Case Information
*2 Before D YK , M AYER , and C HEN , Circuit Judges. D YK Circuit Judge .
Pacific Coast Marine Windshields Limited (“Pacific Coast”) is the assignee of all rights in U.S. Patent No. D555,070 (“the ’070 patent”) for an ornamental boat windshield design. Pacific Coast brought suit against Malibu Boats, LLC, Marine Hardware, Inc., Tressmark, Inc., MH Windows, LLC, and John F. Pugh (collectively “Malibu Boats”) in the Middle District of Florida, alleging infringement. The district court granted Malibu Boats’ motion for summary judgment of non-infringement, finding that prosecution history estoppel barred the infringement claim. Pacific Coast appeals. We hold that the principles of prosecution history estoppel apply to design patents, but reverse the district court’s summary judgment of non-infringement because the accused in- fringing design was not within the scope of the subject matter surrendered during prosecution, and remand for further proceedings.
B ACKGROUND Darren A. Bach, the owner and chief executive officer of Pacific Coast, filed a design patent application оn April 27, 2006, claiming an “ornamental design of a marine windshield with a frame, a tapered corner post with vent holes and without said vent holes, and with a hatch and without said hatch, as shown and described.” JA 361 (emphasis removed). The accompanying figures depicted various embodiments of the claimed design with different vent hole configurations. The drawings also showed designs that included and excluded a hatch on the front of the windshield. Shown below are submitted figures reрre- sentative of the various embodiments.
JA 362, 366-71.
The examiner determined that the multiple embodi- ments represented five “patentably distinct groups of designs” and issued a restriction requirement, identifying , the five distinct groups of designs as windshields with: (1) four circular holes and a hatch (figure 1); (2) four circular or square holes and no hatch (figures 7 & 12); (3) no holes and a hatch (figure 8); (4) no holes and no hatch (figure 9); and (5) two oval or rectangular holes and a hatch (figures 10 & 11). JA 386. The applicant was required to elect a single group for the pending application although the applicant was entitled to file additional applications for each of the remaining groups.
In response, the applicant elected “Group I, Embodi- ment 1,” corresponding to figure 1 above, depicting four vent holes and a hatch. JA 392. He amended the claim to recite “the ornamental design of a marine windshield with a frame, and a pair of tapered corner posts[,]” removing the original claim language stating “with vent holes and without said vent holes, and with a hatch and without said hatch.” JA 390 (emphases removed). The applicant also cancelled figures 7-12, leaving only the embodiment with four circular holes on the corner post and a hatch on the front of the windshield. The amended application issued as the ’070 patent on November 13, 2007. As issued, the ’070 patent claims “[t]he ornamental design for a marine windshield, as shown and described.” JA 170. Figures 1-6 show alternate views of the four-hole embod- iment. The inventor assigned all rights in the ’070 patent to his wholly owned company, Pacific Coast, in June, 2011. [1] The inventor later obtained a patent for the design with no holes in the corner post as a divisional of the originally-filed application, but did not file another divi- sional application with respect to any of the other embod- iments. See U.S. Patent No. D569,782.
In 2011, Pacific Coast brought suit in the Middle Dis- trict of Florida, alleging, inter alia, that Malibu Boats manufactured and sold boat windshields with a design that infringed the ’070 patent. Pacific Coast also alleged that Malibu Boats induced others, including customers and distributors, to infringe the ’070 patent. The accused infringing design was in a boat windshield with three trapezoidal holes on the corner post, as shown below. JA 11.
ular right or interest under a patent is an assignment or a
license does not depend upоn the name by which it calls
itself, but upon the legal effect of its provisions.”) (empha-
sis removed);
Alfred E. Mann Found. for Sci. Research v.
Cochlear Corp.
,
The district court granted Malibu Boats’ mоtion for partial summary judgment of non-infringement on the grounds of prosecution history estoppel. The district court found that, during prosecution, the applicant had surren- dered the designs reflected in the canceled figures and amended the claim “in order to obtain the patent.” JA 9. In holding that the patentee was estopped from asserting infringement against the accused design, the court recog- nized that “the accused design has one fеwer vent hole than the embodiment,” but explained that “the accused design is still clearly within ‘the territory [surrendered] between the original claim and amended claim.’” JA 12 (citing Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co. , 535 U.S. 722, 740 (2002)). The court also found that the patentee failed to overcome the presumption of prose- cution history estoppel. The court entered a judgment of non-infringement based on the finding of prosecution history estoppel, and certified the judgment for appeal pursuant to Fed. R. Civ. P. 54(b).
Pacific Coast appealed. We have jurisdiction under 28
U.S.C. § 1295(a)(1). Whether the presumption of prosecu-
tion history estoppel precludes a patentee from asserting
infringement against an alleged equivalent of an amended
claim element is a question of law that we review without
deference.
Honeywell Int’l. Inc. v. Hamilton Sundstrand
,
370 F.3d 1131, 1139 (Fed. Cir. 2004) (en banc) (citing
Ranbaxy Pharms., Inc. v. Apotex, Inc.
,
D ISCUSSION I
Although treatises [2] and district court decisions going back to 1889 [3] have recоgnized that the concept of prosecu- tion history estoppel applies to design patents as well as utility patents, this issue is one of first impression for our court.
The doctrine of prosecution history estoppel is well es-
tablished for utility patents. Utility patents may be
infringed both literally and under the doctrine of equiva-
lents. For doctrine of equivalents purposes, the accused
and claimed elements are equivalent if there аre only
“insubstantial differences” between them.
Warner-
Jenkinson Co. v. Hilton Davis Chem. Co.
,
With respect to utility patents, prosecution history es-
toppel limits a patentee’s ability to recover under the
doctrine of equivalents, but does not limit literal in-
fringement. The dоctrine is founded on the public notice
function of patents. The Supreme Court has recognized
that “[t]here can be no denying that the doctrine of equiv-
alents, when applied broadly, conflicts with the defini-
tional and public-notice functions of the statutory
claiming requirement.”
Warner-Jenkinson
,
For design patents, the concepts оf literal infringe- ment and equivalents infringement are intertwined. Unlike the provisions defining infringement of a utility patent, the statutory provision on design patent infringe- ment does not require literal identity, imposing liability on anyone who “without license of the owner, (1) applies the patented design, or any colorable imitation thereof , to any article of manufacture for the purpose of sale, or (2) sells or exposes for sale any article of manufacture to which such design or colorable imitation has been аp- plied . . . .” 35 U.S.C. § 289 (emphases added).
Under the leading Supreme Court case of Gorham Mfg. Co. v. White , 81 U.S. 511 (1871), the test for design patent infringement is whether
in the eye of an ordinary observer, giving such at- tention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.
Id. at 528. The Court explained that, if the test for in- fringement required the accused design to reproduce all elements of the patented design, “[t]here never could be piracy of a patented design, for human ingenuity has never yet produced a design, in all its details, exactly like another, so like, that an expert could not distinguish them.” Id. at 527; see also Braun Inc. v. Dynamics Corp. of Am. , 975 F.2d 815, 820 (Fed. Cir. 1992) (“[P]atent in- fringement can be found for a design that is not identical to the patented design.”).
Thus, the test for design patent infringement is not identity, but rather sufficient similarity—whether “the accused design could not reasonably be viewed as so similar to the claimed design that a purchaser familiar with the prior art would be deceived by the similarity between the claimed and accused designs, “‘inducing him to purchase one supposing it to be the other.’” Egyptian Goddess, Inc. v. Swisa, Inc. , 543 F.3d 665, 683 (Fed. Cir. 2008) (quoting Gorham , 81 U.S. at 528). We have held that the “colorable imitation” standard of the design patent statute involves the concept of equivalents. Alt- hough “the way/function/result test . . . is not directly transferable to design patents, it has long been recоgnized that the principles of equivalency are applicable.” Lee v. Dayton-Hudson Corp. , 838 F.2d 1186, 1189 (Fed. Cir. 1988); see also Chisum on Patents § 23.05 (“[I]t can be questioned whether there is any need to apply to designs the general distinction between ‘literal’ infringement of a patent and infringement under the ‘doctrine of equiva- lents.’”). Indeed, Pacific Coast characterized the substan- tial similarity between the accused designs and the ’070 patent as the basis for an infringement claim “under the doctrine of equivalеnts.” JA 142.
Pacific Coast, in its briefs, argued that prosecution
history estoppel should not apply to design patents at all.
[4]
But at oral argument, Pacific Coast conceded that a
patentee should not be able to assert infringement against
a particular design that was abandoned during prosecu-
tion for reasons of patentability. Oral Argument at 5:14-
5:30,
available at
http://oralarguments.cafc.uscourts.gov/
default.aspx?fl=2013-1199.mp3. This concession is well
taken. The sаme principles of public notice that underlie
prosecution history estoppel apply to design patents as
well as utility patents. Prosecution history estoppel in
design patents promotes the “clarity [that] is essential to
promote progress.”
Festo
, 535 U.S. at 730. Refusing to
apply the principles of prosecution history estoppel to
design patents would undermine the “definitional and
public-notice functions of the statutory clаiming require-
ment.”
Warner-Jenkinson
,
II Having determined that the principles of prosecution history estoppel apply to design patents, we consider whether those principles bar the infringement claim in this case. This turns on the answers to three questions: (1) whether there was a surrender; (2) whether it was for reasons of patentability; and (3) whether the accused design is within the scope of the surrender.
motion for summary judgment). In this case, we find no prejudice, and Pacific Coast alleges none, resulting from the district court’s considering the issue at the summary judgment stage.
A
As to the first, we conclude that there was a surrender
of claim scope during prosecution. Here, in determining
the scope of the claimed design, “[i]t is the drawings of the
design patent that provide the description of the inven-
tion.”
In re Daniels
,
Here, in response to the examiner’s restriction re- quirement, the applicant amended the claim by cancelling figures associated with all but one of the patentably distinct groups of designs identified by the examiner—the four-hole embodiment—and striking references to alter- nate configurations from the text. The PTO treated the response as “an election without traverse” and withdrew the unelected designs from consideration. JA 394. Conse- quently, the issued ’070 patent claimed only “[t]he orna- mental design for a marine windshield, as shown and described,” JA 170, in figures that all depicted four circu- lar vent holes on the corner post. JA 170-74. By cancelling figures showing cоrner posts with two holes and no holes, the applicant surrendered such designs and conceded that the claim was limited to what the remaining figure showed—a windshield with four holes in the corner post— and colorable imitations thereof.
It does not matter that the surrender involved the
cancellation of claims rather than amendment. In
Honey-
well Int’l Inc. v. Hamilton Sundstrand
, 370 F.3d 1131,
1144 (Fed. Cir. 2004) (en banc), we held that prosecution
history estoppel is not limited to narrowing amendments,
but extends as well tо claim surrender.
See also Deering
Precision Instruments, L.L.C. v. Vector Distrib. Sys., Inc.
,
B As to the second question, we conclude that claim scope was surrendered in order to secure the patent, as required by the Supreme Court’s decision in Festo . Here, the surrender was not made to avoid prior art but because of a restriction requirement under 35 U.S.C. § 121. Thus, the surrender was not made for reasons of patentability (for example, anticipation, obviousness, or patentable subject matter). However, the surrender was made to secure the patent.
In contrast to utility patents, “a design patent appli- cation may only include a single claim.” MPEP § 1503.1 ¶ 15.61(III) (8th ed. Rev. 9, Aug. 2012); see also In re Rubinfield , 207 F.2d 391, 396 (CCPA 1959) (“We find no sound reason for disturbing the long-standing practice of the Patent Office, embodied in Rule 153, which limits design applications to a single claim.”). In light of that requirement, if an application for a design patent includes more than one patentable design, the PTO must require the applicant to restrict his claims to a single inventive design under 35 U.S.C. § 121. Thus, in design patents, unlike utility patents, restriction requirements cannot be a mere matter of administrative convenience. Here, the examiner imposed a restriction requirement on the ground that the different drawings showed “patentably distinct groups of designs,” contravening the requirement that design patents must claim only one design. JA 386. The examiner identified the specific design groups and associated figures, giving the applicant the option to elect one group.
Pacific Coast argues, however, that only surrenders to
avoid prior art are within the doctrine. We think that the
doctrine is broader than that. The Court has held that
“[e]stoppel arises when an amendment is made to secure
the patent and the amendment narrows the patent’s
scope,” expressly stating that “a narrowing amendment
made to satisfy
any
requirement of the Patent Act may
give rise to an estoppel.”
Festo
,
C
The final question is whether the accused design is
within the scope of the surrender. Prosecution history
estoрpel only bars an infringement claim if the accused
design fell within the scope of the surrendered subject
matter.
See Wang Labs., Inc. v. Mitsubishi Elecs. Am.,
Inc.
,
Here, the surrendered designs included windshields with two holes on the corner post. The district court held that after “[c]omparing the Defendants’ accused design with the patented design and the canceled embodiments, it is clear that the accused design is within the territory between the original claim and the amended claim.” JA 10. Although the accused design had a three-hole configu- ration and the originally-claimed design did not include a three-hole configuration, the court found that “the ac- cused design is still clearly within the ‘territory between the original claim and the amended claim[,]’” i.e. , between the claimed four-hole embodiment and the surrendered two-hole embodiment. JA 12 (quoting Festo , 535 U.S. at 740).
Malibu Boats similarly argues that by abandoning a design with two holes and obtaining patents on designs (“[L]imiting the claims because of a restriction require- ment, as occurred here, would not necessarily invoke file history estoppel.”).
with four holes and no holes, the applicant abandoned the
range between four and zero.
See Biagro Western Sales,
Inc. v. Grow More Inc.
,
We note that the defendant here did not argue that the scope of the surrendered two-hole embodiment ex- tended to the three-hole embodiment because the three- hole embodiment was not colorably different from the two-hole embodiment. At oral argument, the defendant disclaimed the theory that the three-hole design was a colorable imitation of the surrendered two-hole embodi- ment. Under these circumstances, we need not decide whether the scope of the surrender is measured by the colorable imitation standard. Since the patentee here does not argue that the accused design was within the scope of the surrendered two-hole embodiment, no presumption of prosecution history estoppel could arise. We hold that prosecution history estoppel principles do not bar Pacific Coast’s infringement claim, and remand for further proceedings. [6]
REVERSED AND REMANDED
Notes
[1] Although the term used is “exclusive license,” the
agreement is effectively an assignment because it granted
“all substantial rights in and to the Patents[,]” including
the ’070 patent, exclusively to Pacific Coast. JA 139. It is
well-established that an exclusive transfer of all rights in
a patent is considered an assignment if that is its effect,
regardless of its name.
See, e.g. Waterman v. Mackenzie
,
[2] See, e.g. , Donald S. Chisum, Chisum on Patents § 23.05[7] (2013) (“Decisions confirm that a design patent’s prosecution history may limit its scope.”); 6 John G. Mills et al., Pat. L. Fundamentals § 20:50 (2d ed.) (2013) (“Where the Patent & Trademark Office required re- striction among a plurality of embodiments proffered to the Office in a single design applica[]tion, courts have held thаt the patentee is estopped from asserting that an accused design which corresponds to a nonelected embod- iment infringes the elected embodiment . . . .”).
[3]
See, e.g. Australia Vision Servs. Pty. Ltd. v. Diop-
tics Med. Prods. Inc.
,
[4] Pacific Coast also argued that the defendant here was foreclosed from raising the issue of prosecution history estoppel on summary judgment because it is an affirmative defense that was not raised in the pleadings, аs required by Rule 8(c) of the Federal Rules of Civil Procedure. Assuming arguendo that prosecution history estoppel is an affirmative defense, the doctrine was ade- quately pled in the defendants’ answers, which stated, “[p]laintiff’s claims are barred in whole or in-part by the doctrine[] of . . . estoppel . . . .” JA 228; see JA 181; JA 191; JA 201; JA 212. Moreover, the “purpose of such pleading is to give the opposing party notice . . . and a chance to argue” its side of the issue. Blonder-Tongue Labs., Inc. v. Univ. of Illinois Found. , 402 U.S. 313, 350 (1971). The Elеventh Circuit has held that “[w]hen a plaintiff has notice that an affirmative defense will be raised at trial, the defendant’s failure to comply with Rule 8(c) does not cause the plaintiff any prejudice.” Hassan v. U.S. Postal Serv. , 842 F.2d 260, 263 (warning against “hypertechni- cality in pleading requirements” and advising that courts “focus, instead, on enforc[ing] the actual purpose of the rule”); a ccord Grant v. Preferred Research, Inc. , 885 F.2d 795, 797-98 (11th Cir. 1989) (no prejudice in allowing an affirmative defense to be raised for the first time in a
[5] See, e.g. , Bayer Aktiengesellschaft v. Duphar Int’l Research , 738 F.2d 1237, 1243 (Fed. Cir. 1984)
[6] In its motion for summary judgment, Malibu Boats raised other grounds for a finding of non- infringement. The district court did not reach these issues, and neither do we.