Pacific Coast Marine v. Malibu Boats, LLC

Pacific Coast applied for a design patent, 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.” Accompanying figures depicted embodiments with different vent hole configurations and showed designs that included and excluded a hatch on the front of the windshield. The examiner determined that the multiple embodiments represented five “patentably distinct groups of designs” and issued a restriction requirement, identifying five distinct groups of designs as windshields. The applicant was required to elect a single group for the pending application, but was entitled to file additional applications for each remaining group and elected “Group I,” depicting four vent holes and a hatch. The amended application issued as the 070 patent in 2007, claiming “[t]he ornamental design for a marine windshield, as shown and described.” Pacific Coast sued Malibu Boats, alleging infringement. The district court granted Malibu Boats summary judgment, finding that prosecution history estoppel barred the infringement claim. The Federal Circuit reversed, agreeing that the principles of prosecution history estoppel apply to design patents, but finding that the accused infringing design was not within the scope of the subject matter surrendered during prosecution.View "Pacific Coast Marine v. Malibu Boats, LLC" on Justia Law