Federal Circuit IP
Focus Prods. Grp. Int’l, LLC v. Kartri Sales Co.
Focus Prods. Grp. Int’l, LLC v. Kartri Sales Co., No. 2023-1446, 2025 WL 2774853
(Fed. Cir. Sept. 30, 2025) ( Moore, Clevenger, and Chen)
Issue 1:
Whether the district court erred in its infringement determination by failing to recognize that the patentee made a clear and unmistakable prosecution history disclaimer excluding embodiments having a flat upper edge when responding to the examiner’s restriction requirement.
Facts / Procedural Posture:
The asserted patents relate to shower curtains with integrated rings. During prosecution, the Examiner issued a restriction requirement identifying two distinct species: (1) the “finger” configuration shown in Figures 18–20, and (2) the “flat upper edge” configuration shown in Figure 21. Applicant elected the finger-ring species and did not traverse the restriction. However, Applicant added a dependent claim (claim 73) that is directed to the non-elected species. That claim was then withdrawn by the Examiner, and in the Notice of Allowance the Examiner “maintained the withdrawal of claim 73 and noted that, should the patentee find the withdrawal ‘unacceptable,’ the patentee could still challenge the cancellation of claim 73 at this point, if it so chose.” The patentee did not make any challenge.
Holdings:
The Federal Circuit held that Applicant’s conduct during prosecution constituted an affirmative disclaimer of the unelected flat-edge ring configurations.
Reasoning:
The Court held that the combination of (1) the Examiner’s restriction requirement distinguishing between finger-ring and flat-edge species, (2) the Applicant’s election of the finger-ring species without traversal, (3) the cancellation of claims drawn to the flat-edge species, and (4) the applicant’s failure to contest the Examiner’s statement in the Notice of Allowance together amounted to a disclaimer of flat-edge configurations.
Key Takeaway:
- Prosecutor should request rejoinder of species in Office action response.
Issue 2:
Whether the district court correctly found Focus’s asserted trade dress for its HOOKLESS® shower curtain nonfunctional and protectable.
Holding:
The Federal Circuit vacated and remanded the trade-dress infringement ruling. “The district court’s functionality determination, however, ignored TrafFix’s instruction to compare whether ‘the expired patent claim[s] the features [of the trade dress] in question.’”
Reasoning:
Under TrafFix, a prior utility patent “is strong evidence” that an asserted trade dress is functional where the features of the trade dress are claimed in the patent. Where the expired patent claimed the features in question, one who seeks to establish trade dress protection must carry the heavy burden of showing that the feature is not functional, for instance by showing that it is merely an ornamental, incidental, or arbitrary aspect of the device. The district court failed to compare the asserted trade dress to the relevant utility patent and therefore erred in reaching its conclusion without considering the patent.
Key Takeaway:
- Litigators should ensure that any utility patents covering the asserted trade dress are brought to the court’s attention, as they are strong evidence that a trade dress is functional.