<em>Columbia Sportswear N. Am., Inc. v. Seirus Innovative Accessories, Inc.</em>
No. 2021-2299, 2023 WL 5988026 (Fed. Cir. Sept. 15, 2023)
In line with anticipation analysis for design patents, prior art may only be deemed “comparison prior art” if applied to the claimed article of manufacture. Future design patent infringement plaintiffs are now limited in their potential comparison art.
On September 15th, 2023, the Federal Circuit ruled for the second time in a design patent dispute between Columbia Sportswear North America and Seirus Innovative Accessories. A question in this second appeal was whether comparison prior art had to be applied to the same article of manufacture as the claimed article of manufacture. An article of manufacture is the item that claimed design is applied to, and comparison prior art is introduced to aid in the jury’s infringement fact-finding. The Federal Circuit ruled that prior art designs can be applied to the same article of manufacture as the design patent’s claim in order to be considered comparison prior art.
Columbia’s design patent claims “[t]he ornamental design of a heat reflective material.” Here, “heat reflective material” is the article of manufacture, and the ornamental design comprises a uniform pattern of thin waves. Seirus sold gloves made of a material branded as “HeatWave” that featured a similarly uniform pattern of thin waves with the Seirus logo evenly dispersed throughout the design. Columbia sued Seirus for patent infringement in the U.S. District Court for the District of Oregon, citing HeatWave’s similarity to Columbia’s claimed design. The case was later moved to the U.S. District Court for the Southern District of California. Morgan Lewis’ blog post shows Columbia’s claimed and Seirus’ accused designs.
The U.S. District Court for the District of Oregon granted summary judgment for Columbia’s infringement suit. However, the district court declined to construe “heat reflective material,” as included in the claim language. Both parties appealed to the Federal Circuit. On appeal, the court, vacated the grant of summary judgment. The court vacated this decision for two reasons. First, the Federal Circuit held that the district court failed to consider the presence of Seirus’ logo in the HeatWave material during its infringement analysis. Second, the lower court did not allow the jury to decide whether the claimed and accused designs’ visual effects are similar. The Federal Circuit reaffirmed that similarity is a factual finding reserved for the jury.
During the second trial, a jury returned a finding of non-infringement. The district court accepted “wave patterns on fabric” as suitable comparison prior art, allowing Seirus to admit three utility patents: (1) a claimed method of “printing ornamental stripes on the surface of a coated fabric,” (2) a claimed process to make “strong pliable unwoven fabric,” and (3) an invention of “shell fabric constructions … that are designed for protection against inclement weather.” Contrary to Columbia’s demands, the district court did not instruct the jury that only designs applied to the same article of manufacture – heat reflective material – should be considered as comparison prior art. Columbia appealed the jury verdict, citing concerns about the jury instructions and scope of comparison prior art considered.
While appropriate prior art is well understood within utility patent infringement analysis, the qualification determination differs for design patents. The utility patent infringement analysis involves comparing the accused product or process to the claim language: the metes-and-bounds of the property right afforded by patent protection. Conversely, the design patent infringement analysis begins, and potentially ends, with factfinding:
[I]f, in the eye of an ordinary observer, giving such attention 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.
Gorham Co. v. White, 81 U.S. (14 Wall.) 511, 528 (1871).
This “ordinary-observer test” stands alone unless “the claimed and accused designs are not plainly dissimilar.” Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 676 (Fed. Cir. 2008). When claimed and accused designs are not plainly dissimilar, comparison prior art may be introduced to provide a frame of reference for the world in which the designs at issue exist. Comparison prior art is particularly useful in two instances. First, comparison prior art can support a finding of infringement if the claimed design is very similar to the comparison prior art except in a single, conspicuous way that the accused design also features. Second, comparison prior art can support a finding of non-infringement if the claimed and accused designs are very similar, except in small ways that would only stand out within the background of comparison prior art. Even though a design patent’s metes-and-bounds are “limited to the article of manufacture identified in the claim,” the Federal Circuit had never ruled whether proposed comparison prior art designs had to be applied to the same article of manufacture.
In this case, the Federal Circuit held that comparison prior art designs must be applied to the same article of manufacture for three reasons. First, comparison prior art is introduced to assist jurors in making an informed assessment of whether an ordinary observer would find two designs applied to the same article of manufacture similar. Second, foundational precedent referenced designs as prior art only when applied to the same claimed article of manufacture. Third, the design patent anticipation analysis already uses the “same article of manufacture” standard. Thus, the Federal Circuit believed that limiting the scope of comparison prior art to only those designs applied to the article of manufacture made logical sense.
The Federal Circuit held that the lower court’s jury instructions failed to “fairly and adequately cover the issues presented,” vacated the jury verdict, and remanded the case for further proceedings. Juries must determine which references count as comparison prior art, but judges must instruct them on the legal standard to use when making such a determination. Although the judge’s mistake was “understandable,” it was still error, so the Federal Circuit vacated the jury verdict and remanded the case for further proceedings. The district court’s refusal to construe “heat reflective material” raised additional concerns from the appellate court because the parties did not determine the scope of the claimed article of manufacture.
Seirus argued that limiting the scope of comparison prior art to only the article of manufacture, defined in this case as “heat reflective material,” imported a functional limitation into the claimed design. In response, the Federal Circuit noted that design patents are only granted for designs applied to a particular article of manufacture, and “articles of manufacture have functions.” In fact, “[a] natural, relevant consideration for distinguishing one article from another involves looking to the articles’ respective functions.” As such, the Federal Circuit rejected Seirus’ argument.
Thus, jury instructions must inform jurors that they may only consider a proposed prior art design to be comparison prior art if the proposed design is applied to the claimed article of manufacture.