No.

2013-1199 ____________________ IN THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT ____________________ PACIFIC COAST MARINE WINDSHIELDS LIMITED, Plaintiff-Appellant, v. MALIBU BOATS, LLC and TRESSMARK, INC., doing business as Liquid Sports Marine, Defendants-Appellees, and MARINE HARDWARE, INC., MH WINDOWS, LLC, and JOHN F. PUGH, Defendants-Appellees. __________________ Appeal from the United States District Court for the Middle District of Florida in No. 12-cv-0033, Judge John Antoon II. ____________________ PETITION FOR PANEL REHEARING AND REHEARING EN BANC ____________________ DARIN W. SNYDER O’MELVENY & MYERS LLP Two Embarcadero Center, 28th Floor San Francisco, CA 94111 (415) 984-8700 BRIAN BERLINER STEVEN BASILEO O’MELVENY & MYERS LLP 400 South Hope Street Los Angeles, CA 90071 (213) 430-6000 JONATHAN D. HACKER Counsel of Record DEANNA M. RICE O’MELVENY & MYERS LLP 1625 Eye Street, N.W. Washington, D.C. 20006 (202) 383-5300

Counsel for Appellees Malibu Boats, LLC and Tressmark, Inc. [Additional counsel listed on inside cover]

MARK P. WALTERS LOWE GRAHAM JONES PLLC 701 5TH Avenue, Suite 4800 Seattle, WA 98104 Telephone: (206) 381-3300 Counsel for Appellees Marine Hardware, Inc., MH Windows, LLC, and John F. Pugh

Form 9 FORM 9. Certificate of Interest

UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
Pacific Coast Marine Windshields Limited ____________________________

Malibu Boats, LLC et al. v. ____________________________

2013-1199 No. _______

CERTIFICATE OF INTEREST
Counsel for the (petitioner) (appellant) (respondent) (appellee) (amicus) (name of party) appellees _______________________ certifies the following (use “None” if applicable; use extra sheets if necessary): 1. The full name of every party or amicus represented by me is: _____________________________________________________________________________ Malibu Boats, LLC _____________________________________________________________________________ Tressmark, Inc., doing business as Liquid Sports Marine _____________________________________________________________________________ 2. The name of the real party in interest (if the party named in the caption is not the real party in interest) represented by me is: _____________________________________________________________________________ _____________________________________________________________________________ N/A _____________________________________________________________________________ 3. All parent corporations and any publicly held companies that own 10 percent or more of the stock of the party or amicus curiae represented by me are: _____________________________________________________________________________ Malibu Boats, LLC: Malibu Boats, Inc.; Black Canyon Capital LLC; Horizon Holdings, _____________________________________________________________________________ LLC _____________________________________________________________________________ 4.  The names of all law firms and the partners or associates that appeared for the party or amicus now represented by me in the trial court or agency or are expected to appear in this court are: O'Melveny & Myers LLP (Darin W. Snyder, Brian Berliner, Jonathan D. Hacker, Steven _____________________________________________________________________________ Basileo, Loren L. AliKhan, Deanna M. Rice) _____________________________________________________________________________
02/07/2014 _____________________ Date /s/ Jonathan D. Hacker _______________________________ Signature of counsel Jonathan D. Hacker _______________________________ Printed name of counsel

Please Note: All questions must be answered cc: ___________________________________

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TABLE OF CONTENTS Page RULE 35(b) STATEMENT ......................................................................................1 INTRODUCTION ....................................................................................................1 STATEMENT ...........................................................................................................3 ARGUMENT ............................................................................................................5 I. REHEARING IS NECESSARY BECAUSE THE PANEL’S DECISION RESTS ON A FUNDAMENTAL MISUNDERSTANDING OF HOW DESIGN PATENTS ARE CLAIMED. .....................................................................................................5 THE COURT SHOULD GRANT PANEL OR EN BANC REHEARING TO RESOLVE A CONFLICT BETWEEN THE PANEL’S DECISION AND THE SUPREME COURT’S DECISION IN FESTO. ......................................................................................................9 A. B. The Panel’s Decision Conflicts With Festo. ........................................9 The Panel’s Departure From Supreme Court Precedent Unjustifiably Creates A Distinction Between Utility Patents And Design Patents That Should Not Exist. ......................................12

II.

CONCLUSION .......................................................................................................15

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TABLE OF AUTHORITIES Page(s) CASES Biagro W. Sales Inc. v. Grow More Inc., 423 F.3d 1296 (Fed. Cir. 2005) ............................................................................13 Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535 U.S. 722 (2002) ..................................................................................... passim Honeywell Int’l Inc. v. Hamilton Sundstrand Corp., 370 F.3d 1131 (Fed. Cir. 2004) (en banc) ..............................................................9 In re Owens, 710 F.3d 1362 (Fed. Cir. 2013) ..............................................................................8 Loral Fairchild Corp. v. Sony Corp., 181 F.3d 1313 (Fed. Cir. 1999) ..............................................................................1 Lucent Techs., Inc. v. Gateway, Inc., 525 F.3d 1200 (Fed. Cir. 2008) ....................................................................... 9, 13 Voda v. Cordis Corp., 536 F.3d 1311 (Fed. Cir. 2008) ........................................................... 9, 10, 12, 13 Wang Laboratories, Inc. v. Mitsubishi Electronics America, Inc., 103 F.3d 1571 (Fed. Cir. 1997) ............................................................................11 STATUTES 35 U.S.C. § 289 ................................................................................................... 4, 12 OTHER AUTHORITIES MPEP § 1503.02 ......................................................................................................15 MPEP § 1504.05 ......................................................................................................14 Sarah Burstein, Guest Post on Pacific Coast Marine, PATENTLYO (Jan. 13, 2014), http://www.patentlyo.com/patent/2014/01/guest-post-on-pacificcoast-marine-by-prof-sarah-burstein.html..............................................................3

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TABLE OF AUTHORITIES (continued) Page(s) Jason J. Du Mont and Mark D. Janis, Square Pegs, Round Holes, PATENTLYO (Jan. 13, 2014), http://www.patentlyo.com/patent/2014/01/square-pegs-round-holes-guestpost-by-mark-janis-and-jason-du-mont.html .........................................................3 Ian Mullet, Federal Circuit Alert: Pacific Coast Marine Windshields Ltd. v. Malibu Boats, LLC, THE ORDINARY OBSERVER (Jan. 9, 2014), http://www.theordinaryobserver.com/2014/01/federal-circuit-alert-pacificcoast.html ................................................................................................................3

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RULE 35(b) STATEMENT 1. Based on my professional judgment, I believe the panel’s decision is contrary to the decision of the Supreme Court of the United States in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535 U.S. 722 (2002). 2. Based on my professional judgment, I believe this appeal involves a precedent-setting question of exceptional importance concerning the application of prosecution history estoppel to design patents. /s/ Mark P. Walters Attorney of Record for PetitionersAppellees Marine Hardware, Inc., MH Windows, LLC, and John F. Pugh /s/ Jonathan D. Hacker Attorney of Record for PetitionersAppellees Malibu Boats, LLC and Tressmark, Inc.

INTRODUCTION This Court has long recognized that when a patentee publicly surrenders claim scope to obtain a patent, the surrendered subject matter may not subsequently be recaptured through a claim of infringement. See, e.g., Loral Fairchild Corp. v. Sony Corp., 181 F.3d 1313, 1322 (Fed. Cir. 1999). This

principle of “prosecution history estoppel” limits the range of equivalents (or “colorable imitations,” in the design context) that a patentee may identify as infringing the issued patent. The Supreme Court has explained the reach of that limitation: “A patentee’s decision to narrow his claims through amendment may be presumed to be a general disclaimer of the territory between the original claim and the amended claim.” Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.,

Ltd., 535 U.S. 722, 740 (2002).

For more than a decade, that standard has

consistently applied to patents claiming a wide array of inventions and to narrowing amendments made in a variety of ways. The panel that heard this appeal, however, expressly rejected that standard in determining whether to apply estoppel in this case. Rather than look to “the territory between the original claim and the amended claim” to identify what had been surrendered, as the Supreme Court’s decision in Festo instructs, the panel asked whether the accused design was within the scope of one particular embodiment submitted in the original application and later cancelled. Under Festo, however, the reach of the patentee’s presumptive surrender is not limited to specific variants that were expressly claimed and subsequently cancelled. If a narrowing amendment is made to obtain the patent, the presumption of surrender covers everything that falls between the original and amended claims. Had the panel properly applied the Festo presumption, it would have found that prosecution history estoppel bars the claim of infringement advanced in this case. Only by setting that rule aside did the panel conclude otherwise. The panel suggested that its departure from Supreme Court precedent was necessary where a design patent is involved, but its reasoning rested on a fundamental misunderstanding of how design patents are claimed. Further, by rejecting the Supreme Court’s direction that the “patentee’s decision to narrow his 2

claims through amendment may be presumed to be a general disclaimer of the territory between the original claim and the amended claim,” the panel created an unnecessary and unjustified distinction between utility and design patents.1 Rehearing is necessary to correct the panel’s faulty analysis of the scope of the surrender and to eliminate an impermissible departure from Supreme Court precedent that creates a groundless distinction between utility and design patents. STATEMENT This is an appeal from a district court decision granting summary judgment of non-infringement for defendants. That decision was based on a finding that prosecution history estoppel barred plaintiff Pacific Coast Marine Windshields Ltd. (“PCMW”) from claiming that a marine windshield manufactured and distributed by defendants infringes a design patent (the “’070 Patent”) obtained by PCMW’s owner, Darren Bach. PCMW appealed to this Court, asserting, inter alia, that

Unsurprisingly, the panel’s opinion—which decides an issue of first impression in this Court regarding the application of prosecution history estoppel to design patents—has attracted the attention of patent-law experts and commentators. See, e.g., Sarah Burstein, Guest Post on Pacific Coast Marine, PATENTLYO (Jan. 13, 2014), http://www.patentlyo.com/patent/2014/01/guest-poston-pacific-coast-marine-by-prof-sarah-burstein.html; Jason J. Du Mont and Mark D. Janis, Square Pegs, Round Holes, PATENTLYO (Jan. 13, 2014), http://www.patentlyo.com/patent/2014/01/square-pegs-round-holes-guest-post-bymark-janis-and-jason-du-mont.html; Ian Mullet, Federal Circuit Alert: Pacific Coast Marine Windshields Ltd. v. Malibu Boats, LLC, THE ORDINARY OBSERVER (Jan. 9, 2014), http://www.theordinaryobserver.com/2014/01/federal-circuit-alertpacific-coast.html. 3

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prosecution history estoppel did not apply to claims of design-patent infringement under 35 U.S.C. § 289, and that, even if it did, there was no basis for applying it here because Bach had not surrendered claim scope for reasons of patentability. The panel held that prosecution history estoppel applies to design patents. Slip Op. 11. The panel then found that the first two requirements for applying prosecution history estoppel were satisfied here—the patentee made a narrowing amendment during prosecution, and the amendment was “made to secure the patent.” Slip. Op. 12-13; see Festo, 535 U.S. at 736 (“Estoppel arises when an amendment is made to secure the patent and the amendment narrows the patent’s scope.”). From there, the only question that remained was how far the estoppel reaches. When deciding that question, the panel refused to apply Festo’s rule that the amendment presumptively disclaimed the “territory between the original claim and the amended claim.” 535 U.S. at 740. The panel instead focused narrowly on the scope of a cancelled two-hole embodiment—one of several cancelled out of Bach’s original application—and held that “[s]ince the patentee here does not argue that the accused design was within the scope of the surrendered two-hole embodiment, no presumption of prosecution history estoppel could arise.” Slip Op. 16.

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ARGUMENT I. REHEARING IS NECESSARY BECAUSE THE PANEL’S DECISION RESTS ON A FUNDAMENTAL MISUNDERSTANDING OF HOW DESIGN PATENTS ARE CLAIMED. The panel held that prosecution history estoppel does not bar PCMW from claiming that the accused design infringes the ’070 Patent because the accused design is outside the “scope of the surrender” made by Bach’s amendment. Slip Op. 15-16. That conclusion rests on a fundamental misunderstanding of what was claimed by Bach’s original patent application and of how design patents are claimed as a general matter. Bach’s original application claimed a design with any number of holes up to four, which necessarily includes a three-hole design. The ’070 Patent claims only a design with four holes. The accused design—which has three holes—is therefore within the scope of the surrendered territory. The panel reasoned that a three-hole design was not within the scope of the surrender because “[c]laiming different designs does not necessarily suggest that the territory between those designs is also claimed.” Slip Op. 16. In the designpatent context, this is simply untrue. As the panel recognized, a patentee is

permitted coverage for only a single design in a design patent. Slip Op. 13. Accordingly, when a patentee submits multiple drawings with varied features in an application for a design patent, the claim is for a single design that covers the full range of variations represented by the drawings. Here, Bach’s original claim for a 5

marine windshield design included drawings depicting various embodiments of the claimed design, including versions with zero, two, and four holes. Bach also claimed his design in words, as “the ornamental design of a MARINE WINDSHIELD with a frame, a tapered corner post with vent holes and without said vent holes, and with a hatch and without said hatch, as shown and described.” JA 361. That description left no doubt that he was claiming one design with or without holes—not different designs each with a specific number of exactly zero, two, or four holes. And while the textual description did not specify how many holes he was claiming, his embodiment drawings made that claim perfectly clear: anywhere from zero to four holes. It is impossible to consider the textual

description along with the drawings and conclude that a three-hole embodiment was outside the design Bach claimed. The panel’s flawed reasoning rests in part on a misunderstanding of a statement made by counsel at oral argument. In its opinion, the panel asserts that defendants conceded that Bach’s original application did not claim “a design . . . that has zero to four holes.” Slip Op. 16 (citation omitted). Counsel made no such concession. The cited passage is a response to several questions focusing on how the claim in Bach’s original application would translate into words if it had been a utility patent claim. Against that backdrop, counsel explained:

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[B]ecause we have a single design, all we have in front of us . . . are the pictures, and we know that he tried to originally claim a corner post with no holes, some with two holes of varying shapes, some with four holes of varying shapes, some with hatches, some with no hatches, and the examiner correctly found that that has to be limited to a single design. Now, if you were going to translate that into words, I don’t know if the applicant would have said a design that has zero, two, or four holes or if the applicant would have said it’s . . . a design that has zero to four holes. Recording of Oral Argument 32:34-33:10, available at http://oralarguments.cafc. uscourts.gov/default.aspx?fl=2013-1199.mp3. The point is perfectly clear: if this were a utility patent, where claims are stated in words and multiple claims may be made in a single application, we do not know exactly how Bach would have worded his claims. But we do know what design he submitted, i.e., a single design with multiple variants, including zero, two, and four venting holes.2 The fact that Bach’s original claim was not patentable because the embodiments he grouped together actually represented several patentably distinct designs does not change what the application claimed. To the contrary, the fact that his application, in essence, “claimed too much” for a single design is precisely what gives rise to

In the same vein, counsel distinguished the panel’s hypothetical utility patent case in which an original claim specified “two or four” holes and the applicant revised the claim to only “four” holes: “I think that would be a very difficult case because the claimant is not claiming three in that instance. Here, however, you have a single claim where the applicant had a design that had no holes, two holes of varying shapes, and four holes.” Recording of Oral Argument 21:16-22:17. This explanation again reflects defendants’ position that Bach’s original application claimed a single design with as many as four holes. 7

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prosecution history estoppel: the doctrine only applies where the patentee has made a narrowing amendment to obtain the patent. See Festo, 535 U.S. at 736. How Bach’s claim might have been phrased had he sought a utility patent does not determine what was claimed in his application for a design patent. With design patents, the pictures provide the primary description of the claim, which is limited to a single design. See In re Owens, 710 F.3d 1362, 1366 (Fed. Cir. 2013); see also Slip Op. 12. The drawings in Bach’s original application do not reflect a claim for three different windshield designs, each with a different number of holes. They instead describe pictorially a single design with up to four venting holes. Bach amended that original application to include—and the ’070 Patent issued with—only drawings depicting a marine windshield with four venting holes. The panel is therefore mistaken in asserting that “[t]he record only reflects the surrender of the two-hole embodiment.” Slip Op. 16. Although Bach did not submit a drawing of a three-hole embodiment with his original application, his original application undoubtedly claimed a three-hole design, because it included figures ranging from zero to four holes. The record therefore reflects the surrender of a design including one hole and a design including three holes. The panel should grant rehearing and affirm the district court’s judgment of non-infringement, because the accused three-hole design falls within the scope of the design territory surrendered by Bach’s narrowing amendment. 8

II.

THE COURT SHOULD GRANT PANEL OR EN BANC REHEARING TO RESOLVE A CONFLICT BETWEEN THE PANEL’S DECISION AND THE SUPREME COURT’S DECISION IN FESTO. Rehearing is also necessary because the panel’s decision unjustifiably

departs from the Supreme Court’s decision in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535 U.S. 722 (2002). A. The Panel’s Decision Conflicts With Festo.

1. In Festo, the Supreme Court held that an “[e]stoppel arises when an amendment is made to secure the patent and the amendment narrows the patent’s scope.” 535 U.S. at 736. Once those two conditions are satisfied, Festo instructs that “[a] patentee’s decision to narrow his claims through amendment may be presumed to be a general disclaimer of the territory between the original claim and the amended claim.” Id. at 740. This Court’s post-Festo precedents have

consistently applied that presumption when conducting the prosecution history estoppel analysis. See, e.g., Voda v. Cordis Corp., 536 F.3d 1311, 1325-26 (Fed. Cir. 2008); Lucent Techs., Inc. v. Gateway, Inc., 525 F.3d 1200, 1218 (Fed. Cir. 2008); Honeywell Int’l Inc. v. Hamilton Sundstrand Corp., 370 F.3d 1131, 1143-44 (Fed. Cir. 2004) (en banc). The panel in this case, however, refused to do so. After finding that Bach made a narrowing amendment to secure the ’070 Patent, the panel held that “[s]ince the patentee here does not argue that the accused design was within the scope of the surrendered two-hole embodiment, no 9

presumption of prosecution history estoppel could arise.” Slip Op. 16. That is, rather than look at whether the accused design fell within the territory between the original and amended claims, the panel asked whether the accused design is a colorable imitation of the cancelled two-hole embodiment. Id. That analysis is contrary to Festo. Prosecution history estoppel operates as a limit on the equivalents covered by a patented invention or design. See Voda, 536 F.3d at 1324. The panel wrongly considered not the range of equivalents surrounding the patented design in light of Bach’s amendment, but the range surrounding the cancelled embodiment. Slip Op. 16. But Festo holds that where a patentee limits his initial claim to obtain the patent, he is not permitted to invoke the doctrine of equivalents to expand the issued patent’s reach beyond its plain terms, unless he can rebut the presumption as to a particular equivalent. See 535 U.S. at 741. The panel thus turned Festo on its head by holding that a patentee presumptively retains all equivalents except those that were expressly abandoned, rather than presumptively surrenders all equivalents in the territory between the original and amended claim. 2. The panel cited no authority that supports its improper focus on the scope of the cancelled two-hole embodiment. The panel built its analysis on the notion that “[p]rosecution history estoppel only bars an infringement claim if the accused design fell within the scope of the surrendered subject matter,” citing this Court’s 10

pre-Festo decision in Wang Laboratories, Inc. v. Mitsubishi Electronics America, Inc., 103 F.3d 1571 (Fed. Cir. 1997). Slip Op. 15. In Wang Laboratories, this Court found that the patentee was estopped from asserting that a device with nine capacitors was an equivalent of the patented device with eight capacitors, because the patentee had amended the claim to specify an exact number of capacitors— eight. 103 F.3d at 1578. That logic does not require that the patentee have claimed an equivalent with particularity in his original application for that equivalent to fall within “the scope of surrendered subject matter.” Indeed, in Wang Laboratories, the patentee had initially asserted only that the claimed invention included “capacitors,” without any indication how many. See id. Festo, meanwhile,

confirms that “the scope of the surrendered subject matter” is not limited to equivalents expressly claimed and then cancelled; instead, the patentee is presumed to have surrendered the full “territory between” the original and amended claims.3 3. The panel’s departure from Festo is significant. Had the panel properly applied Festo’s rule that Bach presumptively disclaimed the full territory between his original and amended claims, it would have found—as the district court did— that the accused design falls within the surrendered territory and that PCMW is estopped from asserting that the accused design infringes the ’070 Patent.

To the extent there is any substantive difference between the standards articulated in Festo and Wang Laboratories, Festo, of course, must control. 11

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B.

The Panel’s Departure From Supreme Court Precedent Unjustifiably Creates A Distinction Between Utility Patents And Design Patents That Should Not Exist.

By rejecting Festo’s rule that a narrowing amendment is presumed to disclaim all equivalents in the territory between the original and amended claim, the panel created an unjustified distinction between utility patents—to which that rule uniformly applies—and design patents—to which the panel held it does not. 1. The rationale underlying the Festo rule applies no less to design patents than to utility patents. As the panel agreed, the infringement analysis for both utility and design patents involves a notion of equivalents. Slip Op. 9. In the utility patent context, it is settled that prosecution history estoppel operates as a limit on the doctrine of equivalents. Voda, 536 F.3d at 1324. In the design patent context, prosecution history estoppel similarly restricts the range of “colorable imitations” under § 289. Accordingly, just as the Festo presumption truncates the range of equivalents surrounding a utility patent, the presumption should likewise limit the designs that may be asserted as “colorable imitations” of a patented design. Despite this essential similarity between utility and design patents, the panel refused to apply the Festo presumption in the design context. 2. None of the reasons the panel offered to explain why the Festo

presumption cannot apply to design patents withstands scrutiny. To start, the panel proposed that Festo’s presumption could work only where the patent at issue 12

claimed a “range,” and that “this range concept does not work in the context of design patents, where ranges are not claimed, but rather individual designs.” Slip Op. 15-16. The panel is wrong on both counts. First, a patent need not claim a numerical “range” for Festo’s presumption to apply. Indeed, this Court frequently applies the presumption to amendments made to utility patents claiming no express “range.” For example, in Voda, the Court relied on Festo to find that, by adding language specifying that the claimed methods must be performed by a catheter having a “first substantially straight leg,” the patentee “is presumed to have disclaimed” any methods that do not involve a catheter that meets that description. 536 F.3d at 1325-26. Similarly, in Lucent Technologies, Inc. v. Gateway, Inc., 525 F.3d 1200 (Fed. Cir. 2008), the Court invoked the Festo presumption in holding that where “[t]he original claims did not contain a pulse-forming iteration” and the patentee “amended the claims to add the 5-step pulse iteration,” id. at 1216, “the applicant surrendered methods wherein pitch calculation (steps 1–4) and/or pitch removal (step 5) are performed outside the pulse-forming iteration,” id. at 1218. Unlike the example cited by the panel, Slip Op. 16 (citing Biagro W. Sales Inc. v. Grow More Inc., 423 F.3d 1296, 130607 (Fed. Cir. 2005)), neither case involved a limitation claiming a numerical range. Second, while a design patent, like a utility patent, does not necessarily claim a range, a design patent can claim a range. A design patent may issue with 13

multiple drawings that exhibit minor variations in detail; the patent is limited to one design, not one drawing. The Manual of Patent Examining Procedure

explicitly recognizes that a single design may be composed of multiple embodiments: “It is permissible to illustrate more than one embodiment of a design invention in a single application. However, such embodiments may be presented only if they involve a single inventive concept.” MPEP § 1504.05. Because a single inventive concept may be shown through multiple embodiments, that concept may encompass a range of design variations. Thus, the panel erred in concluding that the “range concept” cannot apply to design patents. Slip Op. 16. 3. The panel also attempted to justify its departure from Festo on the ground that “[c]laiming different designs does not necessarily suggest that the territory between those designs is also claimed.” Slip Op. 16. As explained above, that is incorrect because a design patent can claim only one design. As a result, an application with multiple embodiments necessarily claims a design that encompasses the full range of variations depicted in the drawings. See supra at 5. Further, a patentee need not have explicitly described a particular variation in the initial application for that equivalent to fall within the territory surrendered by the amendment. See supra at 10-11. If a patentee abandons one or more variations during prosecution—whether by removing an explicit reference to the variation

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from an earlier application or by making more specific a broad, general claim—the patentee gives up all the territory between the original and amended claims. 4. Bach was not powerless to secure broader coverage for his design. He could have challenged the examiner’s restriction requirement. See Festo, 535 U.S. at 734. He could have submitted additional divisional applications. See JA 96670. He also could have responded to the restriction requirement by amending each of his drawings to show the venting holes using broken lines, which would have indicated that the claimed design covered the overall shape of the windshield with any number or shape of holes. See MPEP § 1503.02. Instead, Bach elected to proceed with drawings showing a single, specific arrangement of holes, and in doing so, he narrowly limited the ’070 Patent to that particular configuration. There is no reason the Festo presumption should not apply to design patents, and the panel erred by departing from Supreme Court precedent. This Court should grant rehearing to resolve the conflict between the panel’s decision and Festo and affirm the district court’s holding that PCMW is estopped from asserting that the accused design infringes the ’070 Patent. CONCLUSION The petition for rehearing or rehearing en banc should be granted.

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Dated: February 7, 2014

Respectfully submitted, /s/ Jonathan D. Hacker JONATHAN D. HACKER DEANNA M. RICE O’Melveny & Myers LLP 1625 Eye St. N.W. Washington, D.C. 20006 Telephone: (202) 383-5300 DARIN W. SNYDER O’Melveny & Myers LLP Two Embarcadero Center, 28th Floor San Francisco, CA 94111 Telephone: (415) 984-8700 BRIAN BERLINER STEVEN BASILEO O’Melveny & Myers LLP 400 South Hope St., 18th Floor Los Angeles, CA 90071 Telephone: (213) 430-6000 Counsel for Appellees Malibu Boats, LLC and Tressmark, Inc. MARK P. WALTERS Lowe Graham Jones PLLC 701 5TH Avenue, Suite 4800 Seattle, WA 98104 Telephone: (206) 381-3300 Counsel for Appellees Marine Hardware, Inc., MH Windows, LLC, and John F. Pugh

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