The Federal Circuit’s decision in Focus Products Group International, LLC v. Kartri Sales Co., Inc. delivers a wide-ranging opinion that touches nearly every corner of intellectual property litigation: venue after TC Heartland, prosecution history disclaimer, multi-defendant appellate waiver, trademark standing, trade dress functionality, willfulness, and fee shifting. But at its core, the case stands as a cautionary tale about examiner-driven restriction practice and the long shadow it can cast over claim scope years later.
The dispute arose from “hookless” shower curtains—products designed to hang directly on a shower rod using integrated rings with slits, eliminating the need for separate hooks. Focus Products and its related entities asserted three related utility patents, along with trademark and trade dress rights, against Kartri Sales Co. and its supplier Marquis Mills. After years of litigation in the Southern District of New York, the district court largely sided with Focus, entering summary judgment of patent infringement, finding trademark and trade dress infringement, determining willfulness, and awarding enhanced damages and attorneys’ fees.
On appeal, the Federal Circuit affirmed some findings, reversed others, vacated substantial portions of the judgment, and remanded for further proceedings. The result was a sharply divided outcome between the two defendants and a detailed roadmap of how procedural and prosecution decisions can dictate substantive outcomes.
Venue and the Cost of Delay After TC Heartland
The opinion first addresses venue, rejecting the defendants’ attempt to escape the Southern District of New York under TC Heartland. Although TC Heartland made venue objections newly available, the Federal Circuit emphasized that such objections must still be raised seasonably. Here, the defendants waited nearly four months after TC Heartland—while continuing discovery and depositions—before objecting.
The court distinguished earlier cases where venue objections were preserved promptly and litigation remained in its early stages. The lesson is straightforward: TC Heartland did not create an open-ended escape hatch. Delay and continued participation in litigation can forfeit venue challenges, even when the law changes mid-case.
Restriction, Election, and the Birth of Disclaimer
The most consequential portion of the decision concerns the ’248 and ’609 patents and the meaning of “ring.” During prosecution of the original application, the examiner issued a restriction requirement identifying multiple patentably distinct species. One species included rings with projections or fingers extending from the outer circumference; another species included rings with a flat upper edge.
The applicant elected the projected-edge species and did not traverse the examiner’s characterization. When the applicant later attempted to include claims expressly reciting a flat upper edge, the examiner withdrew those claims as drawn to a non-elected species. The applicant again did not object and proceeded to allowance.
Years later, Focus argued that the issued claims were broad enough to encompass flat-topped rings. The Federal Circuit disagreed. Reading the prosecution history as a whole, the court held that the patentee had clearly and unmistakably disclaimed rings with flat upper edges for the ’248 and ’609 patents by acquiescing in the examiner’s species demarcation.
This was not a case of ambiguous silence. The examiner repeatedly enforced the boundary between species, and the applicant repeatedly accepted it. As the court explained, cooperation with the examiner’s demand to exclude a species—without traversal—can operate as an affirmative disclaimer, even absent express words of surrender.
The continuation history reinforced that conclusion. When prosecuting the later ’088 patent, the applicant distinguished the earlier patents by adding a “flat upper edge” limitation to overcome a double patenting rejection. That amendment only made sense if the earlier patents did not already cover flat-topped rings. The Federal Circuit treated that prosecution history as confirming the narrowed scope of the earlier claims.
Because the accused products used flat-topped rings, the court reversed the infringement findings for the ’248 and ’609 patents as to Marquis.
The ’088 Patent and the Limits of Summary Judgment
The outcome for the ’088 patent was more nuanced. The Federal Circuit agreed with the district court’s construction of “projecting edge” as “an edge that projects from the outer circumference of the ring.” But it found the infringement analysis insufficiently explained.
The district court had concluded that a portion of the accused ring constituted a projecting edge, yet failed to articulate where the ring’s outer circumference ended and the projecting edge began. The Federal Circuit noted that the accused rings closely resembled embodiments in the specification that lacked any projecting edge at all.
Without a clear analytical framework distinguishing circumference from projection, summary judgment could not stand. The court vacated the ’088 patent infringement finding for Marquis and remanded for a more rigorous analysis tied to the intrinsic record.
Appellate Waiver and Divergent Outcomes
One of the more unusual aspects of the case was the divergent outcome between Kartri and Marquis, despite their products being essentially identical. That divergence stemmed not from technical differences, but from appellate briefing strategy.
The defendants filed separate opening briefs that attempted to divide issues between them. Marquis fully developed the patent arguments; Kartri devoted barely a page to them. When challenged, both defendants disclaimed any intent to rely on each other’s arguments—accepting the risk of waiver.
The Federal Circuit took them at their word. Marquis preserved and won on the key patent issues. Kartri, by contrast, waived its patent non-infringement arguments through underdevelopment. As a result, infringement findings were reversed or vacated for Marquis, but largely affirmed for Kartri.
This portion of the opinion is a stark reminder that appellate courts will not rescue parties from strategic choices about briefing. Identical facts do not guarantee identical outcomes when arguments are waived.
Trademarks, Standing, and Ownership Proof
The court also dismantled the district court’s finding that Focus had standing to assert the EZ ON trademark. Focus relied on a 2012 licensing agreement to show ownership, but the Federal Circuit carefully parsed the contract and found no transfer of trademark ownership before suit was filed.
The agreement licensed HOOKLESS®, not EZ ON. Provisions concerning “Licensed Products” did not establish mark ownership, and a clause discussing assignment of later-developed intellectual property did not plausibly apply to trademarks through “reduction to practice.” Actual assignment of the EZ ON mark occurred years after the lawsuit began.
Because standing must exist at filing, the Federal Circuit reversed the EZ ON trademark infringement finding outright.
The court also vacated the HOOKLESS® trademark infringement finding, concluding that the district court’s likelihood-of-confusion analysis improperly focused on product similarity rather than mark-to-mark comparison in the marketplace context.
Trade Dress and TrafFix Revisited
Trade dress fared no better. The district court found Focus’s asserted trade dress non-functional based on its “neat and orderly” appearance and the availability of alternative designs. The Federal Circuit held that analysis incomplete under TrafFix.
Where an expired utility patent claims the same features asserted as trade dress, functionality is strongly presumed. The district court failed to meaningfully compare the claimed trade dress elements with the features claimed in Focus’s expired patent. Without that comparison, Focus could not meet its burden to prove non-functionality.
The trade dress infringement finding was vacated and remanded for proper application of TrafFix.
Willfulness, Fees, and the Unraveling of Enhancements
With large portions of the infringement judgment undone, the Federal Circuit also vacated findings of willfulness and the resulting enhanced damages. Notice of patent rights alone was insufficient, particularly where defendants articulated consistent non-infringement positions grounded in prosecution history. Similarly, trade dress willfulness could not predate notice of the asserted trade dress.
The attorneys’ fee award was likewise vacated. While the district court did not abuse its discretion in deeming the case exceptional, the fee calculation failed to separate compensable work from claims on which Focus no longer prevailed.
Takeaways
This decision reinforces several practical lessons. Restriction requirements and elections matter, especially when untraversed. Acquiescence can shape claim scope just as powerfully as express disclaimer. Continuation practice can lock in those boundaries rather than erase them. Appellate briefing choices can determine winners and losers independent of product facts. And trademark and trade dress claims demand disciplined proof of ownership and non-functionality.
As Charles Gideon Korrell notes, restriction practice is often treated as a procedural inconvenience, but Focus Products shows it can become substantive destiny. Charles Gideon Korrell believes that patent prosecutors should treat elections with the same care as claim amendments, assuming every concession may later be read as intentional surrender. And Charles Gideon Korrell observes that this case is also a reminder that appellate courts enforce waiver rules strictly, even when doing so leads to asymmetrical results.
The Federal Circuit’s opinion is long, detailed, and unsparing. It rewards precision and punishes shortcuts—both in prosecution and in litigation.