District Court Relies on Prosecution History Estoppel in Judgment on the Pleadings

Two years ago we reported on the landmark Federal Circuit decision in Pacific Coast Marine Windshields Ltd. v. Malibu Boats, LLC, holding for the first time that the doctrine of prosecution history estoppel applied to design patents.  A lingering question following that decision was whether this doctrine was likely to substantially impact design patent infringement cases going forward.  While prosecution history estoppel would bar patentees from claiming an embodiment that they had surrendered, the Federal Circuit also held that the estoppel effect only applied to the discrete embodiment that were disclaimed, and not to the range of embodiment between what was claimed and what was dedicated to the public.  Thus, unless an accused infringer seemingly designed their product to exactly copy an embodiment that the patentee had affirmatively disclaimed, one could wonder whether we might ever see prosecution history estoppel successfully invoked in a district court case.

Last week, prosecution history estoppel was successfully invoked in a district court case.

In Advantek Marketing, Inc. v. Shanghai Walk-Long Tools Co., Judge Real for the U.S. District Court in the Southern District of California granted a motion for judgment on the pleadings, finding that the Plaintiff's claims for infringement of U.S. Design Patent No. D715,006 were barred by the doctrine of prosecution history estoppel.

Advantek's pet gazebo, shown above and to the left, was one of two embodiments originally recited in the application that matured into the D'006 Patent.  The other embodiment, which was withdrawn by the applicant following a restriction requirement, is shown below:

Shanghai, who manufactured the "pet companion product" shown at the top of this article to the right, moved to dismiss the complaint under Rule 12(b)(6) for failure to state a claim upon which relief could be granted.  Judge Real granted Shanghai's motion in a terse, four-page opinion, holding that the accused product was "exactly the same as the design surrendered" by Advantek.  

This case should stand as a stern warning to practitioners and applicants when submitting applications for design patents having multiple embodiments.  Any embodiment withdrawn from one application, and not pursued in a related application, may be available to competitors as a prima facie non-infringing design.  It will be interesting to see if, in view of Pacific Coast and cases such as this, potential competitors begin looking to the prosecution history of patented designs for disclaimed embodiments that they know will avoid infringement.