United States Court of Appeals
for the Federal Circuit
______________________
ADVANTEK MARKETING, INC.,
Plaintiff-Appellant
v.
SHANGHAI WALK-LONG TOOLS CO., LTD.,
NEOCRAFT TOOLS CO., LTD.,
Defendants-Appellees
ORION FACTORY DIRECT, DOES 1-10,
INCLUSIVE,
Defendants
______________________
2017-1314
______________________
Appeal from the United States District Court for the
Central District of California in No. 2:16-cv-03061-R-
FFM, Judge Manuel L. Real.
______________________
Decided: August 1, 2018
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KEITH JOSEPH WESLEY, Browne George Ross LLP, Los
Angeles, CA, argued for plaintiff-appellant. Also repre-
sented by BRIAN FITZGERALD, JAYE GERRARD HEYBL, Koppel
Patrick Heybl & Philpott, Westlake Village, CA; K.
ANDREW KENT, Rincon Venture Law Group, Westlake
Village, CA.
2 ADVANTEK MKTG., INC. v. SHANGHAI WALK-LONG TOOLS CO.
PERRY GOLDBERG, Progress LLP, Los Angeles, CA,
argued for defendants-appellees.
______________________
Before NEWMAN, CLEVENGER, and CHEN, Circuit Judges.
NEWMAN, Circuit Judge.
Advantek Marketing, Inc. is the owner of design pa-
tent No. D715,006 (“the D’006 patent”) for a portable
animal kennel that Advantek sells with the mark “Pet
Gazebo.” Advantek states that the Pet Gazebo is its
“flagship product,” that it has received awards and been
successful commercially, for “[i]t provided a great solution
for pet owners who wanted to take their pets with them,
whether to a friend’s house, on vacation, or simply out to
the backyard.” Appellant’s Br. at 2.
Advantek sued its former manufacturer, Shanghai
Walk-Long Tools Co., together with Advantek’s former
vice president and others (collectively, “Walk-Long”), for
patent infringement, breach of contract, and aiding and
abetting breach of fiduciary duty. The complaint alleged
that Walk-Long copied the Pet Gazebo and infringed the
D’006 patent with their device called the “Pet Compan-
ion.” The district court granted Walk-Long’s motion for
judgment on the pleadings under Federal Rule of Civil
Procedure 12(c), holding that prosecution history estoppel
bars Advantek from enforcing the D’006 patent against
the Pet Companion. Final judgment was entered after
the parties stipulated to dismissal of the non-patent
counts.1
1 Advantek Mktg., Inc. v. Shanghai Walk-Long
Tools Co., No. CV 16-3061-R, 2016 WL 9178079 (C.D. Cal.
Nov. 3, 2016) (“Dist. Ct. Op.”).
ADVANTEK MKTG., INC. v. SHANGHAI WALK-LONG TOOLS CO. 3
We conclude that prosecution history estoppel does
not preclude enforcement of the D’006 patent against the
accused kennel. The judgment is reversed, and the case is
remanded for further proceedings.
BACKGROUND
The D’006 design application was filed with five pho-
tographs as figures. The examiner objected to the photo-
graphs as unclear, J.A. 186, and also issued a restriction
requirement as between the first four figures (designated
as Group I) and all five figures (designated as Group II).
Following are Figures 1–4 as redrawn for Group I, and
Figure 5 as the photograph in non-elected Group II:
Figure 1 from D’006 Figure 2 from D’006
4 ADVANTEK MKTG., INC. v. SHANGHAI WALK-LONG TOOLS CO.
Figure 3 from D’006 Figure 4 from D’006
Figure 5 from Application
The application described these Figures as follows:
Fig. 1 is a top perspective view showing our new
kennel design;
Fig. 2 is a side view thereof;
Fig. 3 is bottom view thereof;
Fig. 4 is a top view thereof; and
Fig. 5 is top perspective view thereof with a cover
according to another embodiment.
ADVANTEK MKTG., INC. v. SHANGHAI WALK-LONG TOOLS CO. 5
Note that the embodiment of Fig. 5 is identical to
the design shown in Figs. 1–4 except a cover is in-
cluded to cover the kennel. As such Figs. 1–4 may
be used as part of the design of Fig. 5 by including
the cover of Fig. 5 into the views in Figs. 1–4.
J.A. 204.
On September 12, 2012, the patent examiner issued a
requirement for restriction, as follows:
This application discloses the following embodi-
ments:
Embodiment 1—Figs. 1–4 drawn to a kennel
without a cover.
Embodiment 2—Figs. 1–5 drawn to a kennel with
a cover.
Restriction to one of the following inventions is
required under 35 U.S.C. 121:
Group I—Embodiment 1.
Group II—Embodiment 2.
The designs as grouped are distinct from each
other since under the law a design patent covers
only the invention disclosed as an entirety, and
does not extend to patentably distinct segregable
parts; the only way to protect such segregable
parts is to apply for separate patents. See Ex
parte Sanford, 1914 CD 69; 204 OG 1346 (Comm’r
Pat. 1914); and Blumcraft of Pittsburgh v. Ladd,
238 F. Supp. 648, 144 USPQ 562 (D.D.C. 1965). It
is further noted that patentably distinct combina-
tion/subcombination subject matter must be sup-
ported by separate claims, whereas only a single
claim is permissible in a design patent applica-
tion. See In re Rubinfield, 270 F.2d 391, 123
USPQ 210 (CCPA 1959).
6 ADVANTEK MKTG., INC. v. SHANGHAI WALK-LONG TOOLS CO.
Because the designs are distinct for the reason(s)
given above, and have acquired separate status in
the art, restriction for examination purposes as
indicated is proper (35 U.S.C. 121).
A reply to this requirement must include an elec-
tion of a single group for prosecution on the mer-
its, even if this requirement is traversed. 37 CFR
1.143. Any reply that does not include an election
of a single group will be held nonresponsive.
J.A. 181. Advantek elected Group I, stating:
Although applicants respectfully disagree with the
Restriction Requirement, Group I, including cor-
responding Embodiment 1 and Figs. 1–4 drawn to
a gazebo without a cover, is elected for further
prosecution in this application. Accordingly, Fig.
5 has been withdrawn.
J.A. 155. The D’006 patent was duly granted with Fig-
ures 1–4.
Advantek filed suit against Walk-Long for design pa-
tent infringement in the U.S. District Court for the Cen-
tral District of California on May 4, 2016. In response to
Advantek’s complaint, Walk-Long moved for judgment
under Rule 12(c), arguing that, since the Pet Companion
includes a cover, prosecution history estoppel bars in-
fringement. The complaint included the following picture:
ADVANTEK MKTG., INC. v. SHANGHAI WALK-LONG TOOLS CO. 7
J.A. 24. Walk-Long stated in its motion that Advantek
had “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.” J.A. 45.
The district court granted the motion and dismissed
the complaint, stating that Advantek had “surrender[ed]
the proposed kennel with a cover . . . to secure a patent”
by “choosing one of two drawings in response to a re-
striction requirement.” Dist. Ct. Op. at 2. We review the
dismissal without deference, see, e.g., Peterson v. Califor-
nia, 604 F.3d 1166, 1169 (9th Cir. 2010), and “accept all
material allegations in the complaint as true and construe
them in the light most favorable to [the non-moving
party].’’ Deveraturda v. Globe Aviation Sec. Servs., 454
F.3d 1043, 1046 (9th Cir. 2006) (quoting Turner v. Cook,
362 F.3d 1219, 1225 (9th Cir. 2004) (alterations in origi-
nal)); see Info-Hold, Inc. v. Muzak LLC, 783 F.3d 1365,
1371 (Fed. Cir. 2015) (applying law of the regional circuit
“[f]or issues not unique to patent law,” such as procedural
issues).
8 ADVANTEK MKTG., INC. v. SHANGHAI WALK-LONG TOOLS CO.
DISCUSSION
Design patents are for an “original and ornamental
design for an article of manufacture.” 35 U.S.C. § 171.
“The rules relating to applications for patents for other
inventions or discoveries are also applicable to applica-
tions for patents for designs except as otherwise provid-
ed.” 37 C.F.R. § 1.151. An exception is that only one
claim is permitted in a design patent. 37 C.F.R. § 1.153–
1.154. This rule was the basis for the examiner’s re-
quirement for restriction.
In concluding that prosecution history estoppel barred
Advantek’s infringement claims, the district court relied
on our decision in Pacific Coast Marine Windshields Ltd.
v. Malibu Boats, LLC, 739 F.3d 694 (Fed. Cir. 2014). In
Pacific Coast, we held that prosecution history estoppel in
a design patent case depends on: “(1) whether there was a
surrender; (2) whether it was for reasons of patentability;
and (3) whether the accused design is within the scope of
the surrender.” Id. at 702.
On appeal, Advantek focuses on the third prong of the
Pacific Coast test and argues that Walk-Long’s accused
design falls outside any claim scope Advantek purportedly
surrendered during prosecution. Appellant’s Br. at 14.
Advantek argues that its elected design is the “skeletal
structure design,” and that this design is present in the
accused kennel, with or without a cover. Advantek states
that the accused kennel as shipped, assembled, and used,
does not have a cover unless or until a cover is placed on
the kennel. Advantek further states that the require-
ments of prosecution history estoppel are not met because
Advantek’s election during prosecution broadened its
ability to prevent infringement of its skeletal design,
whether the skeleton was used alone or in combination
with other parts. Appellant’s Br. at 18.
ADVANTEK MKTG., INC. v. SHANGHAI WALK-LONG TOOLS CO. 9
In Samsung Electronics Co. v. Apple Inc., 137 S. Ct.
429 (2016), the Court reaffirmed that a design patent may
be for a component of a product, stating:
[T]he term “article of manufacture” is broad
enough to encompass both a product sold to a con-
sumer as well as a component of that product. A
component of a product, no less than the product
itself, is a thing made by hand or machine. That a
component may be integrated into a larger prod-
uct, in other words, does not put it outside the
category of articles of manufacture.
Id. at 435. The Samsung Court cited the classical state-
ment of design patent law in Gorham Manufacturing Co.
v. White, 81 U.S. 511 (1872), where the Court considered
“a new design for the handles of tablespoons and forks,”
and held that the patent was infringed based on the
design of the components (the handles) alone. Gorham,
81 U.S. at 528. The Gorham Court stated that “in the eye
of an ordinary observer, giving such attention as a pur-
chaser usually gives, two designs are substantially the
same, if the resemblance is such as to deceive such an
observer, inducing him to purchase one supposing it to be
the other, the first one patented is infringed by the other.”
Id.
In Samsung, the Court reiterated that “[t]he Patent
Office and the courts have understood § 171 to permit a
design patent for a design extending to only a component
of a multicomponent product.” Samsung, 137 S. Ct. at
435 (citing Ex parte Adams, 84 Off. Gaz. Pat. Office 311
(1898)); see In re Rubinfield, 270 F.2d 391, 393, 395
(CCPA 1959) (discussing the practice of limiting a design
patent to a single embodiment, and stating that “a design
patent may be infringed by articles which are specifically
different from that shown in the patent.”). Our predeces-
sor court has similarly stated:
10 ADVANTEK MKTG., INC. v. SHANGHAI WALK-LONG TOOLS CO.
Section 171 authorizes patents on ornamental de-
signs for articles of manufacture. While the de-
sign must be embodied in some articles, the
statute is not limited to designs for complete arti-
cles, or ‘discrete’ articles, and certainly not to arti-
cles separately sold . . . .
Appl. of Zahn, 617 F.2d 261, 268 (CCPA 1980).
Advantek stresses that the accused kennel’s structure
is the same as shown in the D’006 patent, whether or not
a cover is present. Advantek states that it elected the
broader scope of the kennel structure design, that is,
unlimited by the presence of a cover, and that prosecution
history estoppel does not arise, for “[e]stoppel arises when
an amendment is made to secure the patent and the
amendment narrows the patent’s scope.” Festo Corp. v.
Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 736
(2002).
Regardless of whether Advantek surrendered claim
scope during prosecution, the accused product falls out-
side the scope of the purported surrender, contrary to the
district court’s conclusion. Advantek elected to patent the
ornamental design for a kennel with a particular skeletal
structure. A competitor who sells a kennel embodying
Advantek’s patented structural design infringes the D’006
patent, regardless of extra features, such as a cover, that
the competitor might add to its kennel.2 Construed in the
light most favorable to Advantek, the complaint can be
read to accuse the skeletal structure of Walk-Long’s Pet
Companion. The complaint alleges that Walk-Long
2 Of course, if the accused skeletal structure is only
a component of an accused multicomponent product,
Advantek would only be able to seek damages based on
the value of the component, not the product as a whole.
See Samsung, 137 S. Ct. at 434–35.
ADVANTEK MKTG., INC. v. SHANGHAI WALK-LONG TOOLS CO. 11
infringes the D’006 patent “by making, using, offering for
sale, and/or selling the patented design without the
authority of Advantek,” and by “making, using, selling,
offering for sale or importing the Accused Product.” J.A.
25. Although Walk-Long argues that it was uncertain as
to what was being accused of infringement, if clarification
was needed, the district court should have granted Ad-
vantek leave to file an amended complaint. Under Ninth
Circuit procedural law, “[a] simple denial of leave to
amend without any explanation by the district court is
subject to reversal.” Sharkey v. O’Neal, 778 F.3d 767, 774
(9th Cir. 2015) (quoting Eminence Capital, LLC v. Aspeon,
Inc., 316 F.3d 1048, 1052 (9th Cir. 2003)).
CONCLUSION
We conclude that Advantek is not estopped by the
prosecution history from asserting the D’006 patent
against Walk-Long and its Pet Companion. The dismissal
under Rule 12(c) is reversed. We remand for further
proceedings.
REVERSED AND REMANDED