Cooperation With a Restriction Requirement May Result in Disavowal of Claim Scope

FOCUS PRODUCTS GROUP INTERNATIONAL, LLC v. KARTRI SALES CO., INC.

Before Moore, Clevenger, and Chen. Appeal from United States District Court for the Southern District of New York

Summary: Repeatedly acquiescing to an examiner’s restriction requirement and characterization of the claims without objection may result in disavowal of claim scope.

Focus Products Group sued Marquis Mills and Kartri Sales for infringement of patents relating to hookless shower curtains that used rings to receive the shower rod, as well as for trademark and trade dress infringement. The district court granted summary judgment that Marquis’s and Kartri’s accused products—shower curtains having incorporated rings with flat upper edges—infringed the patents.

On appeal, Marquis argued that the district court erred because Focus disavowed during prosecution shower curtains incorporating rings with flat upper edges.  The Federal Circuit agreed.  As originally filed, the patents’ parent application contained claims covering several different types of shower curtain rings, including rings with flat upper edges.  The examiner characterized the claims as directed to patentably distinct species and issued a restriction requirement. Focus elected rings with an offset slit and/or new finger configurations and added new claims directed to that species, including a claim that recited a ring with a “flat upper edge.” However, the examiner stated that the “flat upper edge” claim was drawn to a non-elected species and was therefore withdrawn from consideration.  Focus did not dispute the examiner’s withdrawal of that claim and continued to prosecute the non-withdrawn claims.  In a notice of allowance, the examiner gave Focus a final chance to challenge the withdrawal of the “flat upper edge” claim, but Focus did not do so.  The Federal Circuit held that by cooperating with the examiner’s repeated demands to exclude rings with a flat upper edge, in keeping with the original restriction requirement, Focus made it clear that it accepted the narrowed claim scope.  Further, because there was no dispute that Marquis’s accused products included flat upper edges, the Federal Circuit reversed the summary judgment of infringement.

Notably, although both Marquis’s and Kartri’s accused products had flat-topped rings, the Federal Circuit only reversed the infringement judgment as to Marquis.  The two appellants originally filed separate, noncompliant briefs that incorporated arguments from one brief to the other.  Kartri’s brief focused on the trademark and trade dress issues while Marquis’s brief focused on the patent issues.  After the Federal Circuit struck the noncompliant briefs, Kartri and Marquis refiled their briefs with the incorporation-by-reference statements deleted.  After closely reviewing the refiled briefs, the Federal Circuit held that Kartri waived its patent non-infringement arguments, as its treatment of the patent issue was too conclusory.

Editor: Sean Murray