by Dennis Crouch
Don’t stare too deeply into the pattern above – it embodies Columbia Sportswear’s U.S. Design Patent No. D657093 – covering “the ornamental design of a heat reflective material, as shown and described.” The recent $3 million jury verdict in Columbia Sportsware v. Seirus Innovative Accessories appears to be the first post-Samsung verdict on design patent damages.
The design patent damages verdict here is important for Columbia because the jury found the parallel asserted utility patent claims invalid as both obvious and anticipated. [ColumbiaSportsVerdict]
If you remember, the Patent Act includes a special profit-disgorgement provision for design infringement damages requiring that “Whoever during the term of a patent for a design … sells or exposes for sale any article of manufacture to which such design or colorable imitation has been applied shall be liable to the owner to the extent of his total profit.” 35 U.S.C. 289.
In the case, the district court had already ruled on summary judgment that Seirus infringed and so the only question for the jury was damages. [Columbia Infringement Decision, holding that as a matter of law “an ordinary observer familiar with the prior art would be likely to confuse Seirus’s design with Columbia’s patented design.”]
In Samsung, the Supreme Court held that, the relevant article of manufacture used as the profit-disgorgement baseline need not be the end product sold to the consumer but might be only a component of that product. As the patent images show below, the case here involves multi-component parts (clothing) and the patented inner-layer can be seen as one of the components.
Here, in Columbia Sportswear, the court instructed the jury to “First, identify the article of manufacture’ to which the infringed design has been applied. The article of manufacture may be the product as a whole or a component of that product. Second, calculate the infringer’s total profit made on that article of manufacture.” The jury instructions then explain this process as (1) first identifying whether the accused-product being sold is multi-component and then, if so, (2) considering a set of factors to determine whether the “article of manufacture” is the whole product or some sub-component. These factors include: the scope of the design as patented; the relative prominence of the design within the product as a whole; whether the design is conceptually distinct from the product as a whole; and the physical relationship between the patented design and the rest of the product. These factors match the test called-for in the Government brief in Samsung v. Apple, but that the Supreme Court declined to expressly articulate.
The jury instructions also explain the burdens:
Columbia [the patentee] bears the initial burden of producing evidence identifying the article of manufacture for which it seeks profits. Columbia may meet that burden by showing that Seirus applied the patented design to a product that was sold and further proving Seirus’s total profit from the sale. Seirus bears the burden of proving that the article of manufacture is something less than the entire product.
A snippet from the jury award is included above. You’ll note that the jury was not asked to actually define the article of manufacture, but the $3 million figure appears to be Seirus’s profits on all of its infringing sales.
At this point, it looks like both parties will appeal various aspects of the decision (after first filing post-verdict motions with the district court). Going back to Apple v. Samsung the case has been remanded back to Judge Koh who is considering party briefs on the article-of-manufacture issue and consequently. [AppleBrief][SamsungBrief]
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In a bit of wild civil procedure, the lawsuit here was originally filed in Oregon but jumped down to Southern California on September 1, 2017 — less than three weeks before the trial. The transfer was deemed appropriate under the TC Heartland case. The trick is that Oregon Judge Hernandez also had himself temporarily transferred to the S.D. Cal. so that he could continue hearing the case.
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