Prosecution history estoppel (PHE) may prevent a finding of infringement when the patentee originally claims the matter alleged to infringe but then narrows the claim in response to a rejection during prosecution. PHE applies when: (1) there is a “surrender of claim scope” during the prosecution of the asserted design patent; (2) the surrender is “for reasons of patentability”; and (3) the accused design is within the scope of the surrender. Pacific Coast Marine Windshields Ltd. v. Malibu Boats, LLC, 739 F.3d 694, 702 (Fed. Cir. 2014). PHE may be based on amendment or argument.
Amendment Based – Four examples of amendment-based PHE are failure to prosecute a non-elected embodiment following a restriction requirement, amendment of the title that excludes the accused product, elimination of a design element after a new matter rejection, and a characteristic features statement.
Failure to Prosecute Unelected Embodiment – Design patents are limited to one claim. See In re Rubinfield, 270 F.2d 391, 396 (CCPA 1959). When an application includes more than one patentably distinct claim, the examiner will require the applicant to elect one embodiment to prosecute. If the applicant fails to prosecute the unelected embodiment in a divisional application, PHE may apply to the unelected and non-prosecuted embodiment when the accused product falls within the scope of the non-prosecuted embodiment. See Jenny Yoo Collection, Inc. v. Watters Design Inc., No. 16-CV-2205 (VSB), 2017 U.S. Dist. LEXIS 175399, at *28 (S.D.N.Y. Oct. 20, 2017); Victus, Ltd. v. Collezione Europa U.S.A., Inc., No. 2:97-cv-00138, 1998 U.S. Dist. LEXIS 14230, at *14-19 (M.D.N.C. Aug. 3, 1998). If the accused product falls outside the scope of the non-prosecuted embodiment, there is no PHE. See Pacific Coast Marine Windshields, supra, at 705.
Failure to prosecute an unelected embodiment does not always result in estoppel even when the accused product is substantially the same as the unelected and non-prosecuted embodiment. This can occur when the elected embodiment is a portion of the unelected embodiment and the elected embodiment (now patented) is embodied in the accused product. See Advantek Mktg. v. Shanghai Walk-Long Tools Co., 898 F.3d 1210, 1214-17 (Fed. Cir. 2018).
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Please note this post is for general informational purposes only. It is not legal advice and does not create an attorney client relationship.
