The Federal Circuit has ruled that the principles of prosecution history disclaimer apply to design patents as well as to utility patents.
As the court explained,
Top Brand and Cozy Comfort compete in the market of oversized hooded sweatshirts. Cozy Comfort owns U.S. Design Patent No. D859,788 (the “D788 patent”) and two trademarks for the “THE COMFY” for goods and services relating to blanket throws. Top Brand sought declaratory relief of noninfringement of the design patent. Cozy Comfort counterclaimed for infringement of the design patent and trademarks. After trial, the jury found infringement of both the patent and the trademarks. The district court denied judgment as a matter of law (“JMOL”) to Top Brand and entered judgment on the jury verdict.
The D788 patent claims “[t]he ornamental design for an enlarged over-garment with an elevated marsupial pocket….”
During prosecution of the application leading to the D788 patent, the examiner initially rejected the design as anticipated by U.S. Patent No. D728,900 (“White”).
To obtain allowance, Cozy Comfort agreed that its design differed from the White design in particular respects, thereby disclaiming the significance of specific features in the Cozy Comfort design.
As the court explained,
To obtain the D788 patent, Cozy Comfort argued the overall ornamental appearances of the claimed design and the prior art White design were distinguishable under the ordinary observer test. Cozy Comfort explained how its design differed from White by focusing on specific distinguishing features such as the shape and placement of the marsupial pocket and shape of the bottom hem line. In making these arguments, Cozy Comfort surrendered the identified features as supporting a finding of overall similarity.
The court noted that
During prosecution, Cozy Comfort argued that “the pocket located on the front of the torso” in the claimed design was “substantially different in the claimed design and the White design” and that “[f]or this alone, the claimed design [was] allowable.” … It explained that “[t]he pocket in the inventive design [was] approximately one-third of the width of the torso,” while White’s pocket “occupie[d] roughly 90% of the torso’s width,”
During the legal proceedings, Top Brand sought a detailed verbal limiting construction of the D788 patent claim based on Cozy Comfort’s statements during prosecution. The district court declined to adopt such a construction. At trial, the jury was simply instructed that it “must determine whether or not there is infringement by comparing the accused products to the design defined in the [D788] patent.”
The jury found that seven of the Top Brand Companies’ product lines infringed the D788 patent and awarded $15.4 million in disgorged profits for the D788 patent infringement.
On appeal, Cozy Comfort argued that the doctrine of prosecution history disclaimer does not apply to design patents because “[t]he nature of design patents renders any purported disavowal ambiguous.”
As the court noted, “The doctrine of prosecution history disclaimer is well established for utility patents and addresses surrender of claim scope during prosecution of a patent.”
Also, said the court,
it would be contrary to the very purpose of design patent prosecution to allow the patentee to make arguments in litigation contrary to the representations which led to the grant of the patent in the first place, and thereby recapture surrendered claim scope.
Design patents have a narrow scope. To prove infringement, a patentee must show that to an ordinary observer the accused design and the claimed design are “substantially the same.”
Here, said the court.
no reasonable factfinder could, in light of the proper claim construction, “find that [Cozy Comfort] met its burden of showing, by a preponderance of the evidence, that an ordinary observer, taking into account the prior art, would believe the accused design to be the same as the patented design.”
The court concluded that
Cozy Comfort surrendered claim scope to obtain the D788 patent. To show infringement, Cozy Comfort cannot rely on features similar to those in White that were disclaimed during prosecution.
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