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United States Court of Appeals for the Federal Circuit
August 1, 2018, Decided
[*1211] [***1616] Newman, Circuit Judge.
Advantek Marketing, Inc. is the owner of design patent 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.
[*1212] Advantek sued its former manufacturer, Shanghai Walk-Long Tools Co., together with Advantek's former vice president and others (collectively, "Walk-Long"), [**2] 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 Companion." 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
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.
The D'006 design application was filed with five photographs as figures. The examiner objected to the photographs 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:
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898 F.3d 1210 *; 2018 U.S. App. LEXIS 21367 **; 127 U.S.P.Q.2D (BNA) 1615 ***
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
Subsequent History: Later proceeding at Advantek Mktg. v. Shanghai Walk-Long Tools Co., 2019 U.S. Dist. LEXIS 149816 (C.D. Cal., Sept. 3, 2019)
Prior History: [**1] 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.
Advantek Mktg. v. Shanghai Walk-Long Tools Co., 2016 U.S. Dist. LEXIS 188772 (C.D. Cal., Nov. 3, 2016)
Disposition: REVERSED AND REMANDED.
patent, kennel, infringement, Embodiment, Pet, designs, elected, surrender, articles, estoppel, district court, Figures, manufacture, Gazebo
Civil Procedure, Judgments, Pretrial Judgments, Judgment on Pleadings, Patent Law, Jurisdiction & Review, Standards of Review, De Novo Review, Subject Matter, Design Patents, Infringement Actions, Prosecution History Estoppel, Business & Corporate Compliance, Patent Law, Pleadings, Amendment of Pleadings, Leave of Court