Wednesday, January 22, 2014

Pacific Coast after the Federal Circuit - Windshield Vents in the Eye of the Ordinary Observer

Last week, The Ordinary Observer reported on the Federal Circuit's recent decision in Pacific Coast Marine Windshields Ltd. v. Malibu Boats, holding for the first time that prosecution history estoppel applies to design patents, while finding in the case at bar that the patentee was not estopped from asserting its patent against the accused infringer.  We have noted since then that legal observers have followed this decision, and Pacific Coast has already issued a press release calling it a big win.  At this stage, it might be important to remind readers that this case may still have some legs left, and Pacific Coast may not want to open the champagne just yet.

The Federal Circuit's reversal concerned the range of material over which prosecution history estoppel applied.  During prosecution of the patent in suit, Pacific Coast had canceled six figures in response to a restriction requirement from the examiner, primarily relating to alternate vent design embodiments.  A figure from the Court's opinion displaying the patented and surrendered designs is shown, below.

Red outlines denote surrendered embodiments

The district court then held that prosecution history estoppel barred Pacific Coast from asserting its patent against accused designs embodying not only the surrendered designs, but also designs within "the territory [surrendered] between the original claim and the amended claim." 

The Federal Circuit countered that surrendering one design embodiment cannot be said to surrender any particular range of designs beyond the material actually surrendered.  The court declined to decide whether the estoppel reached "colorable imitations thereof," however, because the defendant in this case did not argue that its design was a colorable imitation of the material surrendered. 

In the absence of a range theory, and without finding that the accused design was a colorable imitation of the material surrendered, the Federal Circuit remanded for further proceedings.  The parties both stand in uncertain territory: The patented design shows four circular vents; the surrendered material shows zero vents, two rectangular vents, or four rectangular vents; and the accused design has three rectangular vents.  

Can the defendant maintain a viable non-infringement position without arguing a range theory for prosecution history estoppel?  Can infringement be shown even in the absence of prosecution history estoppel?  Some recent cases may be instructive.

Two days after the Federal Circuit's holding in Pacific Coast, the U.S. District Court for the Southern District of New York granted summary judgment to the defendant in a design patent case entitled, Harel v. K.K. International Trading Corp., 12-CV-4527-BMC (S.D.N.Y. Jan. 10, 2014).  The case concerned U.S. Design Patent D501,274 directed to a cigarette lighter insert, and an accused cigarette lighter insert, with images of both shown below.

While the court noted the obvious similarity between the two designs, it was nonetheless drawn to several unmistakable differences.  The most obvious of which was that the patented design had five vertical vents, while the accused design had eight circular vents arranged in a different configuration.  The accused design also contained a square window on the lower half of the insert not shown on the patented design, two burners instead of the patented design's one, and a textured lower surface rather than the patented design's apparent smooth face.  These subtle but certain distinctions were sufficient to find, as a matter of law, that an ordinary observer could not confuse the two designs.  

The Harel case demonstrates how four identified distinctions, including distinguishing vent designs, may be enough to take an accused design out of the scope of infringement.  That case contained comparatively little discussion of the prior art or the scope of the patent asserted, however, and a more apt comparison would probably be found in which the patented design was more discretely bounded by prior art, as acknowledge by the court.

The better case for comparison may be a decision to grant a motion for summary judgment out of the Middle District of Florida late last year, the same court to which the Pacific Coast case has been remanded.  Spencer v. Taco Bell Corp.,  8:12-cv-387-T-23TGW (M.D. Fla. Oct. 2, 2013), concerned U.S. Design Patent No. D643,474, to a style of coin-drop game, an image of which is shown along side the accused game, below:

Despite the superficial similarity between the two designs, the court identified seven differences, which as a matter of law, rendered the accused design too distinct to infringe the D'474 Patent under the ordinary observer test.  The Court's opinion was buttressed with reference to language from the Federal Circuit's opinion in Egyptian Goddess and elsewhere, stating:
Where there are many examples of similar prior art designs . . . , differences between the claimed and accused design that might not be noticeable in the abstract can become significant to the hypothetical ordinary observer who is conversant with the prior art.
Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 678 (Fed. Cir. 2008). 

The particular problem facing Spencer was that the prior art was awash with coin drop games of every shape and style, including Spencer's own prior art, as seen below:

Because the ordinary observer test contemplates an observer with knowledge of the prior art, Spencer found himself faced with an Ordinary Observer who was something of a coin drop game enthusiast, capable of discerning even small differences between competing games of a similar form.  In the eyes of that observer, it was clear that the accused game could never be confused with Spencer's claimed design.

This brings us back to the Federal Circuit's remand in Pacific Coast.  While the plaintiff has succeeded in reviving its claim for design patent infringement, the question of infringement itself remains very much unsettled.  Regardless of the applicability of prosecution history estoppel, Pacific Coast likely finds itself faced with an ordinary observer who, suffice it to say, knows a thing or two about windshield vent designs, and has some reason to view vent design differences as significant.  In view of that knowledge, and any other relevant prior art, Pacific Coast likely faces greater challenge proving infringement than it would prefer at this point.

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