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Robert E. Rohde, Rohde & Van Kampen, PLLC, of Seattle, WA, argued for plaintiff-appellant.
Darin W. Snyder, O'Melveny & Myers LLP, of San Francisco, CA, 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, CA; 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, WA, for Defendants-Appellees.
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 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.
JA 362, 366-71.
The examiner determined that the multiple embodiments 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, 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. 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 ...