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.