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IP Alert: Federal Circuit Gives Guidance on Design Patent Surrender

August 3, 2018

On August 1, in Advantek Mktg., Inc. v. Shanghai Walk-Long Tools Co., a Federal Circuit panel issued clarification of how surrender of claim scope operates for design patents. Reversing a district court’s grant of judgment under Rule 12(c), the court concluded that “[r]egardless 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.”

Advantek sued Shanghai Walk-Long Tools (“Walk-Long”) for design patent infringement of U.S. Pat. No. D715,006 in the Central District of California. In response to the complaint, Walk-Long moved for judgment under Rule 12(c), arguing that prosecution history bars infringement.

During prosecution, the examiner issued a restriction requirement as between two different embodiments. The embodiment (below, left) shows a skeletal structure of the gazebo, while the second embodiment (below, right) shows the skeletal structure with the addition of a cover. In response to the restriction requirement, the applicant canceled the second embodiment. After prosecution, the design patent—directed to the first embodiment—issued.

Walk-Long argued in its motion to dismiss that Advantek had “intentionally surrendered patent claim scope that would have included gazebos with a cover in response to a restriction requirement, thereby limiting the scope of the ‘006 Patent to gazebos without a cover.” Relying on an earlier Federal Circuit decision, Pacific Coast Marine Windshields Ltd. v. Malibu Boats, LLC, the district court agreed, stating that Advantek had surrendered the gazebo with a cover “to secure a patent” by “choosing one of two drawings in response to a restriction requirement.”

Reproduced below is an image of the accused gazebo, which includes a cover.

Citing its decision in Pacific Coast, the Federal Circuit held that prosecution history in a design patent case depends on “(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.”

On appeal, Advantek focused on the third prong of the Pacific Coast test, arguing that the accused design falls outside any claim scope that was purportedly surrendered. More specifically, Advantek argued that the elected embodiment was the skeletal structure and that this design was present in the accused product, with or without a cover.

The Federal Circuit agreed with Advantek, finding that the accused product falls outside the scope of any purported surrender. As explained by the Federal Circuit, Advantek elected to patent the gazebo with a particular skeletal structure. A competitor can infringe regardless of extra features that the competitor might add, such as a cover. The case was remanded to the district court for further proceedings.

The Federal Circuit additionally acknowledged the Supreme Court case Samsung Electronics Co. v. Apple Inc. Although that case concerned patent damages, the Federal Circuit observed that the Court there reaffirmed that a design patent may be only for a component of a product. The Federal Circuit decision includes a footnote adding that if the accused skeletal structure is only a component of an accused multicomponent product, then “Advantek would only be able to seek damages based on the value of the component, not the product as a whole.”

The Advantek decision is relevant for design patent prosecution because restriction requirements are routinely issued in design patent applications. The decision is also relevant for design patent litigation because it provides guidance on prosecution history estoppel as well as the scope of damages available for infringement.

If you have questions regarding this ruling, please contact Fitch Even partner Jon A. Birmingham, author of this alert.

For more information on recent cases involving design patents, access a recording here of the August 2018 Fitch Even webinar, Design Patent Enforcement: Recent U.S. Court and PTAB Decisions.

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