Pacific Coast Marine Windshields Ltd. v. Malibu Boats, LLC
739 F.3d 694
| Fed. Cir. | 2014Background
- Pacific Coast owns the rights to U.S. Patent No. D555,070 for an ornamental marine windshield design and sues Malibu Boats and related entities for design infringement in the Middle District of Florida.
- The PTO issued a restriction requiring election among five design groups; Pacific Coast elected Group I (four holes with a hatch) and cancelled the other groups, amending the design to four holes with a hatch.
- The issued patent claims the ornamental design shown and described, with drawings depicting the four-hole embodiment; the inventor later obtained a divisional patent for a no-hole design, but not for the other embodiments.
- Pacific Coast sued alleging Malibu windshields infringe the ’070 design; Malibu moved for summary judgment based on prosecution history estoppel, claiming the accused three-hole design lies outside the surrendered scope.
- The district court granted partial summary judgment of non-infringement, and Pacific Coast appealed, challenging the application of prosecution history estoppel to design patents and the scope of surrender.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether prosecution history estoppel applies to design patents. | Pacific Coast argued estoppel should apply similarly to design patents as utilities. | Malibu Boats contended estoppel bars the accused design. | Yes, estoppel applies to design patents. |
| Whether there was a surrender of subject matter during prosecution. | Patents were narrowed to the four-hole design to obtain the patent. | Surrender occurred via cancellation and restriction. | There was a surrender to secure the patent. |
| Whether the accused three-hole design falls within the surrendered scope. | The three-hole design is not necessarily within the surrendered two-hole/ four-hole spectrum. | The three-hole design is colorably within the surrendered two-hole embodiment. | The accused design is not necessarily within the surrendered scope; remand for further proceedings. |
Key Cases Cited
- Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (U.S. 2002) (prosecution history estoppel applies to narrowing amendments to secure a patent)
- Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17 (U.S. 1997) (public-notice function; equivalence limits under prosecution history)
- Gorham Mfg. Co. v. White, 81 U.S. 511 (U.S. 1871) (design infringement test: substantial similarity, not literal identity)
- Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (colorable imitation standard for design patents)
- Honeywell Int’l Inc. v. Hamilton Sundstrand, 370 F.3d 1131 (Fed. Cir. 2004) (en banc: prosecution history estoppel applies to designs; not limited to amendments)
- Wang Labs., Inc. v. Mitsubishi Elecs. Am., Inc., 103 F.3d 1571 (Fed. Cir. 1997) (prosecution history estoppel scope for equivalents)