The Federal Circuit has overturned a finding by a lower court that Malibu Boats LLC did not infringe a design patent owned by Pacific Coast Marine Windshields Ltd.

The Federal Circuit found that the lower court had erred in holding that the plaintiff was barred from alleging infringement of its design patent for a boat windshield.

Plaintiff Pacific Coast had sought $80 million in damages for the alleged infringement.  Pacific Coast’s owner originally applied for a design patent for a boat windshield with a varying number of vent holes, from none to five.

The patent examiner required him to limit his application to a single design, and he picked one with four holes, which became the patent in the case. He later obtained a design patent for a no-hole design.

Pacific Coast sued Malibu, alleging that Malibu’s three-hole windshield design infringed the Pacific Coast patent.

A US district judge granted Malibu summary judgment on the basis that Pacific Coast had “surrendered” the three-hole design.
On appeal, Malibu argued that Pacific Coast had abandoned all of its designs from one hole to three holes.

The Federal Circuit disagreed, finding that the fact that Pacific Coast had claimed designs with zero and four holes didn’t mean it had surrendered any claim to designs with an in-between number of holes.

Since the Federal Circuit concluded that the history of the prosecution of the patent didn’t prevent Malibu from claiming a wider range of related designs, it sent the case back to the lower court for further proceedings.

A design patent covers the external design of a functional item – anything from a boat windshield to a liquor bottle to the rounded corners on an iPhone.

Although design patents sometimes cover aspects of a product that may seem “superficial,” they can provide a powerful competitive – and legal – advantage. In one Apple versus Samsung case, about $980 million of the over $1 billion awarded to Apple for Samsung’s alleged patent infringement was due to Apple’s design patents.

How Can I Help?

If you have questions about design patents, or if you anticipate being involved in patent litigation, please contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

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