by Dennis Crouch
Seirus has petitioned for writ of certiorari in its long-running design patent dispute with Columbia Sportswear. The petition asks two questions related to the comparison process for design patent infringement — in particular, the questions focus on what can qualify as “comparison prior art” used to provide context for the infringement analysis.
Questions presented:
- When looking for comparison prior art, is the article’s function relevant in any way?
- Must the comparison prior art be the “same article” as claimed?
Petition for Writ of Certiorari, Seirus Innovative Accessories, Inc. v. Columbia Sportswear N. Am., Inc., No. 23-1052 (U.S. Mar. 21, 2024) (question paraphrased).
- Federal Circuit’s 2023 Decision.
- Seirus Petition for Writ of Certiorari filed by John Thornburgh and team at Fish & Richardson.
Columbia’s design patent claims an “ornamental design of a heat reflective material” as shown in the figures. U.S. Patent D657,093. Although the parties typically apply the pattern on the inside of gloves and other winter clothing, the patent itself is claimed broad enough to cover any “heat reflective material” having the ornamental wave pattern applied. The two figures above show a seemingly disembodied design, but the patent satisfies design patent requirements because it is tied to an underlying article of manufacture – a heat reflective material. To be clear, the material does have a three dimensional aspect – appearing to be quite thin, based upon Figure 3 (below). And, I will also note that there is a long 150+ year history of obtaining patterns in fabrics and rugs.
The case has been around the block a couple of times with each side wining and losing on repeat. I will not trudge through that tortured poetry but rather jump to the most recent trial. The jury sided with the accused infringer Seirus, finding no infringement. The district court entered that judgment, but the Federal Circuit vacated on appeal and remanded for yet another new trial. Seirus has now petitioned for writ of certiorari.
Design patent infringement follows a unique approach as described in a pair of important cases: Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (en banc) and Gorham Co. v. White, 81 U.S. 511 (1871). The design patent drawings define the scope of the claimed invention, and so infringement analysis requires comparing the accused product against the patent drawings. The fact finder is asked whether an “ordinary observer” who is likely to purchase the product would be would be deceived by the similarity between the patented design and the accused design. I think of the design patent test as quite close to likelihood of confusion in trademark law, but design and trademark pedants yell whenever I make this comparison.
In Gorham, the prior-art designs were not a significant factor in the infringement analysis. In contrast, Smith v. Whitman Saddle Co., 148 U.S. 674 (1893), placed a greater emphasis on the prior art when assessing infringement. The Court noted that the patented saddle design essentially combined the front half of a well-known “Granger” saddle with the rear half of another well-known “Jenifer” saddle. Given the existence of these pre-existing designs, the Court considered the novel and material aspect of the patented design to be limited to this specific accentuated drop feature. Since the accused saddles lacked this particular drop configuration, the Court found no infringement.
In other words, the Supreme Court recognized that ordinary observer test has the potential of allowing unduly expansive rights–especially for a lay jury where one wave pattern might look the same as the next. You can see above the two wave patterns adjacent to one another with the patented on top, and the accused on bottom. And in the image below, the patentee did a direct overlay that looks quite convincing: 
Whitman Saddle attempted to solve problem by adding the concept of “comparison prior art.” The basic idea is that juries are provided with the closest prior art as background references to help avoid giving substantial infringement weight for features that were already in the prior art. The jury is asked to familiarize itself with the comparison prior art — recognizing that the old stuff is not infringing — and once in that mindset to compare the accused product against the patented design.
Looking at the wave pattern found in Columbia’s patent, you can rightly imagine that there are many examples of prior art products with a similar wavy pattern, and at trial the patentee presented several different prior art fabrics as comparison prior art, including the Blauer patent shown below, covering a “breathable shell for outerwear.”
With several wave patterns as prior art references, it is easy to see why the jury found that the particular wave pattern design was not infringed. In addition, the Seirus logo placement was also like a factor in the non-infringement analysis, but I am going to avoid digging into that issue here because that issue was not petitioned to the Supreme Court.
Columbia appealed the non-infringement judgment, and the Federal Circuit vacated — concluding that the district court erred by allowing comparison prior art that was not the same article of manufacture as the patented and accused products. In particular, the patent claims a “heat reflective material,” and the focus of the lawsuit was whether the Seirus heat reflective material infringes. As such, the Federal Circuit concluded that the comparison prior art must also be a heat reflective material. In addition to its use for infringement, this same-article-of-manufacture standard is also used in determining whether a design patent is invalid for anticipation. The Federal Circuit explained:
We have held that, for a prior-art design to anticipate, it must be applied to the article of manufacture identified in the claim. Surgisil. We have also held that, for an accused design to infringe, it must be applied to the article of manufacture identified in the claim. We conclude that this requirement also applies to comparison prior art used in an infringement analysis.
Seirus also argues the Federal Circuit contravened both Supreme Court and its own precedent by limiting comparison prior art to designs applied to the exact same article of manufacture recited in the patent claim, essentially applying the anticipation standard.
In addition, the appellate panel concluded that the functionality of the underlying articles of manufacture can be used to distinguish otherwise similar designs. (Although the court explained this in a somewhat cautious way: “referencing functionality to distinguish articles of manufacture is not categorically impermissible.” In its petition to the Supreme Court, Seirus contends this improperly allows functional limitations to be read into design patent claims.
In its petition, Seirus argues that the Federal Circuit’s approach leads to unjust results, including improper recapture of the public domain:
[I]f a person obtained a design patent for a coffee mug depicting a public domain image, such as a 19th century impressionist painting, it would make no sense (and would be deeply unfair to anyone who based their design on the same painting) to exclude the original painting as comparison prior art simply because it appeared on canvas and canvas is not a coffee mug. Nor would it be fair to exclude a beer mug
with the same painting on it. Clearly, the relevance of the public domain images transcends the particular objects.
The petition also identified one old case, Bevin Brothers Manufacturing Co. v. Starr Brothers Bell Co., 114 F. 362 (C.C.D. Conn. 1902) where a door knob was used as the comparison prior art for a patented bell. That case was then identified and cited approvingly in Egyptian Goddess — including a recognition that the comparison prior art was a different article of manufacture than that patented. As the 1902 district court explained: “[t]he shape of the defendant’s bell differs from plaintiff’s more widely than plaintiff’s differs from the [prior art] door knob, and therefore defendants’ construction does not infringe the patent.”
One response to Seirus on the Bevin case and also the Monet example is that in both of these situations, the references to either door knobs or Monet paintings are not really being used as “prior art” but rather as common knowledge of ordinary observers, and I would expect that it is proper for a jury to consider common knowledge in its analysis.
Columbia’s response to the petition is due April 24, 2024, although the fact that Columbia’s attorneys have not yet filed an appearance in the case suggests that Columbia will waive its right to respond. Parties often choose not to respond to petitions for certiorari because the Supreme Court grants very few petitions, and the cost of preparing a response may not be justified, especially if the respondent believes the decision below was correct and the petition does not meet the Court’s criteria for granting review. Further, many take the view that refusing to acknowledge a petition diminishes its weight. Typically, if at least one member sees value in the petition then repondant will be asked to file a response and given a fresh timeline. So, in most cases, an initial waiver does not result in any permanent waiver.
Treating the undefined term “heat reflective material” like it has some legally relevant meaning is a bad j o k e. That’s the problem with this silly case and this g a r b a g e design patent.
Why?
Without such, you would merely have “designs in the abstract.”
You do know that such are not allowed, right?
You are doing that thing that you do again. You want to respond to my comment? Read what I clearly wrote and respond to that instead of some comment that exists only in your warped, feeble mind.
I did – the “undefined” that you speak of is not undefined, and is the object to which the design is applied.
“IF” – as you would have it – it would be considered undefined, then there would be nothing that the design would be applied to – hence my comment.
¯\_(ツ)_/¯
Exactly how much “heat” does a material need to “reflect” before it can fairly be called “heat reflective”?
Tell everyone.
Meh, not my patent application, but clearly there is a context here.
This entire case revolves around what prior art may be used to show the obviousness of the design. As an initial matter, why should an undefined **property** like “heat reflective” be permitted to limit the prior art in the first place? We are talking about a design applied to an article. Can I likewise limit the prior art by stating that the article is “made in China”?
The point is that it is NOT “undefined” — and cannot be.
How many paint chips did you have each day as a child?
“Heat reflective material” a standard product category. You can order rolls/sheets of it today on Amazon in a wide variety of sizes and R-values.
OC – Malcolm will not let facts like that get in his way.
18 years now (less just over a year on some personal hiatus).
The question is not “Is there such a thing as heat-reflective material?”
The question is: “What exactly are the properties that distinguish a ‘heat reflective material” from a material that is ‘not heat-reflective.’”
In other words, define the term and describe how to perform the test. Without that, this case (and this patent) is a j 0 k e.
What “exactly”…
Having a range (or several) is not “undefined.”
I know that you prefer your rather easy-to-work-around exacting picture claims, but that is just not how the rest of the world operates.
“ Having a range (or several) is not “undefined.”
And there you go again. Nobody ever used the term “range” and yet here you go countering an imaginary argument about a “range.”
Tell everyone: what “range” or “ranges” of “heat reflectivity” suffice to permit a material to accurately be deemed “heat reflective”? And how do you perform the measurement of such ranges?
And there you go again yourself.
One need not SEE a mention of range to throw cold water on you in view of the comment from OC.
(by the by, wide variety == range)
“ the comment from OC (by the by, wide variety == range)”
Ah, so the relevant definition of “heat-reflective material” is determined by the experts on the home shopping network. Of course! Very serious stuff.
Talk about “doing that thing again….”
Sorry (not sorry) that you are shown to be in error (yet again), but your swipe at ANYONE providing a definition (when you claimed NONE existed) should have you taken the better part of valor, but NOOOOOOOOO
you find it necessary to double down.
Say, “La Vee.”
Although the odds are slim of getting cert granted on this “ornamental design of a heat reflective material” are slim, it is at least finally asking good legal questions that should have been asked earlier. Namely, where in the patent statutes is there a justification having an infringement test for design patents completely different from that for other patents and far more like a trademark infringement test and further confused by inserting a different prior art scope test.
You — rather bizarrely — continue to act as if design patent and utility patents can be judged the same.
They cannot.
Yes.
Translation: The current conservative Sup. Ct., which as a general rule looks to the language of the statute itself for statutory interpretations, should ignore the fact that the patent statute for both design patents and utility patents for validity and infringement [other than damages] is the same, and continue to let the CCPA and CAFC make up very different statutory interpretations they sua sponte think are more appropriate.
[However, as noted, the odds of their taking cert in this case are quite small.] [Unless perhaps 4 of them are sufficiently shocked by the facts of this case – namely, what is being design-patented in this cases, and how this case got to this point.]
[other than damages] indeed. 35 USC 289 specifically says that a “colorable imitation” of a patented design is an infringement. I suppose that’s not true for utility patent infringement. And SCOTUS itself set forth an appropriate test for design patent infringement in Gorham v. White (1871) that an infringing design must be “substantially the same” as the patented design. That’s the case still followed by the CAFC – they didn’t make it up. And I suppose that the current Supreme Court might, just might, follow Gorham, unless they think the Court made it up in 1871.
Thanks Perry, indeed the special damages statute for design patents, 35 USC 289, also makes a “colorable imitation” of a patented design an infringement, as you note. [But, as you also note, Gorham v. White (1871) holds that an infringing design must be “substantially the same.”]
However, is there a design patent basis for not needing a Markman determination of claim scope by the judge, and design patent infringement being determined by that judicially determined claim scope [other than DOE exceptions]? If “collorable imitation” is part of a claim scope detemination does not Markman require it’s judicial scope determination, not the view of lay observers?
Relatedly, but more concerning, what is the statutory basis for design patent case law to apparently allow consideration of prior art in determining infringement, which is now expressly forbidden for utility patents?
Markman does require a claim scope determination by the judge. Egyptian Goddess held that such a determination can be made by simply referring to the drawings, since a picture is worth a thousand words. And, BTW, the doctrine of equivalents is subsumed by the infringement test: are the two designs SUBSTANTIALLY the same in overall appearance? Turning your last question around, what is the statutory basis for not considering the prior art in utility patent infringement?
Paul – you do have (and continue to have) an issue with context.
> far more like a trademark infringement test
FWIW, I was kinda surprised by the old Whitman Saddle test b/c it sounds like SCOTUS itself limited the claim to just the novel transition element vs. considering the design as-a-whole. That struck me as far more like the old copyright abstraction-filtration-comparison test than anything you’d properly find in patent law.
ipguy – your thoughts?
I can’t top anything that Perry says.
In my experience, it doesn’t matter what the SCOTUS or Federal Circuit say because it will be ignored by the Examiners in the Design Patent Art Units.
I hear you – until there is some reasonable way to have examiners (and the PTAB) brought to heel quickly (and economically), I suspect that it will be our clients footing the bill to fight to have laws actually applied in the Administrative Agency.
ipguy – your thoughts?
Another patent that is only making money for the litigators. I question the business justification for any patent litigation, much less protracted litigation over a single US design case. If the pattern is that effective at radiating heat, it is functional and should have been filed as a utility patent.
All designs are “functional”, i.e., required to be “articles of manufacture” as set forth in 35 USC 171. If a design that has utilitarian elements disqualified it for design patent protection, there would be no design patents.
Agreed, and would add a small clarification that having utility is not a disqualifier per se (the nuanced position is that the design choice is subsumed by its functionality).
An example of this is automobile tire treads. Certainly the tread designs are functional in that they serve purposes such as gripping the road, moving water out from under the tires and such, and just as certainly, there are a multiplicity of designs for any of these functions, so no SINGLE design subsumes the functionality.
I understand design patents. I just licensed several to competitors. I do not understand why the litigants and their customers love the wavy pattern vice some other ornamental pattern. There is a reason both parties are enriching their respective counsel, especially since design patents are easily avoided (except in standard setting environments.) This wavy pattern is apparently tied to sales, on both sides, sufficient to financially justify this protracted litigation. I therefore suspect the wavy pattern is more functional than ornamental, else the alleged infringer would have just switched to another ornamental pattern, like straight lines.
I find it curious that you license design patents – which according to Dennis serve as virtual trademarks – to competitors. Why would someone get a design patent on a design that represents their brand and then license it to a competitor? Regarding Serius, might they have adopted the wavy pattern to try and capitalize on a design made popular by Columbia? That is the motivation for most infringers – to copy someone else’s successful design. After all, Serius had the universe of heat-reflective patterns to adopt, including straight lines, yet they chose to copy Columbia’s.
“ Serius had the universe of heat-reflective patterns to adopt, including straight lines, yet they chose to copy Columbia’s”
Nobody owns a valid patent on “a set of 8 -12 wavy lines,” Perry. On top of that, the alleged infringer’s material has its logo plastered all over the wavy lines, which distinguished it instantly from tge patented design. A six year old can spot the difference from across the room. Only a lawyer or a confused law professor would look at those patterns and see infringement.
I beg to differ. U.S. Patent D657,093 is presumed valid. Neither Serius, nor you, has produced clear and convincing evidence that it is invalid. Regarding the logo on Serius’ products, this is the only terrible finding of the CAFC’s decision in that they held that it can be taken into account in determining infringement. So, a victory for you, Prophet.
You can presume whatever you like but the patent is invalid. I have prior art in my house that destroys the patent and everyone should feel free to copy these wavy lines onto whatever material they choose.
Let’s see your prior art
Copy.. onto whatever….
There you go again, thinking of designs in the abstract….
Perry – you may have forgotten, but this is Malcolm Mooney.
link to etsy.com
Here’s a result of a two second search. Silver in the fabric makes it “heat reflective.”
Design patents are quite useful when exact copying is either necessary or expected, especially since China started allowing partial designs. Examples include standards; “must fit” as allowed in the US for now (but not Europe); compulsory licensing of patents to alternative sources at the demand of customers who refuse to be sole-sourced post-COVID; and knock-off actors, particularly in Asia.)
Yes, Pete, you are a rolling stone. See LKQ…
Pete,
With all due respect, just because you are involved in transactional work (license deals), does not mean that you know design patent law.
Sit down, Pete! Billy is talking.
lol – I am most certain that the irony is lost on you.
>it is functional
It’s probably anti-functional here i.e., the pattern makes the reflectivity/emissivity properties worse. But it does look cool…which is the point.