Search Team

Search by Last Name
A
B
C
D
E
F
G
H
I
J
K
L
M
N
O
P
Q
R
S
T
U
V
W
X
Y
Z

Advantek Marketing, Inc. v. Shanghai Walk-Long Tools Co.

Presence of Unclaimed Feature Insufficient to Avoid Design Patent Claims

Advantek Marketing, Inc. v. Shanghai Walk-Long Tools Co., __ F.3d __, 2018 WL ___ (Fed. Cir. Aug. 1, 2018) (NEWMAN, Clevenger, Chen) (C.D. Cal.: Real) (2 of 5 stars)

Fed Cir reverses judgment on the pleadings that Advantek was estopped from asserting its design patent against Walk-Long. Per Samsung, 137 S. Ct. 429 (2016), a design patent may be for a component of a multicomponent product. To the extent Advantek, in responding to a restriction requirement during prosecution, surrendered any claim scope, Walk-Long’s accused product was, according to the complaint, within the remaining scope. The opinion rejects Walk-Long’s argument that because its accused product had a “cover,” it could not fall within Advantek’s design patent because the non-restricted embodiments had no cover. Per Rubinfield, 270 F.2d 391 (CCPA 1959), design patents may be infringed by “articles which are specifically different from that shown in the patent,” so long as the claimed elements are present. At the pleadings stage, Advantek’s complaint sufficiently alleged that Walk-Long’s product possessed the patented features, notwithstanding that it also had a cover.

KEYWORDS: DESIGN PATENTS; RESTRICTION; PROSECUTION HISTORY ESTOPPEL