Federal Circuit Rules On Issue Of Prosecution-History Estoppel In Design-Patent Case
On Wednesday, August 1, 2018, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion reversing a district court dismissal in a design-patent case. Advantek Marketing, Inc. v. Shanghai Walk-Long Tools Co., —F.3d—, (Fed. Cir. August 1, 2018). The CAFC determined that prosecution-history estoppel did not bar the patent owner’s infringement claim, and remanded the case for further proceedings.
Advantek owns a design patent, United States Patent No. D715,006, which depicts a kennel product that it sells as the “Pet Gazebo.” Advantek included five figures in its design-patent application, four of which showed the Pet Gazebo without a cover (roof), and the fifth showing the kennel with a cover. During prosecution, the patent examiner issued a restriction requirement describing the kennel of figures 1–4 (without a cover) and the kennel of figures 1–5 (including the figure with a cover) as separate inventions and requiring Advantek to choose one of them for further prosecution (a design patent cannot contain more than one claim). Advantek elected to patent the embodiment of figures 1–4, the one without a cover.
The accused infringer’s product, the “Pet Companion,” is a kennel with a cover. During the infringement litigation, the accused infringer, Shanghai Walk-Long, argued that because Advantek had elected to patent the embodiment without a cover, it had “intentionally surrendered patent claim scope that would have included gazebos with a cover” and that the doctrine of prosecution-history estoppel barred Advantek from asserting infringement by a kennel with a cover. The district court agreed, and entered judgment for Shanghai Long-Walk.
The CAFC reversed. In its opinion, the CAFC observed that in Samsung Electronics Co. v. Apple Inc., 137 S. Ct. 429 (2016), the Supreme Court had reaffirmed that a design patent may claim one component of a product, and need not claim the entire product. The CAFC found that the kennel without a cover was a component of the kennel with a cover; thus, “Regardless of whether Advantek surrendered claim scope during prosecution, the accused product falls outside the scope of the purported surrender, contrary to the district court’s conclusion.” That is, the surrender of the patent claim to the product including the cover did not bar an infringement claim against a product including the cover, because the patent claim without the cover could be infringed regardless of whether the accused product included a cover. The CAFC therefore reversed the judgment and remanded the case to the district court for further proceedings.
The case is a helpful reminder, not only that design patents can be a useful form of intellectual-property right, but that it can be worthwhile to pursue design-patent coverage of components and sub-assemblies of a product, in addition to a claim to the product as a whole.