Federal Circuit Summary

Before Newman, Clevenger and Chen. Appeal from the United States District Court for the Central District of California.

Summary: Prosecution history estoppel does not bar enforcement of a patent when the accused product falls outside the scope of the purported surrender.

Advantek Marketing, Inc. (“Advantek”) filed suit against its former manufacturer, Shanghai Walk-Long Tools, Co. (“Walk-Long”) for design patent infringement, among other claims. Advantek owns a design patent for a portable pet kennel sold under the name “Pet Gazebo.” Advantek alleged that Walk-Long copied its Pet Gazebo product and infringed its design patent by marketing Walk-Long’s “Pet Companion” product. Walk-Long moved for judgment on the pleadings under Rule 12(c) on the grounds that prosecution history estoppel barred Advantek from enforcing its patent against Walk-Long’s Pet Companion. The district court granted Walk-Long’s motion for judgment on the pleadings.

The Federal Circuit reversed and remanded the case for further proceedings. The Federal Circuit reviewed the prosecution history of Advantek’s design patent. Advantek’s design patent application originally included 5 figures. During examination of Advantek’s design patent, the examining attorney issued a restriction requirement claiming that the application disclosed two inventions. The examining attorney alleged that the first four figures were drawn to a kennel without a cover and all five figures were drawn to a kennel with a cover. Thus, the examining attorney required an election of either the embodiment in the first four figures or the embodiment in all five figures. Advantek stated that it disagreed with the examining attorney’s restriction requirement, but elected the embodiment of a kennel without a cover for further prosecution.

Walk-Long’s Pet Companion product included a cover, and Walk-Long argued that Advantek “intentionally surrendered patent claim scope that would have included gazebos with a cover in response to a restriction requirement, thereby limiting the scope of the ‘006 Patent to gazebos without a cover.” Advantek argued that Walk-Long’s accused product falls outside any claim scope Advantek purportedly surrendered. Advantek’s election during prosecution broadened its ability to prevent infringement of the skeletal design of the kennel whether used alone or with a cover. The Federal Circuit agreed that the accused product falls outside the scope of the alleged surrender. The Federal Circuit held that when viewed in light most favorable to Advantek, the complaint can be read to accuse the skeletal structure of Walk-Long’s Pet Companion of infringement, and Advantek is not estopped from asserting its patent against Walk-Long.