Pacific Coast Marine v. Malibu Boats - Pet Rehearing
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Transcript of Pacific Coast Marine v. Malibu Boats - Pet Rehearing
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No. 2013-1199
____________________
IN THE UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT
____________________PACIFIC COAST MARINE WINDSHIELDS LIMITED,
Plaintiff-Appellant,
v.
MALIBU BOATS, LLC and TRESSMARK, INC.,
doing business as Liquid Sports Marine,
Defendants-Appellees,
and
MARINE HARDWARE, INC., MH WINDOWS, LLC, and JOHN F. PUGH,
Defendants-Appellees.__________________
Appeal from the United States District Court for the Middle District of Florida in
No. 12-cv-0033, Judge John Antoon II.
____________________
PETITION FOR PANEL REHEARING
AND REHEARING EN BANC
____________________
DARIN W.SNYDEROMELVENY &MYERS LLP
Two Embarcadero Center, 28th Floor
San Francisco, CA 94111
(415)984-8700
BRIAN BERLINER
STEVEN BASILEO
OMELVENY &MYERS LLP
400 South Hope StreetLos Angeles, CA 90071
(213) 430-6000
JONATHAN D.HACKERCounsel of Record
DEANNA M.RICE
OMELVENY &MYERS LLP
1625 Eye Street, N.W.
Washington, D.C. 20006
(202) 383-5300
Counsel for Appellees Malibu Boats, LLC and Tressmark, Inc.
[Additional counsel listed on inside cover]
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MARK P.WALTERS
LOWE GRAHAM JONES PLLC
701 5TH
Avenue, Suite 4800
Seattle, WA 98104
Telephone: (206) 381-3300
Counsel for Appellees Marine Hardware, Inc., MH Windows, LLC,
and John F. Pugh
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FORM 9. Certificate of Interest
UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
____________________________ v. ____________________________
No. _______
CERTIFICATE OF INTEREST
Counsel for the (petitioner) (appellant) (respondent) (appellee) (amicus) (name of party)
_______________________ certifies the following (use None if applicable; use extra sheetsif necessary):
1. The full name of every party or amicus represented by me is:
_____________________________________________________________________________
_____________________________________________________________________________
_____________________________________________________________________________
2. The name of the real party in interest (if the party named in the caption is not the realparty in interest) represented by me is:
_____________________________________________________________________________
_____________________________________________________________________________
_____________________________________________________________________________
3. All parent corporations and any publicly held companies that own 10 percent or moreof the stock of the party or amicus curiae represented by me are:
_____________________________________________________________________________
_____________________________________________________________________________
_____________________________________________________________________________
4. The names of all law firms and the partners or associates that appeared for the partyor amicus now represented by me in the trial court or agency or are expected to appear in thiscourt are:
_____________________________________________________________________________
_____________________________________________________________________________
_____________________ _______________________________ Date Signature of counsel
_______________________________ Printed name of counsel
Please Note: All questions must be answered
cc: ___________________________________
Form 9
Pacific Coast Marine Windshields Limited Malibu Boats, LLC et al.
2013-1199
appellees
Malibu Boats, LLC
Tressmark, Inc., doing business as Liquid Sports Marine
N/A
Malibu Boats, LLC: Malibu Boats, Inc.; Black Canyon Capital LLC; Horizon Holdings,
LLC
O'Melveny & Myers LLP (Darin W. Snyder, Brian Berliner, Jonathan D. Hacker, Steven
Basileo, Loren L. AliKhan, Deanna M. Rice)
/s/ Jonathan D. Hacker
Jonathan D. Hacker
02/07/2014
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TABLE OF CONTENTS
Page
i
RULE 35(b) STATEMENT ...................................................................................... 1INTRODUCTION .................................................................................................... 1STATEMENT ........................................................................................................... 3ARGUMENT ............................................................................................................ 5I. REHEARING IS NECESSARY BECAUSE THE PANELS
DECISION RESTS ON A FUNDAMENTAL
MISUNDERSTANDING OF HOW DESIGN PATENTS ARE
CLAIMED. ..................................................................................................... 5II. THE COURT SHOULD GRANT PANEL OR EN BANC
REHEARING TO RESOLVE A CONFLICT BETWEEN THE
PANELS DECISION AND THE SUPREME COURTS DECISION
INFESTO. ...................................................................................................... 9A. The Panels Decision Conflicts WithFesto. ........................................ 9B. The Panels Departure From Supreme Court Precedent
Unjustifiably Creates A Distinction Between Utility Patents
And Design Patents That Should Not Exist. ...................................... 12CONCLUSION ....................................................................................................... 15
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TABLE OF AUTHORITIES
Page(s)
ii
CASES
Biagro W. Sales Inc. v. Grow More Inc.,
423 F.3d 1296 (Fed. Cir. 2005) ............................................................................13
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd.,
535 U.S. 722 (2002) ..................................................................................... passim
Honeywell Intl Inc. v. Hamilton Sundstrand Corp.,
370 F.3d 1131 (Fed. Cir. 2004) (en banc) ..............................................................9
In re Owens,
710 F.3d 1362 (Fed. Cir. 2013) .............................................................................. 8
Loral Fairchild Corp. v. Sony Corp.,
181 F.3d 1313 (Fed. Cir. 1999) .............................................................................. 1
Lucent Techs., Inc. v. Gateway, Inc.,
525 F.3d 1200 (Fed. Cir. 2008) ....................................................................... 9, 13
Voda v. Cordis Corp.,
536 F.3d 1311 (Fed. Cir. 2008) ........................................................... 9, 10, 12, 13
Wang Laboratories, Inc. v. Mitsubishi Electronics America, Inc.,103 F.3d 1571 (Fed. Cir. 1997) ............................................................................11
STATUTES
35 U.S.C. 289 ................................................................................................... 4, 12
OTHER AUTHORITIES
MPEP 1503.02 ...................................................................................................... 15
MPEP 1504.05 ...................................................................................................... 14
Sarah Burstein, Guest Post on Pacific Coast Marine, PATENTLYO (Jan. 13,
2014), http://www.patentlyo.com/patent/2014/01/guest-post-on-pacific-
coast-marine-by-prof-sarah-burstein.html .............................................................. 3
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TABLE OF AUTHORITIES
(continued)
Page(s)
iii
Jason J. Du Mont and Mark D. Janis, Square Pegs, Round Holes,
PATENTLYO(Jan. 13, 2014),
http://www.patentlyo.com/patent/2014/01/square-pegs-round-holes-guest-post-by-mark-janis-and-jason-du-mont.html ......................................................... 3
Ian Mullet,Federal Circuit Alert: Pacific Coast Marine Windshields Ltd. v.
Malibu Boats, LLC, THE ORDINARY OBSERVER(Jan. 9, 2014),
http://www.theordinaryobserver.com/2014/01/federal-circuit-alert-pacific-
coast.html ................................................................................................................3
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RULE 35(b) STATEMENT
1. Based on my professional judgment, I believe the panels decision is
contrary to the decision of the Supreme Court of the United States in Festo Corp.
v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535 U.S. 722 (2002).
2. Based on my professional judgment, I believe this appeal involves a
precedent-setting question of exceptional importance concerning the application of
prosecution history estoppel to design patents.
/s/ Mark P. Walters /s/ Jonathan D. HackerAttorney of Record for Petitioners- Attorney of Record for Petitioners-
Appellees Marine Hardware, Inc., Appellees Malibu Boats, LLC and
MH Windows, LLC, and John F. Pugh Tressmark, Inc.
INTRODUCTION
This Court has long recognized that when a patentee publicly surrenders
claim scope to obtain a patent, the surrendered subject matter may not
subsequently be recaptured through a claim of infringement. See, e.g., Loral
Fairchild Corp. v. Sony Corp., 181 F.3d 1313, 1322 (Fed. Cir. 1999). This
principle of prosecution history estoppel limits the range of equivalents (or
colorable imitations, in the design context) that a patentee may identify as
infringing the issued patent. The Supreme Court has explained the reach of that
limitation: A patentees decision to narrow his claims through amendment may
be presumed to be a general disclaimer of the territory between the original claim
and the amended claim. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.,
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2
Ltd., 535 U.S. 722, 740 (2002). For more than a decade, that standard has
consistently applied to patents claiming a wide array of inventions and to
narrowing amendments made in a variety of ways.
The panel that heard this appeal, however, expressly rejected that standard in
determining whether to apply estoppel in this case. Rather than look to the
territory between the original claim and the amended claim to identify what had
been surrendered, as the Supreme Courts decision in Festo instructs, the panel
asked whether the accused design was within the scope of one particular
embodimentsubmitted in the original application and later cancelled.
UnderFesto, however, the reach of the patentees presumptive surrender is
not limited to specific variants that were expressly claimed and subsequently
cancelled. If a narrowing amendment is made to obtain the patent, the presumption
of surrender covers everythingthat falls between the original and amended claims.
Had the panel properly applied the Festopresumption, it would have found that
prosecution history estoppel bars the claim of infringement advanced in this case.
Only by setting that rule aside did the panel conclude otherwise.
The panel suggested that its departure from Supreme Court precedent was
necessary where a design patent is involved, but its reasoning rested on a
fundamental misunderstanding of how design patents are claimed. Further, by
rejecting the Supreme Courts direction that the patentees decision to narrow his
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claims through amendment may be presumed to be a general disclaimer of the
territory between the original claim and the amended claim, the panel created an
unnecessary and unjustified distinction between utility and design patents.1
Rehearing is necessary to correct the panels faulty analysis of the scope of
the surrender and to eliminate an impermissible departure from Supreme Court
precedent that creates a groundless distinction between utility and design patents.
STATEMENT
This is an appeal from a district court decision granting summary judgment
of non-infringement for defendants. That decision was based on a finding that
prosecution history estoppel barred plaintiff Pacific Coast Marine Windshields Ltd.
(PCMW) from claiming that a marine windshield manufactured and distributed
by defendants infringes a design patent (the 070 Patent) obtained by PCMWs
owner, Darren Bach. PCMW appealed to this Court, asserting, inter alia, that
1 Unsurprisingly, the panels opinionwhich decides an issue of first
impression in this Court regarding the application of prosecution history estoppel
to design patentshas attracted the attention of patent-law experts and
commentators. See, e.g., Sarah Burstein, Guest Post on Pacific Coast Marine,
PATENTLYO (Jan. 13, 2014), http://www.patentlyo.com/patent/2014/01/guest-post-
on-pacific-coast-marine-by-prof-sarah-burstein.html; Jason J. Du Mont and MarkD. Janis, Square Pegs, Round Holes, PATENTLYO (Jan. 13, 2014),
http://www.patentlyo.com/patent/2014/01/square-pegs-round-holes-guest-post-by-
mark-janis-and-jason-du-mont.html; Ian Mullet, Federal Circuit Alert: Pacific
Coast Marine Windshields Ltd. v. Malibu Boats, LLC, THE ORDINARY OBSERVER
(Jan. 9, 2014), http://www.theordinaryobserver.com/2014/01/federal-circuit-alert-
pacific-coast.html.
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prosecution history estoppel did not apply to claims of design-patent infringement
under 35 U.S.C. 289, and that, even if it did, there was no basis for applying it
here because Bach had not surrendered claim scope for reasons of patentability.
The panel held that prosecution history estoppel applies to design patents.
Slip Op. 11. The panel then found that the first two requirements for applying
prosecution history estoppel were satisfied herethe patentee made a narrowing
amendment during prosecution, and the amendment was made to secure the
patent. Slip. Op. 12-13; see Festo, 535 U.S. at 736 (Estoppel arises when an
amendment is made to secure the patent and the amendment narrows the patents
scope.). From there, the only question that remained was how far the estoppel
reaches. When deciding that question, the panel refused to applyFestos rule that
the amendment presumptively disclaimed the territory between the original claim
and the amended claim. 535 U.S. at 740. The panel instead focused narrowly on
the scope of a cancelled two-hole embodimentone of several cancelled out of
Bachs original applicationand held that [s]ince the patentee here does not
argue that the accused design was within the scope of the surrendered two-hole
embodiment, no presumption of prosecution history estoppel could arise. Slip
Op. 16.
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ARGUMENT
I. REHEARING IS NECESSARY BECAUSE THE PANELS DECISIONRESTS ON A FUNDAMENTAL MISUNDERSTANDING OF HOW
DESIGN PATENTS ARE CLAIMED.
The panel held that prosecution history estoppel does not bar PCMW from
claiming that the accused design infringes the 070 Patent because the accused
design is outside the scope of the surrender made by Bachs amendment. Slip
Op. 15-16. That conclusion rests on a fundamental misunderstanding of what was
claimed by Bachs original patent application and of how design patents are
claimed as a general matter. Bachs original application claimed a design with any
number of holes up to four, which necessarily includes a three-hole design. The
070 Patent claims onlya design with four holes. The accused designwhich has
three holesis therefore within the scope of the surrendered territory.
The panel reasoned that a three-hole design was not within the scope of the
surrender because [c]laiming different designs does not necessarily suggest that
the territory between those designs is also claimed. Slip Op. 16. In the design-
patent context, this is simply untrue. As the panel recognized, a patentee is
permitted coverage for only a single design in a design patent. Slip Op. 13.
Accordingly, when a patentee submits multiple drawings with varied features in an
application for a design patent, the claim is for a single design that covers the full
range of variations represented by the drawings. Here, Bachs original claim for a
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marine windshield design included drawings depicting various embodiments of the
claimed design, including versions with zero, two, and four holes. Bach also
claimed his design in words, as the 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, as shown and described.
JA 361. That description left no doubt that he was claiming one design with or
without holesnot different designs each with a specific number of exactly zero,
two, or four holes. And while the textual description did not specify how many
holes he was claiming, his embodiment drawings made that claim perfectly clear:
anywhere from zero to four holes. It is impossible to consider the textual
description along with the drawings and conclude that a three-hole embodiment
was outside the design Bach claimed.
The panels flawed reasoning rests in part on a misunderstanding of a
statement made by counsel at oral argument. In its opinion, the panel asserts that
defendants conceded that Bachs original application did not claim a design . . .
that has zero to four holes. Slip Op. 16 (citation omitted). Counsel made no such
concession. The cited passage is a response to several questions focusing on how
the claim in Bachs original application would translate into words if it had been a
utility patent claim. Against that backdrop, counsel explained:
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[B]ecause we have a single design, all we have in front of us . . . are
the pictures, and we know that he tried to originally claim a corner
post with no holes, some with two holes of varying shapes, some with
four holes of varying shapes, some with hatches, some with no
hatches, and the examiner correctly found that that has to be limited to
a single design. Now, if you were going to translate that into words, I
dont know if the applicant would have said a design that has zero,
two, or four holes or if the applicant would have said its . . . a design
that has zero to four holes.
Recording of Oral Argument 32:34-33:10, available at http://oralarguments.cafc.
uscourts.gov/default.aspx?fl=2013-1199.mp3. The point is perfectly clear: if this
were a utility patent, where claims are stated in words and multiple claims may be
made in a single application, we do not know exactly how Bach would have
worded his claims. But we do know what designhe submitted, i.e., a single design
with multiple variants, including zero, two, and four venting holes.2 The fact that
Bachs original claim was not patentable because the embodiments he grouped
together actually represented several patentably distinct designs does not change
what the application claimed. To the contrary, the fact that his application, in
essence, claimed too much for a single design is precisely what gives rise to
2 In the same vein, counsel distinguished the panels hypothetical utility
patent case in which an original claim specified two or four holes and theapplicant revised the claim to only four holes: I think that would be a very
difficult case because the claimant is not claiming three in that instance. Here,
however, you have a single claim where the applicant had a design that had no
holes, two holes of varying shapes, and four holes. Recording of Oral Argument
21:16-22:17. This explanation again reflects defendants position that Bachs
original application claimed a single design with as many as four holes.
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prosecution history estoppel: the doctrine only applies where the patentee has
made a narrowing amendment to obtain the patent. See Festo, 535 U.S. at 736.
How Bachs claim might have been phrased had he sought a utilitypatent
does not determine what was claimed in his application for a designpatent. With
design patents, the pictures provide the primary description of the claim, which is
limited to a single design. See In re Owens, 710 F.3d 1362, 1366 (Fed. Cir. 2013);
see alsoSlip Op. 12. The drawings in Bachs original application do not reflect a
claim for three different windshield designs, each with a different number of holes.
They instead describe pictorially a single design with up to four venting holes.
Bach amended that original application to includeand the 070 Patent
issued withonly drawings depicting a marine windshield with four venting holes.
The panel is therefore mistaken in asserting that [t]he record only reflects the
surrender of the two-hole embodiment. Slip Op. 16. Although Bach did not
submit a drawing of a three-hole embodiment with his original application, his
original application undoubtedly claimeda three-hole design, because it included
figures ranging from zero to four holes. The record therefore reflects the surrender
of a design including one hole and a design including three holes.
The panel should grant rehearing and affirm the district courts judgment of
non-infringement, because the accused three-hole design falls within the scope of
the design territory surrendered by Bachs narrowing amendment.
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II. THE COURT SHOULD GRANT PANEL OR EN BANC REHEARINGTO RESOLVE A CONFLICT BETWEEN THE PANELS DECISION
AND THE SUPREME COURTS DECISION IN FESTO.
Rehearing is also necessary because the panels decision unjustifiably
departs from the Supreme Courts decision in Festo Corp. v. Shoketsu Kinzoku
Kogyo Kabushiki Co., Ltd., 535 U.S. 722 (2002).
A. The Panels Decision Conflicts With Festo.1. In Festo, the Supreme Court held that an [e]stoppel arises when an
amendment is made to secure the patent and the amendment narrows the patents
scope. 535 U.S. at 736. Once those two conditions are satisfied,Festo instructs
that [a] patentees decision to narrow his claims through amendment may be
presumed to be a general disclaimer of the territory between the original claim and
the amended claim. Id. at 740. This Courts post-Festo precedents have
consistently applied that presumption when conducting the prosecution history
estoppel analysis. See, e.g., Voda v. Cordis Corp., 536 F.3d 1311, 1325-26 (Fed.
Cir. 2008); Lucent Techs., Inc. v. Gateway, Inc., 525 F.3d 1200, 1218 (Fed. Cir.
2008);Honeywell Intl Inc. v. Hamilton Sundstrand Corp., 370 F.3d 1131, 1143-44
(Fed. Cir. 2004) (en banc). The panel in this case, however, refused to do so.
After finding that Bach made a narrowing amendment to secure the 070
Patent, the panel held that [s]ince the patentee here does not argue that the
accused design was within the scope of the surrendered two-hole embodiment, no
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presumption of prosecution history estoppel could arise. Slip Op. 16. That is,
rather than look at whether the accused design fell within the territory between the
original and amended claims, the panel asked whether the accused design is a
colorable imitation of the cancelled two-hole embodiment. Id. That analysis is
contrary toFesto.
Prosecution history estoppel operates as a limit on the equivalents covered
by a patented invention or design. See Voda, 536 F.3d at 1324. The panel wrongly
considered not the range of equivalents surrounding the patenteddesign in light of
Bachs amendment, but the range surrounding the cancelledembodiment. Slip Op.
16. But Festo holds that where a patentee limits his initial claim to obtain the
patent, he is not permitted to invoke the doctrine of equivalents to expand the
issued patents reach beyond its plain terms, unless he can rebut the presumption as
to a particular equivalent. See535 U.S. at 741. The panel thus turnedFestoon its
head by holding that a patentee presumptively retains all equivalents except those
that were expressly abandoned, rather than presumptively surrenders all
equivalents in the territory between the original and amended claim.
2. The panel cited no authority that supports its improper focus on the scope
of the cancelled two-hole embodiment. The panel built its analysis on the notion
that [p]rosecution history estoppel only bars an infringement claim if the accused
design fell within the scope of the surrendered subject matter, citing this Courts
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pre-Festo decision in Wang Laboratories, Inc. v. Mitsubishi Electronics America,
Inc., 103 F.3d 1571 (Fed. Cir. 1997). Slip Op. 15. In Wang Laboratories, this
Court found that the patentee was estopped from asserting that a device with nine
capacitors was an equivalent of the patented device with eight capacitors, because
the patentee had amended the claim to specify an exact number of capacitors
eight. 103 F.3d at 1578. That logic does not require that the patentee have claimed
an equivalent with particularity in his original application for that equivalent to fall
within the scope of surrendered subject matter. Indeed, in Wang Laboratories,
the patentee had initially asserted only that the claimed invention included
capacitors, without any indication how many. See id. Festo, meanwhile,
confirms that the scope of the surrendered subject matter is not limited to
equivalents expressly claimed and then cancelled; instead, the patentee is presumed
to have surrendered the full territory between the original and amended claims.3
3. The panels departure fromFesto is significant. Had the panel properly
appliedFestos rule that Bach presumptively disclaimed the full territory between
his original and amended claims, it would have foundas the district court did
that the accused design falls within the surrendered territory and that PCMW is
estopped from asserting that the accused design infringes the 070 Patent.
3To the extent there is any substantive difference between the standards
articulated inFesto and Wang Laboratories,Festo, of course,must control.
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B. The Panels Departure From Supreme Court PrecedentUnjustifiably Creates A Distinction Between Utility Patents And
Design Patents That Should Not Exist.
By rejecting Festos rule that a narrowing amendment is presumed to
disclaim all equivalents in the territory between the original and amended claim,
the panel created an unjustified distinction between utility patentsto which that
rule uniformly appliesand design patentsto which the panel held it does not.
1. The rationale underlying theFestorule applies no less to design patents
than to utility patents. As the panel agreed, the infringement analysis for both
utility and design patents involves a notion of equivalents. Slip Op. 9. In the
utility patent context, it is settled that prosecution history estoppel operates as a
limit on the doctrine of equivalents. Voda, 536 F.3d at 1324. In the design patent
context, prosecution history estoppel similarly restricts the range of colorable
imitations under 289. Accordingly, just as theFestopresumption truncates the
range of equivalents surrounding a utility patent, the presumption should likewise
limit the designs that may be asserted as colorable imitations of a patented
design. Despite this essential similarity between utility and design patents, the
panel refused to apply theFestopresumption in the design context.
2. None of the reasons the panel offered to explain why the Festo
presumption cannot apply to design patents withstands scrutiny. To start, the panel
proposed that Festos presumption could work only where the patent at issue
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claimed a range, and that this range concept does not work in the context of
design patents, where ranges are not claimed, but rather individual designs. Slip
Op. 15-16. The panel is wrong on both counts.
First, a patent need not claim a numerical range forFestos presumption to
apply. Indeed, this Court frequently applies the presumption to amendments made
to utility patents claiming no express range. For example, in Voda, the Court
relied on Festo to find that, by adding language specifying that the claimed
methods must be performed by a catheter having a first substantially straight leg,
the patentee is presumed to have disclaimed any methods that do not involve a
catheter that meets that description. 536 F.3d at 1325-26. Similarly, in Lucent
Technologies, Inc. v. Gateway, Inc., 525 F.3d 1200 (Fed. Cir. 2008), the Court
invoked theFestopresumption in holding that where [t]he original claims did not
contain a pulse-forming iteration and the patentee amended the claims to add the
5-step pulse iteration, id. at 1216, the applicant surrendered methods wherein
pitch calculation (steps 14) and/or pitch removal (step 5) are performed outside
the pulse-forming iteration, id. at 1218. Unlike the example cited by the panel,
Slip Op. 16 (citingBiagro W. Sales Inc. v. Grow More Inc., 423 F.3d 1296, 1306-
07 (Fed. Cir. 2005)), neither case involved a limitation claiming a numerical range.
Second, while a design patent, like a utility patent, does not necessarily
claim a range, a design patent canclaim a range. A design patent may issue with
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multiple drawings that exhibit minor variations in detail; the patent is limited to
one design, not one drawing. The Manual of Patent Examining Procedure
explicitly recognizes that a single design may be composed of multiple
embodiments: It is permissible to illustrate more than one embodiment of a
design invention in a single application. However, such embodiments may be
presented only if they involve a single inventive concept. MPEP 1504.05.
Because a single inventive concept may be shown through multiple embodiments,
that concept may encompass a range of design variations. Thus, the panel erred in
concluding that the range concept cannot apply to design patents. Slip Op. 16.
3. The panel also attempted to justify its departure fromFestoon the ground
that [c]laiming different designs does not necessarily suggest that the territory
between those designs is also claimed. Slip Op. 16. As explained above, that is
incorrect because a design patent can claim only one design. As a result, an
application with multiple embodiments necessarily claims a design that
encompasses the full range of variations depicted in the drawings. See supra at 5.
Further, a patentee need not have explicitly described a particular variation in the
initial application for that equivalent to fall within the territory surrendered by the
amendment. See supra at 10-11. If a patentee abandons one or more variations
during prosecutionwhether by removing an explicit reference to the variation
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from an earlier application or by making more specific a broad, general claimthe
patentee gives up allthe territory between the original and amended claims.
4. Bach was not powerless to secure broader coverage for his design. He
could have challenged the examiners restriction requirement. See Festo, 535 U.S.
at 734. He could have submitted additional divisional applications. See JA 966-
70. He also could have responded to the restriction requirement by amending each
of his drawings to show the venting holes using broken lines, which would have
indicated that the claimed design covered the overall shape of the windshield with
any number or shape of holes. See MPEP 1503.02. Instead, Bach elected to
proceed with drawings showing a single, specific arrangement of holes, and in
doing so, he narrowly limited the 070 Patent to that particular configuration.
There is no reason theFestopresumption should not apply to design patents,
and the panel erred by departing from Supreme Court precedent. This Court
should grant rehearing to resolve the conflict between the panels decision and
Festoand affirm the district courts holding that PCMW is estopped from asserting
that the accused design infringes the 070 Patent.
CONCLUSION
The petition for rehearing or rehearing en banc should be granted.
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8/13/2019 Pacific Coast Marine v. Malibu Boats - Pet Rehearing
23/23
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Dated: February 7, 2014 Respectfully submitted,
/s/ Jonathan D. Hacker
JONATHAN D.HACKER
DEANNA M.RICEOMelveny & Myers LLP
1625 Eye St. N.W.
Washington, D.C. 20006
Telephone: (202) 383-5300
DARIN W.SNYDER
OMelveny & Myers LLP
Two Embarcadero Center, 28th Floor
San Francisco, CA 94111
Telephone: (415) 984-8700
BRIAN BERLINER
STEVEN BASILEO
OMelveny & Myers LLP
400 South Hope St., 18th Floor
Los Angeles, CA 90071
Telephone: (213) 430-6000
Counsel for Appellees Malibu Boats, LLCand Tressmark, Inc.
MARK P.WALTERS
Lowe Graham Jones PLLC
701 5TH
Avenue, Suite 4800
Seattle, WA 98104
Telephone: (206) 381-3300
Counsel for Appellees Marine Hardware,
Inc., MH Windows, LLC, and John F. Pugh