“What You Say Can and Will Be Used Against Your Patent” Says Federal Circuit in New Opinion

Last week, the Federal Circuit issued its decision in Top Brand LLC v. Cozy Comfort Company LLC, clarifying the application of prosecution history disclaimer in the context of design patents. This alert summarizes the procedural history, the Court’s opinion and key takeaways for patent practitioners.

This decision marks a significant development in design patent law, particularly in how prosecution history can limit claim scope. Patent owners and practitioners are reminded to:

• Be cautious during prosecution: Statements made to overcome prior art may later be used to narrow the scope of the design patent.
• Document disclaimers clearly: Ensure that any disclaimers or amendments are well-supported and consistent with the intended scope of protection.
• Consider the visual impact: Since design patents are judged by visual similarity, any surrendered features should be clearly distinguishable in the drawings and prosecution record.

Top Brand and Cozy Comfort are competitors in the market for oversized hooded sweatshirts. Cozy Comfort owns U.S. Design Patent No. D859,788 (the “D788 patent”) and two trademarks for “THE COMFY.” The D788 patent (left) and the Top Brand accused product (right) are shown below.

                    

Top Brand filed suit seeking a declaratory judgment of noninfringement, while Cozy Comfort counterclaimed for infringement of both the design patent and the trademarks. A jury at the district court found in favor of Cozy Comfort, awarding $15.4 million for design patent infringement and $3.08 million for trademark infringement. The district court denied Top Brand’s motion for judgment as a matter of law (JMOL), and Top Brand appealed.

On appeal, the Federal Circuit reversed the district court’s denial of JMOL. The Court held that:

• Prosecution history disclaimers apply to design patents, just as they do utility patents.
• The accused product fell within the scope of subject matter explicitly surrendered during prosecution of the D788 patent.
• The jury’s verdict on trademark infringement was not supported by substantial evidence.

With respect to the Court’s findings on the prosecution history disclaimer issue, the Court concluded that “[w]e see no reason to distinguish between disclaimer by amendment and disclaimer by argument and conclude that a patentee may surrender claim scope of a design patent by its representations to the Patent Office during prosecution.” During prosecution of the application resulting in the D788 patent, Cozy Comfort presented arguments distinguishing the claimed design over the prior art White design. The White design (left) and an annotated figure of the D788 patent (right) are shown below.

                                          

The arguments presented by Cozy Comfort during prosecution focused on:

• The shape of the pocket having a square-like shape as compared to the more angular and trapezoidal pocket in the White design.
• The width of the pocket being substantially less than the width of the sweater as compared to the larger width of the pocket in the White design.
• The bottom of the arm holes being below the top of the pocket as compared to the arm holes in the White design being entirely above the pocket.
• The bottom hem line curving upward as compared to the bottom hem line in the White design curving downward.

By making these arguments during prosecution, the Court concluded that Cozy Comfort surrendered claim scope with respect to these features.

As multiple significant aspects of the Top Brand product are the same ones Cozy Comfort disclaimed during prosecution, those features cannot be relied on to show design similarity. Cozy Comfort pointed to no other similar features that were not disclaimed during prosecution in arguing for patent infringement. As a result, the Court found in favor of Top Brand on the design patent claims.

With respect to the trademark claims, the evidence indicated that Top Brand merely referred to “comfy” on its website as a descriptor rather than using the mark as a source identifier. The Court held that use of only the descriptive adjective “comfy” to describe a blanket or sweatshirt product is not actionable trademark infringement. As such, the Court found in favor of Top Brand on the trademark claims as well.

Given the Court’s clear stance, patent practitioners and patent owners should proactively assess how prosecution statements may limit future enforcement. Tailoring prosecution strategies with this in mind can help preserve the intended scope of protection.

If you have questions about this case or if you would like to discuss strategies for patent prosecution, portfolio management or litigation, please contact the author of this legal alert or another Dinsmore intellectual property attorney.