Docket No. 2017-1314
NEWMAN, CELVENGER, CHEN
August 1, 2018
Brief summary: DC’s dismissal of Advantek’s design patent infringement complaint reversed since, e.g., “a design patent may be for a component of a product” (“damages based on the value of the component, not the product as a whole”).
Summary: Advantek sued Shanghai (its former manufacturer) for infringement of Advantek’s design patent D715,006 directed to a portable animal kennel sold with the mark “Pet Gazebo”. Advantek alleged that Shanghai’s “Pet Companion” product infringed the D’006 patent. Advantek appealed the DC’s dismissal of the complaint under FRCP 12(c), “holding that prosecution history estoppel bars Advantek from enforcing the D’006 patent against Pet Companion.” After the examiner issued a restriction requirement during prosecution, Advantek elected “Group I, including corresponding Embodiment 1 and Figs. 1-4 drawn to a gazebo without a cover”. Shanghai successfully argued to the DC that Advantek “surrender[ed] the proposed kennel with a cover…to secure a patent” by “choosing one of two drawings in response to a restriction requirement.” The FC panel reviewed the DC’s dismissal “without deference” accepting “all material allegations in the complaint as true and” construing those “in the light most favorable to [the non-moving party]” (Info-Hold, FC 2015). The FC panel also explained that “[d]esign patents are for an ‘original and ornamental design for an article of manufacture” (35 USC § 171) and “that only one claim is permitted in a design patent” (37 CFR § 1.151, “the basis for the examiner’s requirement for restriction”). Under Pacific Coast Marine (FC 2014), the FC panel explained that “prosecution history estoppel 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 surrender’”. Advantek argued Shanghai’s design “falls outside any claim scope Advantek purportedely surrendered during prosecution” (“its elected design is the ‘skeletal structure design’”) and that its “election during prosecution broadended its ability to prevent infringement of its skeletal design, whether the skeleton was used alone or in combination with other parts.” The FC panel explained that under Samsung (US 2016; Gorham Mfg., US 1872 (finding infringement of a design patent to handles of spoons and forks)), “a design patent may be for a component of a product”. The FC panel agreed with Advantek’s arguments, noting in FN2 that “if the accused skeletal structure is only a component of an accused multicomponent product, Advantek would only be able to seek damages based on the value of the component, not the product as a whole” (citing Samsung). The DC’s dismissal was therefore reversed.