Not So Cozy: Prosecution History Disclaimer for Design Patents

Written by: Nathan D. Reeves and Cesar A. Estrada

TOP BRAND LLC v. COZY COMFORT CO. LLC

Before Dyk, Reyna, and Stark. Appeal from the United States District Court for the District of Arizona.

Summary: Arguments presented during prosecution of a design-patent application can limit the scope of the resulting design patent.

Top Brand sought declaratory relief of noninfringement of a design patent owned by Cozy and directed to an oversized hooded garment with a front pocket. Cozy counterclaimed for infringement. The jury found that Top Brand infringed and the district court denied judgment as a matter of law (JMOL) to Top Brand. Top Brand appealed.

On appeal, Top Brand argued that Cozy disclaimed the claim scope during prosecution of the design patent and that Top Brand’s designs fell outside the narrowed claim.  The Federal Circuit agreed.  During prosecution, Cozy presented arguments to differentiate its design from prior art cited by the examiner. For instance, Cozy argued that the location and size of its front pocket were different from those of a cited reference.  The Federal Circuit held that prosecution history disclaimer applies to arguments made in prosecution of a design patent and that, by distinguishing the cited reference, Cozy surrendered claim scope. Since several design elements of the accused product were the same as elements disclaimed during prosecution, the Federal Circuit held that Cozy could not rely on those design elements to show infringement. Concluding that Cozy had insufficient evidence of infringement, the Federal Circuit reversed the district court’s denial of JMOL to Top Brand.

Editor: Sean Murray