# 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

.

______________________

2013

- 1199

______________________ Appeal from the United States Dis trict Court for the Middle District of Florida in No. 12

- CV

- 0033, Judge John Antoon

, II.

______________________
Decided: January 8, 2014

______________________

R OBERT E. R OHDE , Rohde & Van Kampen, PLLC, of Seattle, Washington, argued for plaintiff

- appellant

.PACIFIC COAST MARINE v. MALIBU BOATS , LLC 2

D ARIN W. S NYDER , O’Melveny & Myers LLP, of San Francisco, California, argued for all defendants

- appellees. W ith him on the brief for defendants

- appellees, Malibu Boats, LLC, et al., were B RIAN B ERLINER and S TEVEN B ASILEO , of Los Angeles, California; and J ONATHAN D. H ACKER and D EANNA M. R ICE , of Washington, DC . O n the brief for defendants

- appellees, Marine Hardware, Inc., et al., were M ARK P. W ALTERS and D ARIO A. M ACHLEIDT , Frommer Lawrence & Haug, LLP, of Seattle, Washin gton, for

______________________
Before D YK , M AYER , and C HEN , Circuit Judges.

D YK , Circuit Judge

. Pacific Coast Marine Windshields Limited (“Pacific Coast”) is the assignee of all rights in U.S. Patent No. D555,070 ( “ the ’ 0 70 patent”) for an ornamental boat windshield design

. Pacific Coast brought suit against Malibu Boats, LLC, Marine Hardware, Inc., Tressmark, Inc., MH Windows, LLC, and John F. Pugh (collectively “Malibu Boats”) in the Middle Distric t of Florida, alleging in fringement

. The district court granted Malibu Boats’ motion for sum mary judgment of non

- infringement

, finding that prosecution history estoppel barred the infringement claim. Pacific Coast appeals . We hold that the principles of prosecution history estoppel appl y to design patents, but reverse the district court’s summa ry judgment of non

- infringement because the accused i nfringing design was not within the scope of the subject
matter sur rendered during prosecution, and remand for further proceedings.

B ACKGROUND

Darre n A. Bach

, the owner and chief executive officer of Pacific Coast

, filed a design patent appli cation on April 27, 2006
, claiming an “ornamental design of a marinePACIFIC COAST MARINE v. MALIBU BOATS , LLC 3

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 de scribed.” JA 361 (emphasis removed). The accompanying figures depicted various embodiments of the claime d design with different vent hole configurations

. The drawings also showed designs that included and excluded a hatch on the front of the windshield. Shown below are submitted figures repr esentative of the various embodi ments.

JA 362, 366

- 71

. T he examine r determined that the multiple embod iments represented five “patentably distinct groups of designs” and issued a restriction requirement, identifyingPACIFIC COAST MARINE v. MALIBU BOATS , LLC 4

the five distinct groups of designs as windshields with : (1) four circular holes and a hatch ( figure 1 ) ; (2) four circular

or square hol es and no hatch ( figures 7 & 12 ) ; (3) no holes and a hatch ( figure 8 ); (4) no holes and no hatch ( figure 9 ); and (5) two oval or rectangular holes and a hatch ( figures 10 & 11 ). JA 386. The applicant was required to elect a

s ingle group for the pending applicati on although the applicant was entitled to file additional applications for each of the remaining groups

. In response, the applicant elected “Group I, Embod iment 1,” corresponding to figure 1 above

, depicting four
vent holes and a hatch

. JA 392. He amended the claim to recite “ the ornamental design of a marine windshield with a frame, and a pair of tapered corner posts [,]” removing the original claim language stating “with vent holes and without said vent holes, and with a hatch and without said hatch.” J A 390 (emphas e s removed) . The applicant also cancelled figures 7

- 12, leaving only the embodiment with four circular holes on the corner post and a hatch on the front of the windshield

. The amended application issued as the ’ 070 patent on Novem ber 13, 2007. As issued , the ’ 070 patent claims “[t]he ornamental design for a marine windshield, a s shown and described.” JA 170. F igures 1- 6 show alternate view s of the fou r- hol e embo diment

. The inventor assigned all rights in the ’070 patent to his wholly owned company, Pacific Coast

, in June, 2011. 1 The inventor later obtained a patent for the design

1 Although the term used is “exclusive license,” the agreement is effectively an assignment because it granted “all substantial rights in and to the Patents[,]” including the ’ 0 70 patent, exclusively to Pacific Coast. JA 139. It is well- established that an exclusive transfer of all rights in a patent is considered an assignment if that is its effect, regardless of its name. See, e.g.

, Waterman v. Mackenzie

, 138 U.S. 252, 25 6 (1891) (“Whether a transfer of a parti c-PACIFIC COAST MARINE v. MALIBU BOATS , LLC 5

with no holes in the corner post as a divisional of the originally

- filed appli cation , but did not file another div isional application with respect to any of the other embo diment s

. See U.S. Patent No. D5 69,782. In 2011, Pacific Coast brought suit in the Middle Di strict of Florida, alleging, inter alia, that Malibu Boats manufac tured and sold boat windshield s with a design that infringed the ’070 patent

. Pacific Coast also alleged that Malibu Boats induced others, including customers and distributors, to infringe the ’ 070 patent

. The accused infringing design was in a boat windsh ield with three trapezoidal holes on the corner post , as show n below.

JA 11.

ular right or interest under a patent is an a ssignment or a license does not depend upon the name by which it calls itself, but upon the legal effect of its provisions.”) (emph asis removed) ; Alfred E. Mann Foun d

. f or Sci. Research v. Cochlear Corp. , 604 F.3d 1354, 1359 (Fed. Cir. 2010) (“[A] patent o wner may grant an exclusive license to his p atents under such terms that the license is tantamount to an assignment of the patents to the exclusive licensee. That happens when the exclusive license transfers ‘all substantial rights’ in the patents.”) (citi ng Vaupel Texti lmaschinen v. Meccanica Euro Italia S.P.A. , 944 F.2d 870, 873

- 74 (Fed. Cir. 1991)).PACIFIC COAST MARINE v. MALIBU BOATS , LLC 6

The district court granted Malibu Boats’ motion for partial summary judgment of non

- infringement on the grounds of prosecution history estoppel. T he district court found that, du ring prosecution, the applicant had surre ndered the designs reflected in the canceled figures and amended the claim “ in order to obtain the patent.” JA 9. In holding that the patentee was estopped from asserting infringement against the accused design, t he court reco gnized that “t he accused design has one fewer vent hole than the embodiment ,” but explained that “ the accused design is still clearly within ‘the territory [surrendered] between the original claim and amended claim.’” JA 12 (citing Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co. , 535 U.S. 722, 740 (2002) ). The court also found that the patentee failed to overcome the presumption o f pros ecution history estoppel. The court entered a judgment of

non

- infringement based on the finding of p rosecution history estoppel, and certified the judgment for appeal pursuant to Fed. R. Civ. P. 54(b)

. Pacific Coast appealed. We have jurisdiction under 28 U.S.C. § 1295 (a)(1)

. Whether the presumption of prosec ution history estoppel precludes a patentee fr om asserting infringement against an alleged equivalent of an amended claim element is a question of law that we review without deference. Honeywell Int ’l . Inc. v. Hamilton Sundstrand

, 370 F.3d 1131, 1139 (Fed. Cir. 2004) (en banc) (citing Ranbaxy Pharms

., Inc. v. Apotex, Inc. , 35 0 F.3d 1235 (Fed. Cir. 2003)). We also review a district court’s grant of summary judgment without deference. Teleflex, Inc. v. Ficosa N. Am

. Corp. , 299 F.3d 1313, 1323 (Fed. Cir. 2002).PACIFIC COAST MARINE v. MALIBU BOATS , LLC 7

D ISCUSSION

I Although treatises 2 and district court decisions going back to 1889 3 have recognized that the concept of prosec ution history estoppel applies to design patents as well as utility patents, this issue is one of first impression for our
court.

The doctrine of prosecution history es toppel is well e stablished for utility patents. Utility patents may be infringed both literally and under the doctrine of equiv alents. For doctrine of equivalents purposes, the accused and claimed elements are equivalent if there are only “insubstantial di fferences” be tween them

. Warner

Jenkinson Co. v. Hilton Davis Chem. Co. , 520 U.S. 17, 39

2 See , e.g. , Donald S. Chisum , Chisum on Patents § 23.05 [7] (2013) (“Decisions confirm that a design patent’s prosecution history may limit its scope. ”); 6 John G. Mills et al., Pat. L. Fundamentals § 20:50 (2d ed.) (2013) (“ Where the Patent & Trademark Office required r estriction among a plurality of embodiments proffered to the Office in a single design applica [] tion, courts have held that the patentee is e stopped from asserting that an accused design which corresponds to a nonelected embo diment infringes the elected embodiment

. . . . ”).

3 See , e.g. , Australia Vision Servs. Pty. Ltd

. v. Dioptics Med. Prods. Inc. , 29 F. Supp. 2d 1152, 1157 (C.D. Cal. 1998); Victus Ltd. v. Collezione Europa U.S.A. Inc.

, 48 U.S.P.Q. 2d 1145, 1148

- 49 (M.D.N.C. 1998); McGrady v. Aspenglas Corp. , 487 F. Supp. 859 , 861 (S.D.N.Y. 1980) ; W.R. Grace & C o. v. W . United States Indus., Inc.

, 180 U.S.P.Q. 40, 47 (C.D. Cal. 1975)

, aff’d on other grounds

, 608 F.2d 1214 (9th Cir. 1979) ; Stimulant Prods., Inc. v. Vibrex Corp.

, 161 U.S.P.Q. 513, 517 (C.D. Cal. 1969); MacBeth v. Gillinder , 54 F. 169 , 170 (C.C.E.D. Pa 1889).PACIFIC COAST MARINE v. MALIBU BOATS , LLC 8

(1997). An alternate formulation focuses on whether the

“ substitute element matches the function, way, and result of the claimed element.” Id. at 40. See also Graver Tank & Mfg. Co. v. Linde Air Prods

. Co. , 339 U.S. 605, 61 2 (1950) (finding e quivalen ce when the “changes which avoid literal infringement are colorable only ” ).
With respect to utility patents, p rosecution history e stoppel limits a patentee’s ability to recover under th e doctrine of equiva lents , but does not limit literal i nfringement

. The doctrine is founded on the public notice function of patents

. The Supreme Court has recognized that “ [t]here can be no denying that the doctrine of equi valents, whe n applied broadly, conflicts with the defin itional and public

- notice functions of the statutory claiming requirement. ” Warner

- Jenkinson , 520 U.S. at 29 ;

se e also Festo , 535 U.S. at 731 (“A patent holder should know what he owns, and the public should know wh at he does not.”). Consequently, prosecution history estoppel limits the bounds of what a patentee can claim as equiv alent by “requir[ing] that the claims of a patent be inte rpreted in light of the proceedings in the PTO during the application process.” Festo
, 535 U.S. at 733

. Where subject
matter is surrendered during prosecution, p rosecution his tory estoppel prevents the patentee from “recap tur[ing] in an infringement action the very subject matter surre ndered as a condition of receiv ing the patent.” Id

. at 734. For design patents, the concepts of literal infring ement and equivalents infringe ment are intertwined

. Unlike the provisions defining infringement of a utility patent, t he statutory provision on design patent infring ement does not require litera l identity, imposing liability

on anyone who “ without license of the owner, (1) applies the patented design, or any colorable imitation thereof , to any article of manufacture for the purpose of sale, or (2) sells or exposes for sale any article of manufact ure toPACIFIC COAST MARINE v. MALIBU BOATS , LLC 9

which such design or colorable imitation has been a pplied

. . . . ” 35 U.S.C. § 289 (empha ses added).
Under the leading Supreme Court case of Gorham Mfg. Co. v. White , 81 U.S. 511 (1871) , the test for design patent infringement is whether

in the eye of an ordinary observer, giving such a ttention as a purchaser 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 on e patented is infringed by the other

. Id. at 528. The Court explained that, if the test for i nfringement required the accused design to reproduce all elements of the patented design, “[t]here never could be piracy of a patented design, for human ingenuity has never yet produced a design, in all its details, exactly like another, so like, tha t an expert could not distinguish them.” Id. at 527 ; se e also Braun Inc. v. Dynamics Corp. of Am. , 975 F.2d 815, 820 (Fed. Cir. 1992) (“ [P] atent i nfringement can be fou nd for a design that is not identical to the patent ed design

. ”).

Th us, th e test for design patent infringement is not identity, but rather sufficient similarity

— whether “ the accused design could not reasonably be viewed as so similar to the claimed design that a purchaser familiar with the prior art would be deceived by the similarity between th e claimed and accused designs, “‘ inducing him to purchase one supposing it to be the other.’” Egyptian Goddess , Inc. v. Swisa, Inc. , 543 F.3d 6 6 5, 683 ( Fed. Cir. 200 8) ( quoting Gorham , 81 U.S. at 528)

. We have held that the “colorable imitation” standard of the design patent statute involves the concept of equivalents. A l though “the way/function/result test . . . is not directly transferable to design patents

, it has long been recognized that the principles of equivalency are applica ble. ” Lee v.PACIFIC COAST MARINE v. MALIBU BOATS , LLC 10

Dayton- Hudson Corp. , 838 F.2d 1186, 1189 (Fed. Cir. 1988) ; se e also Chisum on Pa tents § 23.05 (“[I ] t can be questioned whether there is any need to apply to designs the general distinction between ‘literal’ infringement of a patent and infringement under the ‘doctrine of equiv alents

. ’”). Indeed, Pacific Coast characterized the substa ntial similarity between the accused designs and the ’ 070 patent as the basis for an infringement claim “under the doctrine of equivalents .” JA 142.

Pacific Coast , in its briefs, argued that prosecution history estoppel should not apply to de sign patents at all

. 4

4 Pacific Coast also argue d that the defendant here was foreclosed f rom raising the issue of prosecution history estoppel on summary judgment because it is an affirmative defense that was not raised in the pleadings, as required by Rule 8(c) of the Fe deral Rules of Civil Procedure. Assuming arguendo that prosecution histor y estoppel is an affirmative defense, the doct rine was ad equately pled in the defendants’ answers

, which stated,

“ [p] laintiff’s claims are barred in whole or in

- part by the doctrine [] of . . . estop pel . . . .” JA 228 ; see JA 181 ; JA 191; JA 201 ; JA 212. Moreover, the “purpose of such pleading is to give the opposing party no tice

. . . and a chance to argue” its side of the issue. Blonder

- Tongue Lab s ., Inc. v. Univ

. of Illinois Found.

, 402 U.S. 313, 350 (1971). The Eleventh Circuit has held that “[w]hen a plaintiff has notice tha t an affirmative defense will be raised at trial, the defendant’s failure to comply with Rule 8(c) does not cause the plaintiff any prejudice.” Hassan v. U.S. Postal Serv. , 842 F.2d 260, 263 (warning against “hypertechn icality in pl eading requirements” and advising that courts “focus, instead, on enforc [ing] t he actual purpose of the rule”); a ccord Grant v. Preferred Research, Inc. , 885 F.2d 795, 797

- 98 (11th Cir. 1989) (no prejudice in allowing an affirmative defense to be raised fo r the first time in aPACIFIC COAST MARINE v. MALIBU BOATS , LLC 11

But at oral argument, Pacific Coast conceded that a patentee should not be able to assert infringement against a particular design that was abandoned during prosec ution for reasons of patentability

. Oral A rgument at 5: 14

- 5:30
, available at http://oralarguments.cafc.uscourts.gov/ default.aspx?fl=2013

- 1199.mp3

. This concession is well taken. T he same principles of public notice that underlie prosecution history estoppel apply to design patents as well as utility patents. P rosecution history estoppel in design patents promotes t he “clarity [that] is essential to promote pr o gress .” Festo , 535 U.S. at 730

. Refusing to apply the principles of prosecution history estoppel to design p a tents would undermine the “defin i tional and public

- notice functions of the statutory clai m ing requir ement.” Warner

- Jenkinson , 520 U.S. at 29. The fact that in design paten ts, unlike utility patents, the claimed scope is defined by drawings rather than la n guage does not argue against application of prosecution history estoppel princ iples here

. We conclude that the principles of prosecution history estoppel appl y to design pa tents as well as utility patents.

II
Having determined that the principles of prosecution history estoppel appl y to design patents, we consider whether those principles bar the infringement claim in this case. This turns on the answers to three questions: (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.

motion for summary judgment). In this case, we find no prejudice, and Pacific Coast alleges none, resulting from the district court ’s considering the issue at the summary judgment sta ge

.PACIFIC COAST MARINE v. MALIBU BOATS , LLC 12

A
As to the first, we conclude that there was a surrender of claim scope during prosecution. Here, i n determining the scope of the claimed design

, “[i]t is the drawings of the design patent that provide the description of the inve ntion.” In re Daniels , 144 F.3d 1452, 1456 ( Fed. Cir. 1998) (citing In re Klein

, 986 F.2d 1569, 1571 (Fed. Cir. 1993));

s ee also MPEP § 1503.1 ¶ 15.59(II) (8th ed. Rev. 9, Aug. 2012) (“[A] s a rule the illustration in the drawing views is its own best description

. ”) . F igures are required in design patent applications because they, not the textual claim, “constitute a comple te disclosure of the appearance of the design.” 37 C.F.R . § 1.152. In short, w hile we look prima rily to the word ing of the claims in utility patents for the purpose of prosecution history estoppel , we must look at the requisite drawings in design patents t o determine whether a surrender has occurred.
Here, i n response to the examiner’s restriction r equirement , the applicant amended the claim by cancelling figures associated with all but one of the patentably distinct groups of designs identified by the ex am iner

— the four

- hole embodimen t— and striking references to alte rnate configurations from the text. The PTO treated the
response as “an election without traverse” and withdrew the unelected designs from consideration. JA 394. Cons equently, the issued ’ 070 patent claimed only “[t]he orn amental design for a marine windshield, as shown and described ,” JA 170, in figures that all depicted four circ ular vent holes on the corner post. JA 170

- 74 . By cancelling figures showing corner posts with two holes and no ho les, the applicant surrendered such designs and conceded that the claim was limited to what the remaining figure showed— a windshield with four holes in the corner post

— and colorable imitations thereof.PACIFIC COAST MARINE v. MALIBU BOATS , LLC 13

It does not matter that the surrender involved the

ca ncellation of claims rather than amendment. In Honeywell Int ’l Inc. v. Hamilton Sundstrand , 370 F.3d 1131

, 1144 (Fed. Cir. 2004) (en banc) , we held that prosecution history estoppel is not limited to narrowing amendments, but extends as well to claim surre nder. See also Deering Precision Instruments, L.L.C. v. Vector Distrib

. Sys., Inc.

, 347 F.3d 1314, 1325 (Fed. Cir. 2003) (t he “ addition of [an] independent claim

. . . coupled with the clear surrender of the broader subject matter of the deleted original ind ependent claim” narrowed claim scope for prosecution history estoppel purposes ). By removing broad claim language referring to alternate configurations and cance lling the individual figures showing the unele cted embo diment s, the applicant narrowed the scope of his original application

, and surrendered subject matter.

B As to the second question, we conclude that claim scope was surrendered in order to secure the patent, as required by the Supreme Court’s decision in Festo . Here, the surrender was not made to avoid prior art but because of a restriction requirement under 35 U .S.C. § 121. Thus, the surrender was not made for reasons of patentability (for example, anticipation, obviousness, or patentable subject matter). However, the surrender was made to

s ecure the patent. In contrast to utility patents, “a design patent appl ication may only include a single claim.” MPEP § 1503.1 ¶ 15.61(III) (8th ed. Rev. 9, Aug. 2012) ; s ee also In re Rubinfield

, 207 F.2d 391, 396 ( CCPA 1959) (“We find no sound reason for disturbing the long

- standing practice of the Patent Office, embodied in Rule 153, which limits design applications to a single claim.”). In light of that requirement, if an application for a design patent includes more than one patentable design, the PTO m ust requirePACIFIC COAST MARINE v. MALIBU BOATS , LLC 14

the applicant to restrict his claims to a single inventive design under 35 U.S.C. § 121. Thus, in design patents, unlike utility patents, restriction requirements cannot be a mere matter of administrative convenience. Here, the examiner imposed a restriction requirement on the ground that the different drawings showed “patentably distinct groups of designs,” contravening the requirement that design patents must claim only one design. JA 386. The examiner identified the specific design groups and associated figures, giving the applica nt the option to elect
one group

. Pacific Coast argues, however, that only surrenders to avoid prior art are within the doctrine

. We think that the doctrine is broader than that. T he Court has held that “[e]stoppel arises when an amendment is made to secure the patent and the amendment narrows the patent’s
scope ,” expressly stating that “a narrowing amendment made to satisfy any requirement of the Patent Act may give rise to an estoppel.” Festo
, 535 U.S. at 736 (emphasis added)

. In Festo
, the Court explicitl y addressed, and rejected, arguments similar to those raised by Pacific Coast here, explaining that the rationale behind prosec ution history estoppel “does not cease simply because the narrowing amendment, submitt ed to secure a patent, was for some purpose other than avoiding prior art.” Id . at 736

. Here, we think that, in the design patent context, the surrender resulting from a restriction re quirement i nvokes prosecution history est oppel if the surrender was
necessary, as in Festo
, “to secure the patent.” Id. We express no opinion as to whether the same rule should apply with respect to utility patents, an issue not resolved by our prior cases. 5

5 See, e.g.

, Bayer Aktiengesellschaft v. Duphar I nt’l Research , 738 F.2d 1237, 1243 (Fed. Cir. 1984)PACIFIC COAST MARINE v. MALIBU BOATS , LLC 15

C The final question is whether the accused design is within the scope of the surrender. Prosecution history estoppel only bars an infringement claim if the accused design fell within the scope of the surrendered subject
matter. See Wang Labs

. , Inc. v. Mitsubishi Elecs

. Am

. , Inc.
, 103 F.3d 1571 , 15 78 (Fed. Cir. 1997) ( “ Once prosec ution history estoppel limits the scope of a patent, the patentee may not recover for infringement where i nfringement would require an equivalence between a claim element and an aspect of the accused item that falls within the estoppel .”)

. Determining the reach of prosec ution history estoppel thus “ requires an examination of the subject matter surrendered by the narrowing amen dment.” Festo , 535 U.S. at 737. Here, the surrendered designs included windshields with two holes on the corner post. T he district court held that after “[c]omparing the Defendants’ accused design with the patented design and the canceled embodiments, it is clear that t he accused design is within the territory between the original claim and the amended claim.” JA 10. Although the accused design had a three -hole config uration and the originally

- claimed design did not include a three

- hole configuration

, the court found that “ the a ccused des ign is still clearly within the ‘territory between the origi nal claim and the amended claim[,] ’” i.e. , between the claimed four

- hole embodiment and the surrendered
two

- hole embodiment. JA 12 (quoting Festo , 535 U.S. at 740).

Malibu Boats similarly argues that by abandoning a design with two holes and obtaining patents on designs

(“[L] imiting the claims because of a restriction requir ement, as occurred here, would not necessarily invoke file history estoppel

. ”).PACIFIC COAST MARINE v. MALIBU BOATS , LLC 16

with four holes and no holes, the applicant abandoned the range between four and zero. See Biagro Western Sales, Inc. v. Grow More Inc. , 423 F.3d 1296 , 1306

- 07 (Fed. Cir. 2005) (prosecution history estoppel barred infringement claim against accused fertilizer with sixty percent conce ntration of phosphorous

- containing salts where thirty to forty percent concentration limitation was added to p atent claim during pr osecution). However, this range concept does not work in the context of design patents where ranges are not claimed, but rather individual designs. Claiming diff erent designs does not necessarily suggest that the territory between those designs is also cla imed

. A s the defendant conceded during oral arg ument, the record does not show that the submitted figures claimed “a design . . . t hat has zero to four holes.” Oral argument at 32:01

- 32:10, available at http:// oralarguments.cafc.uscourts.gov/default.aspx?f l=20 13

- 1199.mp3

. The appl i cant surrendered the claimed design with two holes on the windshield corner post, but neither submitted nor surrendered any three

- hole design

. The record only r e flects the surrender of the two

- hole embod iment.

We note that the def endant here did not argue that the scope of the surrendered two

- hole embodiment e xtended to the three

- hole embodiment because the three

hole embodiment was not colorably different from the
two

- hole embodiment. A t oral argument, the defendant disclaimed the theory t hat the three

- hole design was a colorable imitation of the surrendered two

- hole embod iment. Under these circumstances, we need not decide whether the scope of the surrender is measured by the colorable imitation standard. Since the patentee here does not argue that the ac cused design was within the scope of the surrendered two

- hole embodiment

, no presumption of prosecution history estoppel could arise

. We hold that prosecution history estoppel principles do not bar PacificPACIFIC COAST MARINE v. MALIBU BOATS , LLC 17

Coast’s inf ringement claim , and remand for further proceedings. 6

REVERSED AND REMANDE D

6 In its motion for summary judgment, Malibu Boats raised other grounds for a finding of non

infringement. The district court did not reach these issues

, and neither do we.