Pac. Coast Marine Windshields Ltd. v. Malibu Boats, LLC, 2013-1199

CourtUnited States Courts of Appeals. United States Court of Appeals for the Federal Circuit
Writing for the CourtDYK
Docket Number2013-1199
PartiesPACIFIC COAST MARINE WINDSHIELDS LIMITED, Plaintiff-Appellant, v. MALIBU BOATS, LLC, AND TRESSMARK, INC., doing business as Liquid Sports Marine, Defendants-Appellees, AND MARINE HARDWARE, INC., MH WINDOWS, LLC, AND JOHN F. PUGH, Defendants-Appellees.
Decision Date08 January 2014

doing business as Liquid Sports Marine, Defendants-Appellees,
AND JOHN F. PUGH, Defendants-Appellees.


United States Court of Appeals for the Federal Circuit

Decided: January 8, 2014

Appeal from the United States District Court for the Middle District of Florida in No. 12-CV-0033, Judge John Antoon, II.

ROBERT E. ROHDE, Rohde & Van Kampen, PLLC, of Seattle, Washington, argued for plaintiff-appellant.

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DARIN W. SNYDER, O'Melveny & Myers LLP, of San Francisco, California, argued for all defendants-appellees. With him on the brief for defendants-appellees, Malibu Boats, LLC, et al., were BRIAN BERLINER and STEVEN BASILEO, of Los Angeles, California; and JONATHAN D. HACKER and DEANNA M. RICE, of Washington, DC. On the brief for defendants-appellees, Marine Hardware, Inc., et al., were MARK P. WALTERS and DARIO A. MACHLEIDT, Frommer Lawrence & Haug, LLP, of Seattle, Washington, for

Before DYK, MAYER, and CHEN, Circuit Judges.

DYK, 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 infringing design was not within the scope of the subject matter surrendered during prosecution, and remand for further proceedings.


Darren A. Bach, the owner and chief executive officer of Pacific Coast, filed a design patent application on April 27, 2006, claiming an "ornamental design of a marine

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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 representative of the various embodiments.

Image materials not available for display.

JA 362, 366-71.

The examiner determined that the multiple embodiments represented five "patentably distinct groups of designs" and issued a restriction requirement, identifying

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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, Embodiment 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 embodiment. 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

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with no holes in the corner post as a divisional of the originally-filed application, but did not file another divisional application with respect to any of the other embodiments. See U.S. Patent No. D569,782.

In 2011, Pacific Coast brought suit in the Middle District 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.

Image materials not available for display.

JA 11.

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The district court granted Malibu Boats' motion for partial summary judgment of non-infringement on the grounds of prosecution history estoppel. The district court found that, during prosecution, the applicant had surrendered 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 recognized that "the accused design has one fewer 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 prosecution 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 prosecution 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., 350 F.3d 1235 (Fed. Cir. 2003)). We also review a district court's grant of summary judgment without deference. Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1323 (Fed. Cir. 2002).

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Although treatises2 and district court decisions going back to 18893 have recognized that the concept of prosecution 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 established for utility patents. Utility patents may be infringed both literally and under the doctrine of equivalents. For doctrine of equivalents purposes, the accused and claimed elements are equivalent if there are only "insubstantial differences" between them. Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 39

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(1997). An alternate formulation focuses on whether the "substitute element matches the function, way, and result of the claimed element." Id. at 40. See also Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 612 (1950) (finding equivalence when the "changes which avoid literal infringement are colorable only").

With respect to utility patents, prosecution history estoppel limits a patentee's ability to recover under the doctrine of equivalents, but does not limit literal infringement. The doctrine 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 equivalents, when applied broadly, conflicts with the definitional and public-notice functions of the statutory claiming requirement." Warner-Jenkinson, 520 U.S. at 29; see also Festo, 535 U.S. at 731 ("A patent holder should know what he owns, and the public should know what he does not."). Consequently, prosecution history estoppel limits the bounds of what a patentee can claim as equivalent by "requir[ing] that the claims of a patent be interpreted in light of the proceedings in the PTO during the application process." Festo, 535 U.S. at 733. Where subject matter is surrendered during prosecution, prosecution history estoppel prevents the patentee from "recaptur[ing] in an infringement action the very subject matter surrendered as a condition of receiving the patent." Id. at 734.

For design patents, the concepts of literal infringement and equivalents infringement are intertwined. Unlike the provisions defining infringement of a utility patent, the statutory provision on design patent infringement 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...

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