Pacific Coast v. Malibu Boats

In 2011, Pacific Coast Marine Windshields Limited (Pacific Coast) brought suit (No. 12-CV-0033) against Malibu Boats, LLC (Malibu) in the Middle District of Florida, alleging infringement of U.S. Patent No. D555,070. The District Court held that Pacific Coast was barred from alleging infringement due to prosecution history estoppel, and Pacific Coast appealed. 

On January 8, 2014, the Federal Circuit held that “the principles of prosecution history estoppel apply to design patents” but reversed the district court’s summary judgment of non-infringement because “the accused infringing design was not within the scope of the subject matter surrendered during prosecution.”

A design patent application filed in 2006 by Darren Bach, CEO of Pacific Coast, depicted various embodiments of the claimed ornamental design for a marine windshield with configurations including zero, two, and four vent holes on a corner post.  In response to a restriction requirement, the applicant elected a group corresponding to a single figure with four vent holes, and canceled the remaining figures.  Mr. Bach later obtained a patent for a divisional of the originally filed application, claiming a windshield with no vent holes.  The application issued as D555,070.

Figure 1 of the ‘070 patent is reproduced below.

The accused infringing design of Malibu Boats is a boat windshield with three trapezoidal holes, as shown below.

The District Court granted Malibu Boats’ motion for summary judgment of non-infringement, finding that prosecution history estoppel barred the infringement claim.  The District Court’s decision recognized that the accused design had one fewer vent hole but explained that ‘“the accused design is still clearly within the territory [surrendered] between the original claim and amended claim.’”

On appeal, the Federal Circuit noted that the doctrine of prosecution history estoppel is well established for utility patents, but that the concept of prosecution history estoppel as applied to design patents was “one of first impression” for the court.  For utility patents, the doctrine of prosecution history estoppel prevents a patentee from recapturing in an infringement action subject matter which was surrendered during prosecution.

The Federal Circuit noted that “for design patents, the concepts of literal infringement and equivalents infringement are intertwined,” and stated that accordingly “the test for design patent infringement is not identity, but rather sufficient similarity.” Furthermore, the Federal Circuit acknowledged that Pacific Coast had “characterized the substantial similarity between the accused designs and the ‘070 patent as the basis for an infringement claim ‘under the doctrine of equivalents.’” The Federal Circuit concluded that “the principles of prosecution history estoppel apply to design patents as well as utility patents.”

The Federal Circuit then addressed the question of whether the prosecution history estoppel barred infringement in this case.

The Court determined that there was a surrender of claim scope during prosecution, and that “by removing broad claim language referring to alternate configurations and cancelling the individual figures showing the unelected embodiments, the applicant narrowed the scope of his original application, and surrendered subject matter.”

In addition, the Federal Circuit noted that the claim scope was surrendered to secure the patent, but not to avoid prior art.  Whereas Pacific Coast argued that only surrenders to avoid prior art were within the doctrine, the Federal Circuit cited Festo stating 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.’”

With respect to the scope of the surrender, the District Court had determined  that the accused design was within the scope of the surrender, i.e., that by abandoning a design with two holes and obtaining patents on designs with four holes and no holes, the range between four and zero was abandoned.  In contrast, the Federal Circuit stated that “this range concept does not work in the context of design patents where ranges are not claimed, but rather individual designs.” The Federal Circuit further noted that “the applicant surrendered the claimed design with two holes on the windshield corner post, but neither submitted nor surrendered any three-hole design.”

Thus, the Federal Circuit held that the prosecution history estoppel principles apply to design patents, but do not bar Pacific Coast’s infringement claim, and remanded for further proceedings.


Design Patent Protection for Graphical User Interfaces (GUIs) Likely Available in China in 2014

From December 19th-20th, 2013, the U.S. and China conducted the 24th U.S.-China Joint Commission on Commerce and Trade (JCCT) in Beijing, China.  One notable outcome from the meetings was that China agreed to increase its efforts “to advance innovation in the fast growing information and communications technologies sector by publishing draft Guidelines for public comment to extend design-patent protection to graphical user interfaces.”

Presently, China does not afford design patent protection for Graphical User Interfaces (GUIs) or computer-generated icons.  However, on October 22, 2013, the State Intellectual Property Office of the People’s Republic of China (SIPO) released a draft amended version of the Examination Guidelines for public opinion.  Thus, it is likely that design patent protection for GUIs and computer-generated icons will finally be available in China in 2014.

Surprisingly, China’s patent system, probably now considered by most as a “major” patent system, has yet to provide design patent protection for GUIs and computer-generated icons.  Indeed, just more than a year ago, Taiwan began providing such design patent protection, while design patent protection for GUIs and computer-generated icons has been available in Japan and the U.S. for more than twenty years.

According to a recent paper by Mark D. Janis and Jason Du Mont, the U.S. Patent and Trademark Office (USPTO) has already issued several thousand design patents for so-called virtual designs, and recent filings for such applications account for more than “nearly any other type of design subject matter.” So with the likely advent of design patent protection for GUIs in China and the already significant representation of such protection (and sought-after protection) in the U.S. and other jurisdictions abroad, the importance of design patent protection for GUIs and computer-generated icons cannot be understated and will no doubt play an increasing role in a sophisticated company’s world-wide patent portfolio.


Proposed Rules Published: Changes to Implement the Hague Agreement concerning International Registration of Industrial Designs

The Patent Law Treaties Implementation Act of 2012 has resulted in new rules being proposed for implementing the Act. 

On October 21, 2013, 78 FR 62367 was published as a final rule to implement the Patent Law Treaty, which generally does not affect design patents, but does provide restoring the right of priority after the 6-month period to claim priority, within 2 months from the expiration of the 6-month period and upon grant of a petition that shows the delay was unintentional.

On November 29, 2013, 78 FR 71869 was published as a proposed rule to implement the Hague Agreement.  Of note, according to the proposed rule:

  1. an international design application is a "national application" or a "nonprovisional application" under 37 CFR 1.9;
  2. an international design application can include two or more designs, but there is a requirement for only one independent and distinct design - 37 CFR 1.1021 and 1.1064;
  3. a CPA cannot be filed in an international design application under 37 CFR 1.53;
  4. an international design application will typically publish at 6 months from filing/registration, but publication can be deferred or immediate publication can be requested; and
  5. the publication of the international design application will trigger access to an unpublished application (i.e., an unpublished/unexamined US design application related to the international design application) - 37 CFR 1.14.

The comment deadline date for providing written comments regarding the proposed rules is January 28, 2014.


Skechers v. Perry Ellis

On October 11, 2013, Skechers U.S.A. Inc (Skechers) filed a Complaint against Shoe Confession LLC, Perry Ellis International, Inc. and PEI Licensing, Inc. (Perry) in the U.S. District Court for the Central District of California (Skechers U.S.A. Inc. et al. v. Shoe Confession LLC et al. 2:13-cv-07573).

The Complaint alleges willful and intentional infringement of Skechers’ D651,788, D652,613, D652,614, and D650,980 design patents, trade dress infringement, and unfair competition, as related to Skechers’ GO RUN® shoe and the Defendants’ Pro Player Phaze 2M shoe.

The ’788, ’613, ’614 and ’980 patents relate to an ornamental nub pattern on a sole bottom and outsole periphery, as shown in the Figures below from the Complaint.

Skechers ‘788 patent – Shoe Bottom






Skechers ‘613 patent –Shoe Bottom





Skechers ‘614 patent – Shoe Bottom





Skechers ‘980 patent – Shoe outsole and peripehry






 In the Complaint, Skechers identified the distinctive ornamental features of the trade dress as 1) a pattern of large nubs forming an X, as shown by red arrows in the figures below, 2) mid-size and smaller sized numbs surrounding the X-pattern, indicated by blue arrows below and 3) a repeating pattern of cleats and nubs on the periphery, indicated by yellow and green arrows below.

Reproduced below are the sole bottom and outsole periphery of the Skechers GO RUN® and of the Pro Player Phaze 2M, as shown in the Complaint.

SKECHERS GO RUN® Sole BottomSKECHERS GO RUN® Outsole Periphery









Pro Player Phaze 2M Shoe Outsole PeripheryPro Player Phaze 2M Shoe Sole Bottom








The Complaint listed four causes of action in view of the alleged design patent infringement. Skechers stated that the Pro Player Phaze 2M so closely resembled the invention claimed by each of the four patents that an ordinary observer would be deceived into purchasing the Pro Player in the mistaken belief that the Pro Player includes the inventions disclosed in these patents.

Skechers argued in the Complaint that it “has suffered, is suffering, and will continue to suffer irreparable injury with no adequate remedy at law,” and requested a permanent injunction against further infringing conduct by the Defendants.  Skechers further claimed that it was “damaged and losing profit’ by the Defendants” alleged willful infringement, and entitled to recover damages and total profit derived from the alleged infringement.

The Complaint further listed fifth and sixth causes of action in view of Federal unfair competition and trade dress infringement.  Skechers claimed that by allegedly using its sole bottom trade dress and outsole periphery trade dress, the Defendants deceived typical consumers in the mistaken belief that the Pro Player Phaze 2M emanated from a single source, with the acquired distinctiveness owned exclusively by Sketchers.

Skechers argued in the Complaint that the Defendants’ conduct allegedly constituted a “false designation of origin and false and misleading representation of fact likely to cause confusion, and to deceive by wrongly suggesting an affiliation connection or association with Skechers.” Skechers claimed that it was “damaged and losing profit” due to the alleged infringement and alleged unfair competition, and as such was entitled to recover damages and profits due to the Defendants’ alleged violations of the Lanham Act.

The Complaint listed a seventh cause of action in view of common law unfair competition. Skechers claimed that the Defendants are “willfully, fraudulently, oppressively, maliciously, and unlawfully attempting to pass off and passing off infringing footwear” as those approved by Skechers.

In the Complaint, Skechers requested a judgment directing destruction of all infringing goods and all instrumentalities used in the production, including tools, machines and equipment, within 10 days of the judgment. Skechers further requested that the judgment award damages, lost profits, reasonable royalties and other monetary amounts.  In particular, Skechers requested damages as a result of infringement, total profit from the sales of the allegedly infringing footwear, and damages as a result of the alleged unfair competition and of the lost business opportunities, with all damages being trebled.  Skechers further requested punitive damages, restitution, attorneys’ fees, pre-judgment interest at the maximum rate, and costs of the suit. A jury trial was requested.


High Point Design LLC et al. v. Buyers Direct, Inc.

The Court of Appeals for the Federal Circuit (CAFC) recently issued a precedential unanimous opinion in High Point Design LLC et al. v. Buyers Direct, Inc. reversing in part, vacating in part, and remanding the district court’s decision in relation to design patent D598,183 (“the ‘183 patent”).

The case primarily addressed the validity of design patents in terms of obviousness and functionality, and also considered the sufficiency of pleadings of trade dress infringement.  In its discussion, the CAFC clarified the proper standards for determining the obviousness and functionality of design patents.   By way of disclosure, Buyers Direct, Inc. (“BDI”) was represented on appeal by Andrew M. Ollis, Frank J. West, and Philippe J.C. Signore of Oblon Spivak.

The ‘183 patent claims an “ornamental design for a slipper,” as shown in the drawing below:

The ‘183 patent has been commercialized in the snoozies!® footcovering, shown here:

After BDI sent a cease and desist letter to High Point Design LLC (“High Point”), High Point filed suit for declaratory judgment that the ‘183 patent was invalid and/or unenforceable and not infringed.  In its answer, BDI filed counterclaims of infringement of the ‘183 patent and trade dress infringement.

Four days after the deadline to amend pleadings had passed, High Point filed a combined motion seeking summary judgment of invalidity and non-infringement of the ‘183 patent and judgment on the pleadings in regard to the trade dress infringement counterclaims.  In BDI’s opposition, it included an expert declaration from a designer opining that the ‘183 patent was valid, and included proposed amended pleadings supplementing the trade dress infringement counterclaim.

The district court granted the motion for summary judgment, finding that the ‘183 patent was invalid as (1) obvious in light of the prior art and (2) primarily functional rather than primarily ornamental.  The district court also dismissed the trade dress infringement counterclaims with prejudice.


The CAFC reversed the grant of summary judgment of obviousness and remanded the case to the district court.  The CAFC explained the test for determining obviousness of design patents, clarifying that potential obviousness must be evaluated from the point of view of an ordinary designer, not an ordinary observer as the district court had done.  As such, the expert declaration submitted by BDI should have been considered.

Additional errors made by the district court were also noted by the CAFC for correction on remand.  First, the CAFC held that the district court failed to discern the correct visual impression of the patented design and, instead, simply described the general concept by using “too high a level of abstraction” and “failing to focus on the distinctive visual appearances of the reference and the claimed design.” Second, the CAFC held that the judge did not communicate her reasoning behind the selection of a primary reference, and the CAFC suggested that a side-by-side comparison is necessary.  Last, the CAFC stated that the district court did not consider BDI’s evidence of secondary considerations, but this evidence must always be considered when determining obviousness.


The CAFC also reversed the grant of summary judgment of functionality and remanded the case to the district court for reconsideration.  The panel cautioned that the function of the article must not be confused with the functionality of the design, and held that the district court used the wrong standard in evaluating functionality.  The correct standard is to assess whether “the claimed design is 'primarily functional' or 'primarily ornamental,' i.e., whether the claimed design is ‘dictated by’ the utilitarian purpose of the article,” not to determine whether “the design’s primary features can perform functions.”

Trade Dress

Since the deadline for amending pleadings was over, the CAFC noted that the standard in evaluating a request to amend pleadings is “good cause” under Rule 16(b).  Since the district court did not explain whether this standard was used, and, if so, failed to explain why good cause did not exist, the dismissal was vacated and the case remanded.  The CAFC noted factors to be considered, including the moving party’s diligence, whether amendment will prejudice the defendants, and notice.

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