Federal Circuit Holds That Prosecution History Estoppel Applies To Design Patents

In a January 8, 2014 decision, the U.S. Court of Appeals for the Federal Circuit held that prosecution history estoppel applies to both utility and design patents.  Although the doctrine of prosecution history estoppel is well established for utility patents, in Pacific Coast Marine Windshields Ltd. v. Malibu Boats, LLC (Fed. Cir. 2014), the court first reviewed this doctrine in the context of design patents.  As justification for its holding, the court opined that prosecution history estoppel must also apply to design patents in order to serve the principles of public notice.  Thus, when subject matter is surrendered during prosecution of a design patent, prosecution history estoppel may prevent the patentee from “recapturing in an infringement action the very subject matter surrendered as a condition of receiving the patent.”  Estoppel applies not just to subject matter surrendered in light of the prior art, but to other grounds for patentability, including (as in the Malibu Boats case) restriction requirements.

For additional information, please see our linked Federal Circuit Case Summary.