  United States Court of Appeals
      for the Federal Circuit
                ______________________

     PACIFIC COAST MARINE WINDSHIELDS
                   LIMITED,
               Plaintiff-Appellant,

                           v.

  MALIBU BOATS, LLC, AND TRESSMARK, INC.,
    doing business as Liquid Sports Marine,
              Defendants-Appellees,

                         AND

 MARINE HARDWARE, INC., MH WINDOWS, LLC,
            AND JOHN F. PUGH,
            Defendants-Appellees.
           ______________________

                      2013-1199
                ______________________

   Appeal from the United States District Court for the
Middle District of Florida in No. 12-CV-0033, Judge John
Antoon, II.
                 ______________________

               Decided: January 8, 2014
                ______________________


   ROBERT E. ROHDE, Rohde & Van Kampen, PLLC, of
Seattle, Washington, argued for plaintiff-appellant.
2                 PACIFIC COAST MARINE   v. MALIBU BOATS, LLC



     DARIN W. SNYDER, O’Melveny & Myers LLP, of San
Francisco, California, argued for all defendants-appellees.
With him on the brief for defendants-appellees, Malibu
Boats, LLC, et al., were BRIAN BERLINER and STEVEN
BASILEO, of Los Angeles, California; and JONATHAN D.
HACKER and DEANNA M. RICE, of Washington, DC. On the
brief for defendants-appellees, Marine Hardware, Inc., et
al., were MARK P. WALTERS and DARIO A. MACHLEIDT,
Frommer Lawrence & Haug, LLP, of Seattle, Washington,
for
                 ______________________

     Before DYK, MAYER, and CHEN, Circuit Judges.
DYK, Circuit Judge.
    Pacific Coast Marine Windshields Limited (“Pacific
Coast”) is the assignee of all rights in U.S. Patent No.
D555,070 (“the ’070 patent”) for an ornamental boat
windshield design. Pacific Coast brought suit against
Malibu Boats, LLC, Marine Hardware, Inc., Tressmark,
Inc., MH Windows, LLC, and John F. Pugh (collectively
“Malibu Boats”) in the Middle District of Florida, alleging
infringement. The district court granted Malibu Boats’
motion for summary judgment of non-infringement,
finding that prosecution history estoppel barred the
infringement claim. Pacific Coast appeals. We hold that
the principles of prosecution history estoppel apply to
design patents, but reverse the district court’s summary
judgment of non-infringement because the accused in-
fringing design was not within the scope of the subject
matter surrendered during prosecution, and remand for
further proceedings.
                       BACKGROUND
    Darren A. Bach, the owner and chief executive officer
of Pacific Coast, filed a design patent application on April
27, 2006, claiming an “ornamental design of a marine
PACIFIC COAST MARINE   v. MALIBU BOATS, LLC             3



windshield with a frame, a tapered corner post with vent
holes and without said vent holes, and with a hatch and
without said hatch, as shown and described.” JA 361
(emphasis removed). The accompanying figures depicted
various embodiments of the claimed design with different
vent hole configurations. The drawings also showed
designs that included and excluded a hatch on the front of
the windshield. Shown below are submitted figures repre-
sentative of the various embodiments.




JA 362, 366-71.
    The examiner determined that the multiple embodi-
ments represented five “patentably distinct groups of
designs” and issued a restriction requirement, identifying
4                 PACIFIC COAST MARINE   v. MALIBU BOATS, LLC



the five distinct groups of designs as windshields with: (1)
four circular holes and a hatch (figure 1); (2) four circular
or square holes and no hatch (figures 7 & 12); (3) no holes
and a hatch (figure 8); (4) no holes and no hatch (figure 9);
and (5) two oval or rectangular holes and a hatch (figures
10 & 11). JA 386. The applicant was required to elect a
single group for the pending application although the
applicant was entitled to file additional applications for
each of the remaining groups.
    In response, the applicant elected “Group I, Embodi-
ment 1,” corresponding to figure 1 above, depicting four
vent holes and a hatch. JA 392. He amended the claim to
recite “the ornamental design of a marine windshield with
a frame, and a pair of tapered corner posts[,]” removing
the original claim language stating “with vent holes and
without said vent holes, and with a hatch and without
said hatch.” JA 390 (emphases removed). The applicant
also cancelled figures 7-12, leaving only the embodiment
with four circular holes on the corner post and a hatch on
the front of the windshield. The amended application
issued as the ’070 patent on November 13, 2007. As
issued, the ’070 patent claims “[t]he ornamental design
for a marine windshield, as shown and described.” JA 170.
Figures 1-6 show alternate views of the four-hole embod-
iment. The inventor assigned all rights in the ’070 patent
to his wholly owned company, Pacific Coast, in June,
2011. 1 The inventor later obtained a patent for the design


    1    Although the term used is “exclusive license,” the
agreement is effectively an assignment because it granted
“all substantial rights in and to the Patents[,]” including
the ’070 patent, exclusively to Pacific Coast. JA 139. It is
well-established that an exclusive transfer of all rights in
a patent is considered an assignment if that is its effect,
regardless of its name. See, e.g., Waterman v. Mackenzie,
138 U.S. 252, 256 (1891) (“Whether a transfer of a partic-
PACIFIC COAST MARINE   v. MALIBU BOATS, LLC                 5



with no holes in the corner post as a divisional of the
originally-filed application, but did not file another divi-
sional application with respect to any of the other embod-
iments. See U.S. Patent No. D569,782.
     In 2011, Pacific Coast brought suit in the Middle Dis-
trict of Florida, alleging, inter alia, that Malibu Boats
manufactured and sold boat windshields with a design
that infringed the ’070 patent. Pacific Coast also alleged
that Malibu Boats induced others, including customers
and distributors, to infringe the ’070 patent. The accused
infringing design was in a boat windshield with three
trapezoidal holes on the corner post, as shown below.




JA 11.




ular right or interest under a patent is an assignment or a
license does not depend upon the name by which it calls
itself, but upon the legal effect of its provisions.”) (empha-
sis removed); Alfred E. Mann Found. for Sci. Research v.
Cochlear Corp., 604 F.3d 1354, 1359 (Fed. Cir. 2010) (“[A]
patent owner may grant an exclusive license to his pa-
tents under such terms that the license is tantamount to
an assignment of the patents to the exclusive licensee.
That happens when the exclusive license transfers ‘all
substantial rights’ in the patents.”) (citing Vaupel Textil-
maschinen v. Meccanica Euro Italia S.P.A., 944 F.2d 870,
873-74 (Fed. Cir. 1991)).
6                PACIFIC COAST MARINE   v. MALIBU BOATS, LLC



     The district court granted Malibu Boats’ motion for
partial summary judgment of non-infringement on the
grounds of prosecution history estoppel. The district court
found that, during prosecution, the applicant had surren-
dered the designs reflected in the canceled figures and
amended the claim “in order to obtain the patent.” JA 9.
In holding that the patentee was estopped from asserting
infringement against the accused design, the court recog-
nized that “the accused design has one fewer vent hole
than the embodiment,” but explained that “the accused
design is still clearly within ‘the territory [surrendered]
between the original claim and amended claim.’” JA 12
(citing Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki
Co., 535 U.S. 722, 740 (2002)). The court also found that
the patentee failed to overcome the presumption of prose-
cution history estoppel. The court entered a judgment of
non-infringement based on the finding of prosecution
history estoppel, and certified the judgment for appeal
pursuant to Fed. R. Civ. P. 54(b).
    Pacific Coast appealed. We have jurisdiction under 28
U.S.C. § 1295(a)(1). Whether the presumption of prosecu-
tion history estoppel precludes a patentee from asserting
infringement against an alleged equivalent of an amended
claim element is a question of law that we review without
deference. Honeywell Int’l. Inc. v. Hamilton Sundstrand,
370 F.3d 1131, 1139 (Fed. Cir. 2004) (en banc) (citing
Ranbaxy Pharms., Inc. v. Apotex, Inc., 350 F.3d 1235 (Fed.
Cir. 2003)). We also review a district court’s grant of
summary judgment without deference. Teleflex, Inc. v.
Ficosa N. Am. Corp., 299 F.3d 1313, 1323 (Fed. Cir. 2002).
PACIFIC COAST MARINE   v. MALIBU BOATS, LLC                 7



                         DISCUSSION
                              I
     Although treatises 2 and district court decisions going
back to 1889 3 have recognized that the concept of prosecu-
tion history estoppel applies to design patents as well as
utility patents, this issue is one of first impression for our
court.
    The doctrine of prosecution history estoppel is well es-
tablished for utility patents. Utility patents may be
infringed both literally and under the doctrine of equiva-
lents. For doctrine of equivalents purposes, the accused
and claimed elements are equivalent if there are only
“insubstantial differences” between them. Warner-
Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 39


    2    See, e.g., Donald S. Chisum, Chisum on Patents §
23.05[7] (2013) (“Decisions confirm that a design patent’s
prosecution history may limit its scope.”); 6 John G. Mills
et al., Pat. L. Fundamentals § 20:50 (2d ed.) (2013)
(“Where the Patent & Trademark Office required re-
striction among a plurality of embodiments proffered to
the Office in a single design applica[]tion, courts have
held that the patentee is estopped from asserting that an
accused design which corresponds to a nonelected embod-
iment infringes the elected embodiment . . . .”).
     3   See, e.g., Australia Vision Servs. Pty. Ltd. v. Diop-
tics Med. Prods. Inc., 29 F. Supp. 2d 1152, 1157 (C.D. Cal.
1998); Victus Ltd. v. Collezione Europa U.S.A. Inc., 48
U.S.P.Q. 2d 1145, 1148-49 (M.D.N.C. 1998); McGrady v.
Aspenglas Corp., 487 F. Supp. 859, 861 (S.D.N.Y. 1980);
W.R. Grace & Co. v. W. United States Indus., Inc., 180
U.S.P.Q. 40, 47 (C.D. Cal. 1975), aff’d on other grounds,
608 F.2d 1214 (9th Cir. 1979); Stimulant Prods., Inc. v.
Vibrex Corp., 161 U.S.P.Q. 513, 517 (C.D. Cal. 1969);
MacBeth v. Gillinder, 54 F. 169, 170 (C.C.E.D. Pa 1889).
8                 PACIFIC COAST MARINE   v. MALIBU BOATS, LLC



(1997). An alternate formulation focuses on whether the
“substitute element matches the function, way, and result
of the claimed element.” Id. at 40. See also Graver Tank &
Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 612 (1950)
(finding equivalence when the “changes which avoid
literal infringement are colorable only”).
    With respect to utility patents, prosecution history es-
toppel limits a patentee’s ability to recover under the
doctrine of equivalents, but does not limit literal in-
fringement. The doctrine is founded on the public notice
function of patents. The Supreme Court has recognized
that “[t]here can be no denying that the doctrine of equiv-
alents, when applied broadly, conflicts with the defini-
tional and public-notice functions of the statutory
claiming requirement.” Warner-Jenkinson, 520 U.S. at 29;
see also Festo, 535 U.S. at 731 (“A patent holder should
know what he owns, and the public should know what he
does not.”). Consequently, prosecution history estoppel
limits the bounds of what a patentee can claim as equiva-
lent by “requir[ing] that the claims of a patent be inter-
preted in light of the proceedings in the PTO during the
application process.” Festo, 535 U.S. at 733. Where subject
matter is surrendered during prosecution, prosecution
history estoppel prevents the patentee from “recaptur[ing]
in an infringement action the very subject matter surren-
dered as a condition of receiving the patent.” Id. at 734.
    For design patents, the concepts of literal infringe-
ment and equivalents infringement are intertwined.
Unlike the provisions defining infringement of a utility
patent, the statutory provision on design patent infringe-
ment does not require literal identity, imposing liability
on anyone who “without license of the owner, (1) applies
the patented design, or any colorable imitation thereof, to
any article of manufacture for the purpose of sale, or (2)
sells or exposes for sale any article of manufacture to
PACIFIC COAST MARINE   v. MALIBU BOATS, LLC                9



which such design or colorable imitation has been ap-
plied . . . .” 35 U.S.C. § 289 (emphases added).
    Under the leading Supreme Court case of Gorham
Mfg. Co. v. White, 81 U.S. 511 (1871), the test for design
patent infringement is whether
    in the eye of an ordinary observer, giving such at-
    tention 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. at 528. The Court explained that, if the test for in-
fringement required the accused design to reproduce all
elements of the patented design, “[t]here never could be
piracy of a patented design, for human ingenuity has
never yet produced a design, in all its details, exactly like
another, so like, that an expert could not distinguish
them.” Id. at 527; see also Braun Inc. v. Dynamics Corp. of
Am., 975 F.2d 815, 820 (Fed. Cir. 1992) (“[P]atent in-
fringement can be found for a design that is not identical
to the patented design.”).
    Thus, the test for design patent infringement is not
identity, but rather sufficient similarity—whether “the
accused design could not reasonably be viewed as so
similar to the claimed design that a purchaser familiar
with the prior art would be deceived by the similarity
between the claimed and accused designs, “‘inducing him
to purchase one supposing it to be the other.’” Egyptian
Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 683 (Fed. Cir.
2008) (quoting Gorham, 81 U.S. at 528). We have held
that the “colorable imitation” standard of the design
patent statute involves the concept of equivalents. Alt-
hough “the way/function/result test . . . is not directly
transferable to design patents, it has long been recognized
that the principles of equivalency are applicable.” Lee v.
10                 PACIFIC COAST MARINE    v. MALIBU BOATS, LLC



Dayton-Hudson Corp., 838 F.2d 1186, 1189 (Fed. Cir.
1988); see also Chisum on Patents § 23.05 (“[I]t can be
questioned whether there is any need to apply to designs
the general distinction between ‘literal’ infringement of a
patent and infringement under the ‘doctrine of equiva-
lents.’”). Indeed, Pacific Coast characterized the substan-
tial similarity between the accused designs and the ’070
patent as the basis for an infringement claim “under the
doctrine of equivalents.” JA 142.
    Pacific Coast, in its briefs, argued that prosecution
history estoppel should not apply to design patents at all. 4


     4   Pacific Coast also argued that the defendant here
was foreclosed from raising the issue of prosecution
history estoppel on summary judgment because it is an
affirmative defense that was not raised in the pleadings,
as required by Rule 8(c) of the Federal Rules of Civil
Procedure. Assuming arguendo that prosecution history
estoppel is an affirmative defense, the doctrine was ade-
quately pled in the defendants’ answers, which stated,
“[p]laintiff’s claims are barred in whole or in-part by the
doctrine[] of . . . estoppel . . . .” JA 228; see JA 181; JA 191;
JA 201; JA 212. Moreover, the “purpose of such pleading
is to give the opposing party notice . . . and a chance to
argue” its side of the issue. Blonder-Tongue Labs., Inc. v.
Univ. of Illinois Found., 402 U.S. 313, 350 (1971). The
Eleventh Circuit has held that “[w]hen a plaintiff has
notice that an affirmative defense will be raised at trial,
the defendant’s failure to comply with Rule 8(c) does not
cause the plaintiff any prejudice.” Hassan v. U.S. Postal
Serv., 842 F.2d 260, 263 (warning against “hypertechni-
cality in pleading requirements” and advising that courts
“focus, instead, on enforc[ing] the actual purpose of the
rule”); accord Grant v. Preferred Research, Inc., 885 F.2d
795, 797-98 (11th Cir. 1989) (no prejudice in allowing an
affirmative defense to be raised for the first time in a
PACIFIC COAST MARINE   v. MALIBU BOATS, LLC              11



But at oral argument, Pacific Coast conceded that a
patentee should not be able to assert infringement against
a particular design that was abandoned during prosecu-
tion for reasons of patentability. Oral Argument at 5:14-
5:30, available at http://oralarguments.cafc.uscourts.gov/
default.aspx?fl=2013-1199.mp3. This concession is well
taken. The same principles of public notice that underlie
prosecution history estoppel apply to design patents as
well as utility patents. Prosecution history estoppel in
design patents promotes the “clarity [that] is essential to
promote progress.” Festo, 535 U.S. at 730. Refusing to
apply the principles of prosecution history estoppel to
design patents would undermine the “definitional and
public-notice functions of the statutory claiming require-
ment.” Warner-Jenkinson, 520 U.S. at 29. The fact that in
design patents, unlike utility patents, the claimed scope is
defined by drawings rather than language does not argue
against application of prosecution history estoppel princi-
ples here. We conclude that the principles of prosecution
history estoppel apply to design patents as well as utility
patents.
                              II
    Having determined that the principles of prosecution
history estoppel apply to design patents, we consider
whether those principles bar the infringement claim in
this case. This turns on the answers to three questions:
(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.




motion for summary judgment). In this case, we find no
prejudice, and Pacific Coast alleges none, resulting from
the district court’s considering the issue at the summary
judgment stage.
12                PACIFIC COAST MARINE   v. MALIBU BOATS, LLC



                             A
     As to the first, we conclude that there was a surrender
of claim scope during prosecution. Here, in determining
the scope of the claimed design, “[i]t is the drawings of the
design patent that provide the description of the inven-
tion.” In re Daniels, 144 F.3d 1452, 1456 (Fed. Cir. 1998)
(citing In re Klein, 986 F.2d 1569, 1571 (Fed. Cir. 1993));
see also MPEP § 1503.1 ¶ 15.59(II) (8th ed. Rev. 9, Aug.
2012) (“[A]s a rule the illustration in the drawing views is
its own best description.”). Figures are required in design
patent applications because they, not the textual claim,
“constitute a complete disclosure of the appearance of the
design.” 37 C.F.R. § 1.152. In short, while we look primar-
ily to the wording of the claims in utility patents for the
purpose of prosecution history estoppel, we must look at
the requisite drawings in design patents to determine
whether a surrender has occurred.
    Here, in response to the examiner’s restriction re-
quirement, the applicant amended the claim by cancelling
figures associated with all but one of the patentably
distinct groups of designs identified by the examiner—the
four-hole embodiment—and striking references to alter-
nate configurations from the text. The PTO treated the
response as “an election without traverse” and withdrew
the unelected designs from consideration. JA 394. Conse-
quently, the issued ’070 patent claimed only “[t]he orna-
mental design for a marine windshield, as shown and
described,” JA 170, in figures that all depicted four circu-
lar vent holes on the corner post. JA 170-74. By cancelling
figures showing corner posts with two holes and no holes,
the applicant surrendered such designs and conceded that
the claim was limited to what the remaining figure
showed—a windshield with four holes in the corner post—
and colorable imitations thereof.
PACIFIC COAST MARINE   v. MALIBU BOATS, LLC              13



    It does not matter that the surrender involved the
cancellation of claims rather than amendment. In Honey-
well Int’l Inc. v. Hamilton Sundstrand, 370 F.3d 1131,
1144 (Fed. Cir. 2004) (en banc), we held that prosecution
history estoppel is not limited to narrowing amendments,
but extends as well to claim surrender. See also Deering
Precision Instruments, L.L.C. v. Vector Distrib. Sys., Inc.,
347 F.3d 1314, 1325 (Fed. Cir. 2003) (the “addition of [an]
independent claim . . . coupled with the clear surrender of
the broader subject matter of the deleted original inde-
pendent claim” narrowed claim scope for prosecution
history estoppel purposes). By removing broad claim
language referring to alternate configurations and cancel-
ling the individual figures showing the unelected embod-
iments, the applicant narrowed the scope of his original
application, and surrendered subject matter.
                              B
    As to the second question, we conclude that claim
scope was surrendered in order to secure the patent, as
required by the Supreme Court’s decision in Festo. Here,
the surrender was not made to avoid prior art but because
of a restriction requirement under 35 U.S.C. § 121. Thus,
the surrender was not made for reasons of patentability
(for example, anticipation, obviousness, or patentable
subject matter). However, the surrender was made to
secure the patent.
    In contrast to utility patents, “a design patent appli-
cation may only include a single claim.” MPEP § 1503.1
¶ 15.61(III) (8th ed. Rev. 9, Aug. 2012); see also In re
Rubinfield, 207 F.2d 391, 396 (CCPA 1959) (“We find no
sound reason for disturbing the long-standing practice of
the Patent Office, embodied in Rule 153, which limits
design applications to a single claim.”). In light of that
requirement, if an application for a design patent includes
more than one patentable design, the PTO must require
14                PACIFIC COAST MARINE   v. MALIBU BOATS, LLC



the applicant to restrict his claims to a single inventive
design under 35 U.S.C. § 121. Thus, in design patents,
unlike utility patents, restriction requirements cannot be
a mere matter of administrative convenience. Here, the
examiner imposed a restriction requirement on the
ground that the different drawings showed “patentably
distinct groups of designs,” contravening the requirement
that design patents must claim only one design. JA 386.
The examiner identified the specific design groups and
associated figures, giving the applicant the option to elect
one group.
     Pacific Coast argues, however, that only surrenders to
avoid prior art are within the doctrine. We think that the
doctrine is broader than that. The Court has held that
“[e]stoppel arises when an amendment is made to secure
the patent and the amendment narrows the patent’s
scope,” expressly stating that “a narrowing amendment
made to satisfy any requirement of the Patent Act may
give rise to an estoppel.” Festo, 535 U.S. at 736 (emphasis
added). In Festo, the Court explicitly addressed, and
rejected, arguments similar to those raised by Pacific
Coast here, explaining that the rationale behind prosecu-
tion history estoppel “does not cease simply because the
narrowing amendment, submitted to secure a patent, was
for some purpose other than avoiding prior art.” Id. at
736. Here, we think that, in the design patent context, the
surrender resulting from a restriction requirement in-
vokes prosecution history estoppel if the surrender was
necessary, as in Festo, “to secure the patent.” Id. We
express no opinion as to whether the same rule should
apply with respect to utility patents, an issue not resolved
by our prior cases. 5



     5 See, e.g., Bayer Aktiengesellschaft v. Duphar Int’l
Research, 738 F.2d 1237, 1243 (Fed. Cir. 1984)
PACIFIC COAST MARINE   v. MALIBU BOATS, LLC             15



                              C
    The final question is whether the accused design is
within the scope of the surrender. Prosecution history
estoppel only bars an infringement claim if the accused
design fell within the scope of the surrendered subject
matter. See Wang Labs., Inc. v. Mitsubishi Elecs. Am.,
Inc., 103 F.3d 1571, 1578 (Fed. Cir. 1997) (“Once prosecu-
tion history estoppel limits the scope of a patent, the
patentee may not recover for infringement where in-
fringement would require an equivalence between a claim
element and an aspect of the accused item that falls
within the estoppel.”). Determining the reach of prosecu-
tion history estoppel thus “requires an examination of the
subject matter surrendered by the narrowing amend-
ment.” Festo, 535 U.S. at 737.
     Here, the surrendered designs included windshields
with two holes on the corner post. The district court held
that after “[c]omparing the Defendants’ accused design
with the patented design and the canceled embodiments,
it is clear that the accused design is within the territory
between the original claim and the amended claim.” JA
10. Although the accused design had a three-hole configu-
ration and the originally-claimed design did not include a
three-hole configuration, the court found that “the ac-
cused design is still clearly within the ‘territory between
the original claim and the amended claim[,]’” i.e., between
the claimed four-hole embodiment and the surrendered
two-hole embodiment. JA 12 (quoting Festo, 535 U.S. at
740).
    Malibu Boats similarly argues that by abandoning a
design with two holes and obtaining patents on designs


(“[L]imiting the claims because of a restriction require-
ment, as occurred here, would not necessarily invoke file
history estoppel.”).
16               PACIFIC COAST MARINE   v. MALIBU BOATS, LLC



with four holes and no holes, the applicant abandoned the
range between four and zero. See Biagro Western Sales,
Inc. v. Grow More Inc., 423 F.3d 1296, 1306-07 (Fed. Cir.
2005) (prosecution history estoppel barred infringement
claim against accused fertilizer with sixty percent concen-
tration of phosphorous-containing salts where thirty to
forty percent concentration limitation was added to pa-
tent claim during prosecution). However, this range
concept does not work in the context of design patents
where ranges are not claimed, but rather individual
designs. Claiming different designs does not necessarily
suggest that the territory between those designs is also
claimed. As the defendant conceded during oral argu-
ment, the record does not show that the submitted figures
claimed “a design . . . that has zero to four holes.” Oral
argument        at       32:01-32:10,     available      at
http://oralarguments.cafc.uscourts.gov/default.aspx?fl=20
13-1199.mp3. The applicant surrendered the claimed
design with two holes on the windshield corner post, but
neither submitted nor surrendered any three-hole design.
The record only reflects the surrender of the two-hole
embodiment.
    We note that the defendant here did not argue that
the scope of the surrendered two-hole embodiment ex-
tended to the three-hole embodiment because the three-
hole embodiment was not colorably different from the
two-hole embodiment. At oral argument, the defendant
disclaimed the theory that the three-hole design was a
colorable imitation of the surrendered two-hole embodi-
ment. Under these circumstances, we need not decide
whether the scope of the surrender is measured by the
colorable imitation standard. Since the patentee here does
not argue that the accused design was within the scope of
the surrendered two-hole embodiment, no presumption of
prosecution history estoppel could arise. We hold that
prosecution history estoppel principles do not bar Pacific
PACIFIC COAST MARINE   v. MALIBU BOATS, LLC      17



Coast’s infringement claim, and remand for further
proceedings. 6
           REVERSED AND REMANDED




   6    In its motion for summary judgment, Malibu
Boats raised other grounds for a finding of non-
infringement. The district court did not reach these
issues, and neither do we.
