Prosecution History Estoppel for Design Patent Applications: Don’t Cut Yourself Short

District Court Decision:  Jenny Yoo Collection, Inc. v. Watters Designs, Inc. et al, Civil Action No. 3:17-cv-3197-M (N.D.Tex. June 6, 2018).

Background:  In 2014, the Federal Circuit recognized that prosecution history estoppel applies to design patents, specifically in the context of amendments made in response to a restriction requirement. Pacific Coast Marine Windshields Ltd. v. Malibu Boats, 739 F.3d 694 (Fed. Cir. 2014) (holding that the subject matter of the patent application cancelled in response to a restriction requirements was surrendered into the public domain).  The holding of Pacific Coast was later applied where a district court in California dismissed an infringement action where the accused design was within the scope of surrendered subject matter.  Advantek Marketing, Inc. v. Shanghai Walk-Long Tools Co., Case No. 16-3061 (C.D. Cal. Nov. 3, 2016) (currently on appeal to the Federal Circuit). Notably in Advantek, no continuation patent has issued covering any of the surrendered subject matter.

In the present case, Jenny Yoo, a wedding apparel designer and manufacturer, sued Watters Designs alleging infringement of its ’120 design patent (relating to a short-length dress) and its ’723 design patent (relating to a floor-length dress). Taking judicial notice of the patents’ prosecution history, the district court noted that the examiner issued a restriction requirement between the first embodiment (relating to a short-length dress) and the second embodiment (relating to a floor length dress). However, unlike in Advantek, Jenny Yoo owned an issued patent (the ’723 patent) covering the subject matter surrendered during prosecution.

Issue:  What is the effect of prosecution history estoppel following the election of an embodiment, and the filing of a continuation in a design patent case?

Outcome:  The district court found that because the accused infringer was only manufacturing floor-length dresses, the patent owner could not sue under the ’120 patent for short-length dresses. However, the patent owner could maintain a suit based on the ’723 patent directed to the floor-length dresses.

Prosecution Takeaway:  Here, Jenny Yoo was able to maintain its law suit because it had an issued continuation patent covering the subject matter that was surrendered following the election. If Jenny Yoo did not have the second patent, then it would not have had a viable infringement claim against Watters, as was the case in Advantek. In contrast, if Jenny Yoo had only claimed the short-length dress from the beginning and no surrender had occurred, then Jenny Yoo could have argued that Watters’ design infringed the short-length dress design patent.  Applicants considering filing design applications involving more than one design should follow the development of this case law closely.