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January 9, 2014

Sunk By Restriction

A CAFC panel decides that satisfying a restriction requirement by eliminating drawings in a design patent application is prosecution estoppel. "In the design patent context, the surrender resulting from a restriction requirement invokes prosecution history estoppel if the surrender was necessary, as in Festo, 'to secure the patent.'" This continues the judicial trend of chopping away patent rights.

Pacific Coast Marine Windshields v. Marine Hardware (CAFC 2013-1199) precedential; Judges Dyk (author), Mayer and Chen

In contrast to utility patents, "a design patent application 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, 535 U.S. at 736 (emphasis added). In Festo, the Court explicitly addressed, and rejected, arguments similar to those raised by Pacific Coast here, explaining that the rationale behind prosecution history estoppel "does not cease simply because the narrowing amendment, submitted to secure a patent, was for some purpose other than avoiding prior art." Id. at 736. Here, we think that, in the design patent context, the surrender resulting from a restriction requirement invokes prosecution history estoppel if the surrender was necessary, as in Festo, "to secure the patent." Id.
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 article of manufacture to which such design or colorable imitation has been applied." 35 U.S.C. § 289 (emphases added).

The nut of the court's logic is that the doctrine of equivalence for patented designs is expressly limited to subjective similarity in look. A restriction requirement simply highlights what the examiner found dissimilar. The court finds that a prosecutor agreeing to the requirement is conceding that the design(s) discarded are not equivalent. The only way to recover that subject matter is through a divisional application.

Wizened patent wizard Hal Wegner objects:

Breaking new Legal Ground: A restriction requirement under the 1952 Patent Act was to be entirely procedural: "[A] restriction decision is not an actual rejection on grounds of patentability, but simply a procedural requirement." Bristol-Myers Squibb Co. v. Pharmachemie B.V., 361 F.3d 1343, 1352 (Fed. Cir. 2004)((citing In re Hengehold, 440 F.2d 1395, 1399 (CCPA 1971)).
Pacific Coast goes against the grain of Supreme Court case law that has limited prosecution history estoppel to situations where the patentee surrendered claim scope to avoid or distinguish a substantive ground of rejection. Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 30-31 (1997)(discussing Exhibit Supply Co. v. Ace Patents Corp., 315 U.S. 126, 136 (1942); Keystone Driller Co. v. Northwest Engineering Corp., 294 U.S. 42 (1935)); id. 520 U.S. at 31 n.5 (citing Smith v. Magic City Kennel Club, Inc., 282 U.S. 784, 788 (1931); Computing Scale Co. of America v. Automatic Scale Co., 204 U.S. 609, 618-20 (1907); Hubbell v. United States, 179 U.S. 77, 83 (1900); Sutter v. Robinson, 119 U.S. 530, 541 (1886); cf. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 33 (1966)). Cf. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002).
Added Prosecution Burden: Section 121 of the 1952 Patent Act was designed to make restriction practice entirely procedural. Not so, under Pacific Coast Marine: Prosecutors must now fight some procedural battles to avoid the substantive consequences that Section 121 was designed to avoid.

Posted by Patent Hawk at January 9, 2014 3:54 PM | Design Patents