Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, Inc., No. 2021-2299, 2021-2338, – F.4th – (Fed. Cir. September 15, 2023)
On September 15, 2023, the Court of Appeals for the Federal Circuit ("CAFC") issued the latest decision in an 8-year design patent dispute between Columbia Sportswear North America, Inc. ("Columbia") and Seirus Innovative Accessories, Inc. ("Seirus"). This is the second time the CAFC has reversed a finding of infringement and sent the case back to lower courts. This time, the CAFC clarified how comparison prior art and logos should be applied in the infringement analysis, but it seems only time will tell if the third time will be the charm for Columbia.
Columbia's Design Patent
Columbia owned U.S. Design Patent No. D657,093 ("D'093 Patent"), which claimed an "ornamental design of a heat reflective material". Seirus marketed and sold products made with its "HeatWave" material, which featured a similar design. Columbia sued Seirus for infringing its D'093 Patent.
Originally, the District Court found that Seirus' HeatWave material infringed Columbia's design patent. The District Court compared both the D'093 Patent and Seirus's HeatWave to U.S. Patent 5,626,949 and found "the contrasting waves of Seirus' design are still substantially closer to the contrasting wave design disclosed in the D'093 patent than either Seirus's or Columbia's design is to the pattern disclosed in [the '949 Patent]". The District Court concluded that the overall visual effect of the Columbia and Seirus designs were "nearly identical". The District Court also rejected Seirus's argument that the Seirus logo appearing throughout the HeatWave material sufficiently differentiated it from Columbia's design, and disregarded the Seirus logo entirely in its infringement analysis.
On appeal,1 the CAFC overturned the District Court's decision, and the case was sent back to the lower court. The CAFC found the District Court had erred by failing to consider Seirus' logo in its infringement analysis. This time, the case went to trial and a jury found that Seirus did not infringe Columbia's design patent. Columbia appealed, bringing us to the present case.
Infringement of Design Patents
In design patent cases, the test for infringement is the "ordinary observer" test2:
Two designs are substantially the same if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, the resemblance between the two designs is enough to deceive an ordinary observer, inducing them to purchase one thinking it to be the other.
However, in cases where the claimed and accused designs are not obviously different, the CAFC explained that the ordinary observer test should be applied with reference to prior art designs. These "comparison prior arts" would inform the perspective of the hypothetical ordinary observer.
Scope of Comparison Prior Art
Columbia challenged the District Court's approach to comparison prior art, along with its instructions to the jury. The CAFC agreed with Columbia that the scope of a design patent's claim and the comparison prior art is limited to the "article of manufacture" identified in the claim. Therefore, to qualify as comparison prior art, a design must be applied to the article identified in the claim.
The CAFC held that an article's function was a relevant consideration to distinguish one article from another. While protection cannot be given to designs that are primarily functional, it must also be acknowledged that design patents are granted for designs applied to an article of manufacture, and articles of manufacture have functions.
In this specific case, the relevant "article of manufacture" was a heat-reflective material. The District Court had erred to properly instruct the jury about the scope of the D'093 patent claims, and in turn, the scope of the comparison prior art. Besides the date and publication requirements, the District Court did not instruct the jury on the correct standard to determine whether an admitted reference qualified as comparison prior art.
Logo
The CAFC also provided some guidance on how to address logos in the design patent infringement inquiry, acknowledging the difference between trademark infringement and design patent infringement.
Trademark infringement requires that consumers are likely to be confused about the source of a product. For design patent infringement however, likelihood of consumer confusion is not a necessary or appropriate factor. Considering this difference, the CAFC noted that while application of a logo or other clear "source" identifier would be clear evidence of non-infringement of a trademark, it would not have the same effect for a design patent.
Despite this, the CAFC stated that it would still be "improper to ignore elements of the accused design entirely, simply because those elements included the name of the [accused infringer]". Instead, a factfinder should still consider "an ornamental logo, its placement, and its appearance as one among other potential differences between a patented design and an accused one." Even in instances where an ordinary observer would not be confused about the source of a produce, they may still view the designs as similar enough to constitute design patent infringement.
The CAFC vacated the jury's non-infringement decision and returned the case to the lower courts for a third time.
Commentary
While Columbia's dispute remains unresolved, this decision clarifies the scope of a design patent claim, and the comparison prior art against which the design is judged. The comparison prior art must be applicable to the same article of manufacture as identified in the claim, to be relevant to the infringement analysis. Ultimately, this is favourable for design patent holders who should find it easier now to prove infringement. However applicants should also be more careful when defining the article of manufacture in their design patent applications.
Footnotes
1. Columbia Sportswear North America v. Seirus Innovative Accessories, Inc., 942 F.3d 1119 (Fed. Cir. 2019).
2. Gorham v. Company v. White, 81 U.S. 511 (1871).
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