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 District Court for the 

Middle District of Florida in No. 12-CV-0033, Judge John 

Antoon, II.

______________________ 

Decided: January 8, 2014

______________________ 

ROBERT E. ROHDE, Rohde & Van Kampen, PLLC, of 

Seattle, Washington, argued for plaintiff-appellant. 
2 PACIFIC COAST MARINE v. MALIBU BOATS, LLC

DARIN W. SNYDER, O’Melveny & Myers LLP, of San 

Francisco, California, argued for all defendants-appellees. 

With him on the brief for defendants-appellees, Malibu 

Boats, LLC, et al., were BRIAN BERLINER and STEVEN 

BASILEO, of Los Angeles, California; and JONATHAN D.

HACKER and DEANNA M. RICE, of Washington, DC. On the 

brief for defendants-appellees, Marine Hardware, Inc., et 

al., were MARK P. WALTERS and DARIO A. MACHLEIDT, 

Frommer Lawrence & Haug, LLP, of Seattle, Washington, 

for 

______________________ 

Before DYK, MAYER, and CHEN, Circuit Judges.

DYK, Circuit Judge. 

Pacific Coast Marine Windshields Limited (“Pacific 

Coast”) is the assignee of all rights in U.S. Patent No. 

D555,070 (“the ’070 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 District of Florida, alleging 

infringement. The district court granted Malibu Boats’ 

motion for summary 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 apply to 

design patents, but reverse the district court’s summary 

judgment of non-infringement because the accused infringing design was not within the scope of the subject 

matter surrendered during prosecution, and remand for 

further proceedings.

BACKGROUND

Darren A. Bach, the owner and chief executive officer 

of Pacific Coast, filed a design patent application on April 

27, 2006, claiming an “ornamental design of a marine 
PACIFIC 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 described.” JA 361 

(emphasis removed). The accompanying figures depicted

various embodiments of the claimed 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 representative of the various embodiments.

 

 

 

 

JA 362, 366-71. 

The examiner determined that the multiple embodiments represented five “patentably distinct groups of 

designs” and issued a restriction requirement, identifying 
4 PACIFIC COAST MARINE v. MALIBU BOATS, LLC

the five distinct groups of designs as windshields with: (1) 

four circular holes and a hatch (figure 1); (2) four circular 

or square holes 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 

single group for the pending application although the 

applicant was entitled to file additional applications for 

each of the remaining groups. 

In response, the applicant elected “Group I, Embodiment 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.” JA 390 (emphases 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 November 13, 2007. As 

issued, the ’070 patent claims “[t]he ornamental design 

for a marine windshield, as shown and described.” JA 170. 

Figures 1-6 show alternate views of the four-hole embodiment. 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 ’070 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, 256 (1891) (“Whether a transfer of a partic-

 
PACIFIC COAST MARINE v. MALIBU BOATS, LLC 5

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

originally-filed application, but did not file another divisional application with respect to any of the other embodiments. See U.S. Patent No. D569,782.

In 2011, Pacific Coast brought suit in the Middle District of Florida, alleging, inter alia, that Malibu Boats 

manufactured and sold boat windshields 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 windshield with three 

trapezoidal holes on the corner post, as shown below. 

JA 11. 

ular right or interest under a patent is an assignment or a 

license does not depend upon the name by which it calls 

itself, but upon the legal effect of its provisions.”) (emphasis removed); Alfred E. Mann Found. for Sci. Research v. 

Cochlear Corp., 604 F.3d 1354, 1359 (Fed. Cir. 2010) (“[A] 

patent owner may grant an exclusive license to his patents 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.”) (citing Vaupel Textilmaschinen v. Meccanica Euro Italia S.P.A., 944 F.2d 870, 

873-74 (Fed. Cir. 1991)).

 
6 PACIFIC COAST MARINE v. MALIBU BOATS, LLC

The district court granted Malibu Boats’ motion for 

partial summary judgment of non-infringement on the 

grounds of prosecution history estoppel. The district court 

found that, during prosecution, the applicant had surrendered 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, the court recognized that “the 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 of prosecution history estoppel. The court entered a judgment of 

non-infringement based on the finding of prosecution 

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 prosecution history estoppel precludes a patentee from 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., 350 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

DISCUSSION

I

Although treatises2 and district court decisions going 

back to 18893 have recognized that the concept of prosecution 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 estoppel is well established for utility patents. Utility patents may be 

infringed both literally and under the doctrine of equivalents. For doctrine of equivalents purposes, the accused 

and claimed elements are equivalent if there are only 

“insubstantial differences” between them. WarnerJenkinson 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 restriction among a plurality of embodiments proffered to 

the Office in a single design applica[]tion, courts have 

held that the patentee is estopped from asserting that an 

accused design which corresponds to a nonelected embodiment 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 & Co. 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).

 
8 PACIFIC COAST MARINE v. MALIBU BOATS, LLC

(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, 612 (1950)

(finding equivalence when the “changes which avoid 

literal infringement are colorable only”).

With respect to utility patents, prosecution history estoppel limits a patentee’s ability to recover under the 

doctrine of equivalents, but does not limit literal infringement. 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 equivalents, when applied broadly, conflicts with the definitional and public-notice functions of the statutory 

claiming requirement.” Warner-Jenkinson, 520 U.S. at 29; 

see also Festo, 535 U.S. at 731 (“A patent holder should 

know what he owns, and the public should know what he 

does not.”). Consequently, prosecution history estoppel 

limits the bounds of what a patentee can claim as equivalent by “requir[ing] that the claims of a patent be interpreted 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, prosecution 

history estoppel prevents the patentee from “recaptur[ing]

in an infringement action the very subject matter surrendered as a condition of receiving the patent.” Id. at 734. 

For design patents, the concepts of literal infringement and equivalents infringement are intertwined. 

Unlike the provisions defining infringement of a utility 

patent, the statutory provision on design patent infringement does not require literal 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 manufacture to 
PACIFIC COAST MARINE v. MALIBU BOATS, LLC 9

which such design or colorable imitation has been applied . . . .” 35 U.S.C. § 289 (emphases 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 attention 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 one patented is infringed by the other. 

Id. at 528. The Court explained that, if the test for infringement 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, that an expert could not distinguish 

them.” Id. at 527; see also Braun Inc. v. Dynamics Corp. of 

Am., 975 F.2d 815, 820 (Fed. Cir. 1992) (“[P]atent infringement can be found for a design that is not identical 

to the patented design.”).

Thus, the 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 the claimed and accused designs, “‘inducing him 

to purchase one supposing it to be the other.’” Egyptian 

Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 683 (Fed. Cir. 

2008) (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. Although “the way/function/result test . . . is not directly 

transferable to design patents, it has long been recognized 

that the principles of equivalency are applicable.” Lee v. 
10 PACIFIC COAST MARINE v. MALIBU BOATS, LLC

Dayton-Hudson Corp., 838 F.2d 1186, 1189 (Fed. Cir. 

1988); see also Chisum on Patents § 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 equivalents.’”). Indeed, Pacific Coast characterized the substantial 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 design patents at all.4

4 Pacific Coast also argued that the defendant here

was foreclosed from 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 Federal Rules of Civil 

Procedure. Assuming arguendo that prosecution history 

estoppel is an affirmative defense, the doctrine was adequately pled in the defendants’ answers, which stated, 

“[p]laintiff’s claims are barred in whole or in-part by the 

doctrine[] of . . . estoppel . . . .” JA 228; see JA 181; JA 191;

JA 201; JA 212. Moreover, the “purpose of such pleading 

is to give the opposing party notice . . . and a chance to 

argue” its side of the issue. Blonder-Tongue Labs., Inc. v. 

Univ. of Illinois Found., 402 U.S. 313, 350 (1971). The 

Eleventh Circuit has held that “[w]hen a plaintiff has 

notice that 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 “hypertechnicality in pleading requirements” and advising that courts 

“focus, instead, on enforc[ing] the actual purpose of the 

rule”); accord Grant v. Preferred Research, Inc., 885 F.2d 

795, 797-98 (11th Cir. 1989) (no prejudice in allowing an 

affirmative defense to be raised for the first time in a 

 
PACIFIC 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 prosecution for reasons of patentability. Oral Argument at 5:14-

5:30, available at http://oralarguments.cafc.uscourts.gov/

default.aspx?fl=2013-1199.mp3. This concession is well 

taken. The same principles of public notice that underlie

prosecution history estoppel apply to design patents as 

well as utility patents. Prosecution history estoppel in 

design patents promotes the “clarity [that] is essential to 

promote progress.” Festo, 535 U.S. at 730. Refusing to 

apply the principles of prosecution history estoppel to 

design patents would undermine the “definitional and 

public-notice functions of the statutory claiming requirement.” Warner-Jenkinson, 520 U.S. at 29. The fact that in 

design patents, unlike utility patents, the claimed scope is 

defined by drawings rather than language does not argue 

against application of prosecution history estoppel principles here. We conclude that the principles of prosecution 

history estoppel apply to design patents as well as utility 

patents. 

II

Having determined that the principles of prosecution 

history estoppel apply 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 stage. 

 
12 PACIFIC COAST MARINE v. MALIBU BOATS, LLC

A 

As to the first, we conclude that there was a surrender

of claim scope during prosecution. Here, in determining 

the scope of the claimed design, “[i]t is the drawings of the 

design patent that provide the description of the invention.” In re Daniels, 144 F.3d 1452, 1456 (Fed. Cir. 1998) 

(citing In re Klein, 986 F.2d 1569, 1571 (Fed. Cir. 1993));

see 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.”). Figures are required in design 

patent applications because they, not the textual claim, 

“constitute a complete disclosure of the appearance of the 

design.” 37 C.F.R. § 1.152. In short, while we look primarily to the wording of the claims in utility patents for the 

purpose of prosecution history estoppel, we must look at 

the requisite drawings in design patents to determine 

whether a surrender has occurred.

Here, in response to the examiner’s restriction requirement, the applicant amended the claim by cancelling 

figures associated with all but one of the patentably 

distinct groups of designs identified by the examiner—the 

four-hole embodiment—and striking references to alternate configurations from the text. The PTO treated the 

response as “an election without traverse” and withdrew 

the unelected designs from consideration. JA 394. Consequently, the issued ’070 patent claimed only “[t]he ornamental design for a marine windshield, as shown and 

described,” JA 170, in figures that all depicted four circular vent holes on the corner post. JA 170-74. By cancelling 

figures showing corner posts with two holes and no holes,

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 

cancellation 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 surrender. See also Deering 

Precision Instruments, L.L.C. v. Vector Distrib. Sys., Inc., 

347 F.3d 1314, 1325 (Fed. Cir. 2003) (the “addition of [an] 

independent claim . . . coupled with the clear surrender of 

the broader subject matter of the deleted original independent claim” narrowed claim scope for prosecution 

history estoppel purposes). By removing broad claim 

language referring to alternate configurations and cancelling the individual figures showing the unelected embodiments, 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 

secure the patent.

In contrast to utility patents, “a design patent application may only include a single claim.” MPEP § 1503.1 

¶ 15.61(III) (8th ed. Rev. 9, Aug. 2012); see 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 must require 
14 PACIFIC COAST MARINE v. MALIBU BOATS, LLC

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 applicant 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. The 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 explicitly addressed, and 

rejected, arguments similar to those raised by Pacific 

Coast here, explaining that the rationale behind prosecution history estoppel “does not cease simply because the 

narrowing amendment, submitted 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 requirement invokes prosecution history estoppel 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 Int’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, 1578 (Fed. Cir. 1997) (“Once prosecution history estoppel limits the scope of a patent, the 

patentee may not recover for infringement where infringement would require an equivalence between a claim 

element and an aspect of the accused item that falls 

within the estoppel.”). Determining the reach of prosecution history estoppel thus “requires an examination of the 

subject matter surrendered by the narrowing amendment.” Festo, 535 U.S. at 737. 

Here, the surrendered designs included windshields 

with two holes on the corner post. The district court held

that after “[c]omparing the Defendants’ accused design 

with the patented design and the canceled embodiments, 

it is clear that the accused design is within the territory 

between the original claim and the amended claim.” JA 

10. Although the accused design had a three-hole configuration and the originally-claimed design did not include a 

three-hole configuration, the court found that “the accused design is still clearly within the ‘territory between 

the original 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 requirement, as occurred here, would not necessarily invoke file 

history estoppel.”).

 
16 PACIFIC COAST MARINE v. MALIBU BOATS, LLC

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 concentration of phosphorous-containing salts where thirty to 

forty percent concentration limitation was added to patent claim during prosecution). However, this range 

concept does not work in the context of design patents 

where ranges are not claimed, but rather individual 

designs. Claiming different designs does not necessarily 

suggest that the territory between those designs is also 

claimed. As the defendant conceded during oral argument, the record does not show that the submitted figures 

claimed “a design . . . that has zero to four holes.” Oral 

argument at 32:01-32:10, available at

http://oralarguments.cafc.uscourts.gov/default.aspx?fl=20

13-1199.mp3. The applicant surrendered the claimed 

design with two holes on the windshield corner post, but 

neither submitted nor surrendered any three-hole design. 

The record only reflects the surrender of the two-hole 

embodiment.

We note that the defendant here did not argue that 

the scope of the surrendered two-hole embodiment extended to the three-hole embodiment because the threehole embodiment was not colorably different from the 

two-hole embodiment. At oral argument, the defendant

disclaimed the theory that the three-hole design was a 

colorable imitation of the surrendered two-hole embodiment. 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 accused 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 Pacific 
PACIFIC COAST MARINE v. MALIBU BOATS, LLC 17

Coast’s infringement claim, and remand for further 

proceedings.6

REVERSED AND REMANDED 

6 In its motion for summary judgment, Malibu 

Boats raised other grounds for a finding of noninfringement. The district court did not reach these 

issues, and neither do we.