockets for these cases and provide any noteworthy updates.  Please take a look at the designs and products at issue after the jump and let us know what you think in the comments section.  

Solar Sun Rings, Inc. v. Polygroup, Ltd., et. al, No.  5:12-cv-02099 (C.D. Ca. Nov. 28, 2012).

Plaintiff Solar Sun Rings filed suit against Polygroup, alleging infringement of Solar’s U.S. Design Patent No. 579,570 for a “Floating Spa Cover.”  If Solar’s spa cover design looks familiar to you, that is because we previously posted about Solar’s case against Wal-Mart.  Polygroup allegedly manufactures the “Solar Pad” that stands accused in the case against Wal-Mart.  It is unclear why Solar chose to bring this case as a separate action. Compare the ‘570 Patent to the accused product, below:

The case has been assigned to Judge Gary A. Feess.  Solar is represented by the Law Offices of Sepehr Daghighian.  Polygroup has not yet entered an appearance. 

Design Ideas, Ltd. v. Bed, Bath & Beyond, Inc. et al, No. 3:12-cv-03327 (C.D. Ill. Nov. 30, 2012).

Design Ideas filed suit against Bed, Bath & Beyond, alleging infringement of Design Ideas’ U.S. Design Patent Nos. 436,239 for a “Mesh Cart;” 479,272 for a “Mesh Basket;” and 517,769 for a “Portion of a Rolling Cart.”  Design Ideas accuses Bed, Bath & Beyond’s “Slim Bath Storage Cart.”  Compare the ‘239 Patent to the accused product, below:

The case has been assigned to Judge Sue E. Myerscough.  Design Ideas is represented by the Saidman DesignLaw Group.  Bed, Bath & Beyond has not yet entered an appearance. 

R&J Manufacturing, Inc. v. B&G International, Inc., No. 1:12-cv-00874 (D. R.I. Nov. 30, 2012).

R&J filed suit against B&G, alleging infringement of two utility patents and R&J’s U.S. Design Patent No. 543,590 for a “Rotating Ati-Theft Tag.”  R&J accuses B&G’s “Swivel Tag.”  Compare the ‘590 Patent to the accused product as it appears in the complaint, below:

The case has been assigned to Judge Mary M. Lisi.  R&J is represented by t Jodi-Ann McLane.  B&G has not yet entered an appearance. 

Metric Products, Inc. v. C and A Marketing, Inc. et al, No. 2:12-cv-10201 (C.D. Ca. Nov. 29, 2012)
Metric Products, Inc. v. Mogo Products, LLC, No. 2:12-cv-10204 (C.D. Ca. Nov. 28, 2012)

Metric filed lawsuits against C and A, and Mogo Products, both alleging infringement of one utility patent and Metric’s U.S. Design Patent No. 478,342 for an “Eye Shade.”  Although a specific product was not identified in the complaints, compare the ‘432 Patent to a sleep mask offered by Mogo on the internet, below:

 

The case has been assigned to Judge Christina A. Snyder.  Metric is represented by Blakely Sokolof Taylor and Zafman.  Neither Mogo nor C and A has yet entered an appearance. 

Ashley Furniture Industries, Inc. v. Cosmos Furniture, Ltd., No. 1:12-cv-09654 (N.D. Ill. Dec. 4. 30, 2012).

Ashley filed suit against Cosmos, alleging infringement of thirteen of Ashley’s U.S. Design Patents for ornate bedroom sets.  Ashley does not identify the accused product in its complaint, but alleges that “After a reasonable opportunity for further investigation or discovery, it is likely that the evidence will show that Defendant has infringed and continues to infringe.”  It is unclear whether Ashley’s allegations are sufficient to state a claim of design patent infringement.  Below is an example of one of the designs that Ashley is asserting, U.S. Design Patent No. 518,660:

The case has not yet been assigned.  Ashley is represented by McAndrews Held & Malloy.  Cosmos has not yet entered an appearance. 

Laughing Rabbit, Inc. v. Stone, No. 2:12-cv-02108 (W.D. Wa. Dec. 4, 2012)

Laughing Rabbit filed suit against Stone, alleging infringement of Laughing Rabbit’s U.S. Design Patent No. 375,372 for a “Pocket Flashlight.”  Laughing Rabbit accuses a “Dots Microlight,” allegedly sold by Mr. Stone.  Notably, the ‘372 Patent issued on Nov. 5, 1996, and should have expired on Nov. 5, 2010.  Compare the ‘372 Patent to the “Dots Microlight,” as it appears on the internet:

 The case has not yet been assigned.  Laughing Rabbit is represented by Lowe Graham Jones.  Stone has not yet entered an appearance.

Patent Law Treaties Implementation Act of 2012- Design Patent Protection Extended to 15 Years

The S. 3486 Bill, titled the “Patent Law Treaties Implementation Act of 2012,” which would implement the provisions of the Hague Agreement and the Patent Law Treaty, has passed the House by voice vote earlier today.  The Hague Agreement aims to streamline procedures for obtaining design patent protection in member countries.  A summary and a copy of the Bill are available here.

The Hague Agreement allows an individual to apply for Industrial Design protection in all countries participating in the Agreement using a single application.  Similar to utility applications, applications for design protection will be reviewed by the World Intellectual Property Organization (WIPO).  The bill also adds a new chapter to 35 U.S.C. on “international design applications,” specifying the regulations for filing the industrial design applications and determining priority dates based on foreign filing.  One of most noteworthy provisions is the change to the term of a design patent from 14 to 15 years from the date of grant. 

The Bill has been a long time in the making: the Hague agreement was signed over 12 years ago, and the Bill was ratified by the U.S. Senate in 2007.  The Bill now moves on to the White House for signature.  If signed, the provisions of the Bill shall take effect 1 year after the date of the enactment.  As always, we will continue to monitor and provide any meaningful updates.