 |
**DOCTRINE OF PROSECUTION DISCLAIMER APPLIES TO DESIGN PATENTS
Top Brand LLC v. Cozy Comfort Co. LLC, 24-2191 — Yesterday in an opinion by Judge DYK, the Federal Circuit reversed a district court judgment denying Top Brand’s motion for judgment as a matter of law for noninfringement of Cozy Comfort’s design patent for an oversized hoodie. Cozy Comfort argued Top Brand’s product fell within the claimed subject matter because the doctrine of prosecution history disclaimer did not apply to design patents, which by their nature “render[ed] any purported disavowal ambiguous.”
The Federal Circuit disagreed. The court had previously held a design patent applicant could narrow the scope of claims after receiving a restriction requirement and saw “no reason to distinguish between disclaimer by amendment and disclaimer by argument,” allowing a patentee to “surrender claim scope of a design patent by its representations to the Patent Office during prosecution.” It would also be “contrary to the very purpose of design patent prosecution to allow the patentee to make arguments in litigation contrary to the representations which led to the grant of the patent in the first place.”
(1 to 4 stars rate impact of opinion on patent & trademark law)
IPO ANNUAL MEETING SPONSOR: HERBERT SMITH FREEHILLS KRAMER LLP
Herbert Smith Freehills Kramer LLP is a sponsor of IPO’s Annual Meeting in San Diego, CA. For more information or to register, visit www.ipo.org/am2025.
 |
 |
PATENT CLAIMING LANGUAGE: TRANSITIONAL PHRASES
Patent claims ordinarily have three parts: a preamble, a transitional phrase, and a body. Common transitional phrases are “comprising,” “consisting of,” and “consisting essentially of.” The body states the elements of the claimed invention.
Comprising—Most patent claims use “comprising,” which in patent lingo is an open-ended term. It means the claim can cover other elements in addition to those in the body.
Consisting of—A closed-ended term meaning that the coverage is limited to elements in the body.
Consisting Essentially of—According to Black’s Law Dictionary, this phrase means “nearly closed-ended.” Professor Dennis Crouch believes the Federal Circuit’s June 30 opinion in Eye Therapies departed from the established meaning. I offer no opinion on this.
Squires Claims—In writing this column, I discovered that Black’s lists varieties of claims, including a rare variety called “Squires Claims.” No, they’re not named for John Squires, the nominee for USPTO director. More next week.
Comments are welcome. Click on “Curmudgeon” at the bottom of this column for my email address. Click here for the Curmudgeon Archives.
Your Friend,
The Curmudgeon