United States Court of Appeals 

for the Federal Circuit ______________________ 

ADVANTEK MARKETING, INC.,

Plaintiff-Appellant

v.

SHANGHAI WALK-LONG TOOLS CO., LTD., 

NEOCRAFT TOOLS CO., LTD.,

Defendants-Appellees

ORION FACTORY DIRECT, DOES 1-10, 

INCLUSIVE,

Defendants

______________________ 

2017-1314 

______________________ 

Appeal from the United States District Court for the 

Central District of California in No. 2:16-cv-03061-RFFM, Judge Manuel L. Real. 

______________________ 

Decided: August 1, 2018 

______________________ 

 KEITH JOSEPH WESLEY, Browne George Ross LLP, Los 

Angeles, CA, argued for plaintiff-appellant. Also represented by BRIAN FITZGERALD, JAYE GERRARD HEYBL, Koppel 

Patrick Heybl & Philpott, Westlake Village, CA; K.

ANDREW KENT, Rincon Venture Law Group, Westlake 

Village, CA. 
2 ADVANTEK MKTG., INC. v. SHANGHAI WALK-LONG TOOLS CO. 

PERRY GOLDBERG, Progress LLP, Los Angeles, CA, 

argued for defendants-appellees. 

______________________ 

Before NEWMAN, CLEVENGER, and CHEN, Circuit Judges. 

NEWMAN, Circuit Judge.

Advantek Marketing, Inc. is the owner of design patent No. D715,006 (“the D’006 patent”) for a portable 

animal kennel that Advantek sells with the mark “Pet 

Gazebo.” Advantek states that the Pet Gazebo is its 

“flagship product,” that it has received awards and been 

successful commercially, for “[i]t provided a great solution 

for pet owners who wanted to take their pets with them, 

whether to a friend’s house, on vacation, or simply out to 

the backyard.” Appellant’s Br. at 2. 

Advantek sued its former manufacturer, Shanghai 

Walk-Long Tools Co., together with Advantek’s former 

vice president and others (collectively, “Walk-Long”), for 

patent infringement, breach of contract, and aiding and 

abetting breach of fiduciary duty. The complaint alleged 

that Walk-Long copied the Pet Gazebo and infringed the 

D’006 patent with their device called the “Pet Companion.” The district court granted Walk-Long’s motion for 

judgment on the pleadings under Federal Rule of Civil 

Procedure 12(c), holding that prosecution history estoppel 

bars Advantek from enforcing the D’006 patent against 

the Pet Companion. Final judgment was entered after 

the parties stipulated to dismissal of the non-patent 

counts.1

 

1 Advantek Mktg., Inc. v. Shanghai Walk-Long 

Tools Co., No. CV 16-3061-R, 2016 WL 9178079 (C.D. Cal. 

Nov. 3, 2016) (“Dist. Ct. Op.”). 
ADVANTEK MKTG., INC. v. SHANGHAI WALK-LONG TOOLS CO. 3

We conclude that prosecution history estoppel does 

not preclude enforcement of the D’006 patent against the 

accused kennel. The judgment is reversed, and the case is 

remanded for further proceedings. 

BACKGROUND

The D’006 design application was filed with five photographs as figures. The examiner objected to the photographs as unclear, J.A. 186, and also issued a restriction 

requirement as between the first four figures (designated 

as Group I) and all five figures (designated as Group II). 

Following are Figures 1–4 as redrawn for Group I, and 

Figure 5 as the photograph in non-elected Group II: 

Figure 1 from D’006 

 

Figure 2 from D’006 
 4 ADVANTEK MKTG., INC. v. SHANGHAI WALK-LONG TOOLS CO. 

Figure 3 from D’006 Figure 4 from D’006

Figure 5 from Application 

The application described these Figures as follows: 

Fig. 1 is a top perspective view showing our new 

kennel design; 

Fig. 2 is a side view thereof; 

Fig. 3 is bottom view thereof; 

Fig. 4 is a top view thereof; and 

Fig. 5 is top perspective view thereof with a cover 

according to another embodiment. 
ADVANTEK MKTG., INC. v. SHANGHAI WALK-LONG TOOLS CO. 5

Note that the embodiment of Fig. 5 is identical to 

the design shown in Figs. 1–4 except a cover is included to cover the kennel. As such Figs. 1–4 may 

be used as part of the design of Fig. 5 by including 

the cover of Fig. 5 into the views in Figs. 1–4. 

J.A. 204. 

On September 12, 2012, the patent examiner issued a 

requirement for restriction, as follows: 

This application discloses the following embodiments: 

Embodiment 1—Figs. 1–4 drawn to a kennel 

without a cover. 

Embodiment 2—Figs. 1–5 drawn to a kennel with 

a cover. 

Restriction to one of the following inventions is 

required under 35 U.S.C. 121: 

Group I—Embodiment 1. 

Group II—Embodiment 2. 

The designs as grouped are distinct from each 

other since under the law a design patent covers 

only the invention disclosed as an entirety, and 

does not extend to patentably distinct segregable 

parts; the only way to protect such segregable 

parts is to apply for separate patents. See Ex 

parte Sanford, 1914 CD 69; 204 OG 1346 (Comm’r 

Pat. 1914); and Blumcraft of Pittsburgh v. Ladd,

238 F. Supp. 648, 144 USPQ 562 (D.D.C. 1965). It 

is further noted that patentably distinct combination/subcombination subject matter must be supported by separate claims, whereas only a single 

claim is permissible in a design patent application. See In re Rubinfield, 270 F.2d 391, 123 

USPQ 210 (CCPA 1959). 
6 ADVANTEK MKTG., INC. v. SHANGHAI WALK-LONG TOOLS CO. 

Because the designs are distinct for the reason(s) 

given above, and have acquired separate status in 

the art, restriction for examination purposes as 

indicated is proper (35 U.S.C. 121). 

A reply to this requirement must include an election of a single group for prosecution on the merits, even if this requirement is traversed. 37 CFR 

1.143. Any reply that does not include an election 

of a single group will be held nonresponsive. 

J.A. 181. Advantek elected Group I, stating: 

Although applicants respectfully disagree with the 

Restriction Requirement, Group I, including corresponding Embodiment 1 and Figs. 1–4 drawn to 

a gazebo without a cover, is elected for further 

prosecution in this application. Accordingly, Fig. 

5 has been withdrawn. 

J.A. 155. The D’006 patent was duly granted with Figures 1–4. 

Advantek filed suit against Walk-Long for design patent infringement in the U.S. District Court for the Central District of California on May 4, 2016. In response to 

Advantek’s complaint, Walk-Long moved for judgment 

under Rule 12(c), arguing that, since the Pet Companion 

includes a cover, prosecution history estoppel bars infringement. The complaint included the following picture: 
ADVANTEK MKTG., INC. v. SHANGHAI WALK-LONG TOOLS CO. 7

J.A. 24. Walk-Long stated in its motion that Advantek 

had “intentionally surrendered patent claim scope that 

would have included gazebos with a cover in response to a 

restriction requirement, thereby limiting the scope of the 

‘006 Patent to gazebos without a cover.” J.A. 45. 

The district court granted the motion and dismissed 

the complaint, stating that Advantek had “surrender[ed] 

the proposed kennel with a cover . . . to secure a patent” 

by “choosing one of two drawings in response to a restriction requirement.” Dist. Ct. Op. at 2. We review the 

dismissal without deference, see, e.g., Peterson v. California, 604 F.3d 1166, 1169 (9th Cir. 2010), and “accept all 

material allegations in the complaint as true and construe 

them in the light most favorable to [the non-moving 

party].’’ Deveraturda v. Globe Aviation Sec. Servs., 454 

F.3d 1043, 1046 (9th Cir. 2006) (quoting Turner v. Cook,

362 F.3d 1219, 1225 (9th Cir. 2004) (alterations in original)); see Info-Hold, Inc. v. Muzak LLC, 783 F.3d 1365, 

1371 (Fed. Cir. 2015) (applying law of the regional circuit 

“[f]or issues not unique to patent law,” such as procedural 

issues). 
8 ADVANTEK MKTG., INC. v. SHANGHAI WALK-LONG TOOLS CO. 

DISCUSSION

Design patents are for an “original and ornamental 

design for an article of manufacture.” 35 U.S.C. § 171. 

“The rules relating to applications for patents for other 

inventions or discoveries are also applicable to applications for patents for designs except as otherwise provided.” 37 C.F.R. § 1.151. An exception is that only one 

claim is permitted in a design patent. 37 C.F.R. § 1.153–

1.154. This rule was the basis for the examiner’s requirement for restriction. 

In concluding that prosecution history estoppel barred 

Advantek’s infringement claims, the district court relied 

on our decision in Pacific Coast Marine Windshields Ltd. 

v. Malibu Boats, LLC, 739 F.3d 694 (Fed. Cir. 2014). In 

Pacific Coast, we held that prosecution history estoppel in 

a design patent case depends on: “(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.” Id. at 702. 

On appeal, Advantek focuses on the third prong of the 

Pacific Coast test and argues that Walk-Long’s accused 

design falls outside any claim scope Advantek purportedly 

surrendered during prosecution. Appellant’s Br. at 14. 

Advantek argues that its elected design is the “skeletal 

structure design,” and that this design is present in the 

accused kennel, with or without a cover. Advantek states 

that the accused kennel as shipped, assembled, and used, 

does not have a cover unless or until a cover is placed on 

the kennel. Advantek further states that the requirements of prosecution history estoppel are not met because 

Advantek’s election during prosecution broadened its 

ability to prevent infringement of its skeletal design, 

whether the skeleton was used alone or in combination 

with other parts. Appellant’s Br. at 18. 
ADVANTEK MKTG., INC. v. SHANGHAI WALK-LONG TOOLS CO. 9

In Samsung Electronics Co. v. Apple Inc., 137 S. Ct. 

429 (2016), the Court reaffirmed that a design patent may 

be for a component of a product, stating:

[T]he term “article of manufacture” is broad 

enough to encompass both a product sold to a consumer as well as a component of that product. A 

component of a product, no less than the product 

itself, is a thing made by hand or machine. That a 

component may be integrated into a larger product, in other words, does not put it outside the 

category of articles of manufacture. 

Id. at 435. The Samsung Court cited the classical statement of design patent law in Gorham Manufacturing Co. 

v. White, 81 U.S. 511 (1872), where the Court considered 

“a new design for the handles of tablespoons and forks,” 

and held that the patent was infringed based on the 

design of the components (the handles) alone. Gorham, 

81 U.S. at 528. The Gorham Court stated that “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. 

In Samsung, the Court reiterated that “[t]he Patent 

Office and the courts have understood § 171 to permit a 

design patent for a design extending to only a component 

of a multicomponent product.” Samsung, 137 S. Ct. at 

435 (citing Ex parte Adams, 84 Off. Gaz. Pat. Office 311 

(1898)); see In re Rubinfield, 270 F.2d 391, 393, 395 

(CCPA 1959) (discussing the practice of limiting a design 

patent to a single embodiment, and stating that “a design 

patent may be infringed by articles which are specifically 

different from that shown in the patent.”). Our predecessor court has similarly stated: 
10 ADVANTEK MKTG., INC. v. SHANGHAI WALK-LONG TOOLS CO. 

Section 171 authorizes patents on ornamental designs for articles of manufacture. While the design must be embodied in some articles, the 

statute is not limited to designs for complete articles, or ‘discrete’ articles, and certainly not to articles separately sold . . . . 

Appl. of Zahn, 617 F.2d 261, 268 (CCPA 1980). 

Advantek stresses that the accused kennel’s structure 

is the same as shown in the D’006 patent, whether or not 

a cover is present. Advantek states that it elected the 

broader scope of the kennel structure design, that is, 

unlimited by the presence of a cover, and that prosecution 

history estoppel does not arise, for “[e]stoppel arises when 

an amendment is made to secure the patent and the 

amendment narrows the patent’s scope.” Festo Corp. v. 

Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 736 

(2002). 

Regardless of whether Advantek surrendered claim 

scope during prosecution, the accused product falls outside the scope of the purported surrender, contrary to the 

district court’s conclusion. Advantek elected to patent the 

ornamental design for a kennel with a particular skeletal 

structure. A competitor who sells a kennel embodying 

Advantek’s patented structural design infringes the D’006 

patent, regardless of extra features, such as a cover, that 

the competitor might add to its kennel.2 Construed in the 

light most favorable to Advantek, the complaint can be 

read to accuse the skeletal structure of Walk-Long’s Pet 

Companion. The complaint alleges that Walk-Long 

 

2 Of course, if the accused skeletal structure is only 

a component of an accused multicomponent product, 

Advantek would only be able to seek damages based on 

the value of the component, not the product as a whole. 

See Samsung, 137 S. Ct. at 434–35. 
ADVANTEK MKTG., INC. v. SHANGHAI WALK-LONG TOOLS CO. 11

infringes the D’006 patent “by making, using, offering for 

sale, and/or selling the patented design without the 

authority of Advantek,” and by “making, using, selling, 

offering for sale or importing the Accused Product.” J.A. 

25. Although Walk-Long argues that it was uncertain as 

to what was being accused of infringement, if clarification 

was needed, the district court should have granted Advantek leave to file an amended complaint. Under Ninth 

Circuit procedural law, “[a] simple denial of leave to 

amend without any explanation by the district court is 

subject to reversal.” Sharkey v. O’Neal, 778 F.3d 767, 774 

(9th Cir. 2015) (quoting Eminence Capital, LLC v. Aspeon, 

Inc., 316 F.3d 1048, 1052 (9th Cir. 2003)). 

CONCLUSION

We conclude that Advantek is not estopped by the 

prosecution history from asserting the D’006 patent 

against Walk-Long and its Pet Companion. The dismissal 

under Rule 12(c) is reversed. We remand for further 

proceedings. 

REVERSED AND REMANDED