pacific coast marine v. malibu boats - pet rehearing

8/13/2019 Pacific Coast Marine v. Malibu Boats - Pet Rehearing

1/23

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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5/23

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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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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4

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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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

pacific coast marine v. malibu boats - pet rehearing

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