Monday, November 14, 2016

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 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.