from the United States District Court for the Central
District of California in No. 2:16-cv-03061-R-FFM, Judge
Manuel L. Real.
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.
Goldberg, Progress LLP, Los Angeles, CA, argued for
Newman, Clevenger, and Chen, Circuit Judges.
Newman, Circuit Judge.
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.
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
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.
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:
ADVANTEK MKTG., INC. v. SHANGHAI WALK-LONG TOOLS CO.
application described these Figures as follows:
Fig. 1 is a top perspective view showing our new kennel