It Ain’t No Use to…Wonder Why: Don’t Think Twice, It’s All Right—Disclaimer Applies to Designs

Top Brand LLC v. Cozy Comfort Company LLC, makes clear that a design-patent owner cannot distinguish its design from prior art during prosecution and then later take a different position when asserting infringement, holding for the first time that prosecution history disclaimer applies to design patents.

Top Brand and Cozy Comfort were competitors in oversized hooded sweatshirts and wearable blankets. Cozy Comfort owned U.S. Design Patent No. D859,788 (the “D788 patent”), which claims “[t]he ornamental design for an enlarged over-garment with an elevated marsupial pocket, as shown and described.”

During prosecution, Cozy Comfort overcame an anticipation rejection by distinguishing its claimed design from the prior art based on several specific design differences, including the shape, width, and placement of the front pocket, the relationship of the pocket to the armholes, and the direction of the bottom hemline.

Cozy Comfort asserted infringement against Top Brand’s products. The jury found infringement and awarded over $18 million in damages. On appeal, the Federal Circuit reversed. The Federal Circuit held—for the first time—that the doctrine of prosecution history disclaimer applies to design patents as it does to utility patents. The court explained:  

We see no reason to distinguish between disclaimer by amendment and disclaimer by argument and conclude that a patentee may surrender claim scope of a design patent by its representations to the Patent Office during prosecution.

Because Cozy Comfort had distinguished its design from prior art based on specific features, the court held it surrendered those features as grounds for infringement. Top Brand’s accused products included features that encompassed the surrendered scope. The court therefore granted judgment of non-infringement as a matter of law. The court reasoned:

Indeed, it would be contrary to the very purpose of design patent prosecution to allow the patentee to make arguments in litigation contrary to the representations which led to the grant of the patent in the first place, and thereby recapture surrendered claim scope.

This aligns design patent practice with long-standing utility patent principles which prevent patentees from recapturing surrendered claim scope.

Doctrinal Significance

• Extension of Prosecution History Disclaimer: The court squarely rejected the argument that disclaimer does not apply to design patents because of their “visual nature.”
• Alignment with the Federal Circuit’s Egyptian Goddess decision: The decision builds on Egyptian Goddess by reinforcing that courts must consider representations in prosecution history when construing the scope of design patent claims.
• Narrow Scope of Design Patents: The court reiterated that design patents have a narrow scope, and prosecution history disclaimer further limits enforceable coverage.

Lessons

1. Design patents are not immune from narrowing by statements to the Patent Office.
2. The ordinary observer test must be applied against the backdrop of what the patentee surrendered.
3. Patentees cannot argue one set of distinctions to gain allowance and then ignore them when asserting infringement.

Practice Tips

For Patent Application Drafters

• Avoid unnecessary arguments: When distinguishing prior art, emphasize overall design impression rather than specific features, unless necessary.
• Scrutinize the record/Examiner’s words carefully: Agreeing to characterizations of differences may bind future positions regarding the scope of the design.
• Consider continuations: If multiple design features are in play, filing separate applications can preserve scope rather than surrender alternatives during prosecution.

For Patent Litigators

• Mine the prosecution history: Every visual annotation, Examiner argument, or applicant statement/argument can provide grounds for narrowing scope.
• Push for explicit claim construction based on the prosecution history: Do not allow design infringement cases to go to a jury without the court recognizing file history disclaimers.
• Frame the “ordinary observer” in context of surrendered features to prevent jurors from relying on disclaimed similarities.

Takeaways

The Federal Circuit has now closed the gap: design patents are subject to prosecution history representations just like utility patents. For design patent prosecutors, the lesson is straightforward: it ain’t no use to sit and wonder why after the fact. The distinctions made to secure allowance can come back to define—and potentially limit—the scope of the patent in litigation. Once that scope has been surrendered, the Federal Circuit’s message is clear: don’t think twice, it’s all right—but don’t expect to get the surrendered scope back.

is a partner in Manatt, Phelps and Phillips’ Intellectual Property Protection and Enforcement business unit and is the author of Patent Prosecution: Law, Practice, and Procedure, 2025 Edition, and Constructing and Deconstructing Patents (2d Edition).

Top Brand LLC v. Cozy Comfort Company LLC, 143 F.4th 1349, 2025 USPQ2d 964, 2025 WL 1970160 (Fed. Cir. 2025).

Id., 143 F.4 at 1357 (emphasis added).

Id., 143 F.4 at 1357.

Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 88 USPQ2d 1658 (Fed. Cir. 2008) (en banc), cert. denied, 556 U.S. 1167 (2009).