Federal Circuit Holds Prosecution History Disclaimer Applicable to Design Patents

On June 17, 2025, the Federal Circuit reversed a jury’s finding that Top Brand LLC had infringed Cozy Comfort Company’s U.S. Patent No. D859,788 and trademarks. Top Brand LLC v. Cozy Comfort LLC, No. 2014-20191.  In a precedential decision, the Federal Circuit held the principle of prosecution history disclaimer applies to design patents.  The Federal Circuit noted that it had previously held in Pacific Coast Marine Wind-shields Ltd. v. Malibu Boats, LLC, 739 F.3d 694 (Fed. Cir. 2014) that disclaimer (surrender of subject matter) as a result of amendments made during prosecution of a design patent.   The Court found that a similar logic should apply to arguments made during prosecution of a design patent and concluded that “a patentee may surrender claim scope of a design patent by its representations to the Patent Office during prosecution.” 

Cozy Comfort’s design patent is directed to an “enlarged over-garment with an elevated marsupial pocket.” During prosecution, to gain allowance of the design, Cozy Comfort Company focused on specific features to distinguish its design from the prior art. Specifically, Cozy Comfort contended its design patent claimed a different pocket size and shape, armhole placement and hem slope than that of the prior art references cited by the Examiner.  When considering the issue of infringement in light of this prosecution history, the Federal Circuit found “multiple significant aspects of the accused products are the same ones Cozy Comfort disclaimed during prosecution, and they cannot be relied on to show design similarity between the accused and patented designs.”  Because Cozy Comfort only pointed to disclaimed features as being similar between Top Brand’s accused product and Cozy Comfort’s design, the Court found a “hypothetical ordinary observer” could not find infringement.  Consequently, the Court overturned the jury’s infringement finding and reversed the district court’s denial of judgement of no infringement as a matter of law.

The Court’s opinion can be found here.