Columbia Sportswear v. Seirus Innovative Accessories (Fed. Cir. 2019)

It is a bit chilly here in Missouri and so I wore my Seirus gloves that I purchased after the last-time I wrote about this case.

Note here that my gloves are the cheap liners, the lawsuit focuses more on the expensive gloves and clothing that have the heat-reflective material on the inner liner. My gloves also show a different pattern than the original accused HeatWave product.

In the case, Columbia asserted both a design patent (US.D657093) and a utility patent (US.8453270) and the case resulted in a partial victory for Columbia — Jury award of $3 million in damages for design patent infringement but a determined that the asserted utility patent were invalid.

The ‘093 design patent is directed to a “heat reflective material” as shown in the drawing above.  Columbia won its design patent case on summary judgment and then a jury awarded $3 million in damages.  On appeal, the Federal Circuit has vacated the summary judgment — holding that the district court improperly decided disputed issues of material fact reserved for a jury.

Design patent infringement is a question of fact. . . . The “ordinary observer” test is the sole test for determining whether a design patent has been infringed. Egyptian Goddess (Fed. Cir. 2008) (en banc). The test originates from the Supreme Court’s Gorham decision, which provides that “if, 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. 511, 528 (1871)). . . . The ordinary observer is considered to be familiar with prior art designs, and “[w]hen the differences between the claimed and accused designs are viewed in light of the prior art, the attention of the hypothetical ordinary observer may be drawn to those aspects of the claimed design that differ from the prior art.” Crocs (Fed. Cir. 2010).

Seirus’ key argument here is that the location of its logo, coupled with differences in line thicknesses and uniformity raise questions of fact sufficient to get the case to the jury — so that a reasonable juror could find no infringement.  The district court disagreed with that argument — finding that  “even the most discerning customer would be hard pressed to notice the differences between Seirus’s HeatWave design and Columbia’s patented design.”

On appeal, the Federal Circuit has sided with the adjudged infringer holding that the logo should be considered as part of the non-infringement analysis. In L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1125 (Fed.Cir.1993), the Federal Circuit wrote that “[d]esign patent infringement … does not … allow of avoidance of infringement by labelling.” That decision led the district court here to come to the conclusion that it is “well-settled that a defendant cannot avoid infringement by merely affixing its logo to an otherwise infringing design.”

On appeal, the Federal Circuit instead distinguished L.A. Gear.

In evaluating infringement there, we explained [In L.A. Gear] that design infringement is not avoided “by labelling.” A would-be infringer should not escape liability for design patent infringement if a design is copied but labeled with its name. But L.A. Gear does not prohibit the fact finder from considering an ornamental logo, its placement, and its appearance as one among other potential differences between
a patented design and an accused one. Indeed, the fact finder is tasked with determining whether an ordinary observer would find the “effect of the whole design substantially the same.”

Slip Op.

Regarding wave thickness, the district court held that thickness was not claimed in the patent. Obviously wrong because everything in the drawing is claimed.

[T]he claim of the ’093 patent is drawn to the “ornamental design of a heat reflective material as shown and described,” and Columbia’s design has uniform line thickness in every figure in the patent.

Slip Op. Note here that the district court cited to several decisions holding finding that design patents were not limited to “any particular size” and thus, for instance could simultaneously cover both a motorcycle for humans and one for Ralph the Mouse. 

Those precedents didn’t fit here because we’re not talking about the overall sizing but rather relative sizing and uniformity.

Finally, the district court also noted several other differences between the patent and the accused product, but found them each minor. On appeal, the Federal Circuit found the approach improperly piecemeal and did not properly consider overall visual impression.

[T]he district court’s piecemeal approach, considering only if design elements independently affect the overall visual impression that the designs are similar, is at odds with our case law requiring the factfinder to analyze the design as a whole. See Amini Innovation Corp. v. Anthony Cal., Inc., 439 F.3d 1365, 1372 (Fed. Cir. 2006). An ordinary observer is deceived by an infringing design as a result of “similarities in the overall design, not of similarities in ornamental features considered in isolation.” Id.

Slip Op.  Thus, the case is remanded and will now likely go to a jury trial.

In the appeal, the defendant also argued that profit disgorgement under 25 U.S.C. § 289 should be determined by a judge rather than a jury.  The Federal Circuit noted that to be an important question, but did not reach it on appeal after having already vacated the infringement findings.

Note here that the ornamental design is directed to a heat reflective material -getting close to a design in the abstract. See Curver Luxembourg, SARL v. Home Expressions Inc. (Fed. Cir. 2019).

Federal Circuit Rejects Patenting Designs “in the Abstract”

Utility patent — the jury found asserted utility patent claims invalid as both anticipated and obvious. On appeal, Columbia argued that the obviousness evidence lacked “competent expert testimony” that the Federal Circuit has previously required in complex cases to explain the prior art to a jury. On appeal, the court ruled that the invention here was simple enough so that expert explanations were not required:

[W]e are not persuaded that the legal determination of obviousness in this case requires such evidence. The technology here—coated materials for cold weather and outdoor products—is “easily understandable without the need for expert explanatory testimony.”  Quoting Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324 (Fed. Cir. 2009) and Centricut, LLC v. Esab Grp., Inc., 390 F.3d 1361 (Fed. Cir. 2004)). . . . There is no discussion of thermodynamics or the mechanism that yields the claimed material’s heat retentive properties in the patent. Thus, given the patent and references’ general, easily understood language, this is not a case that requires expert explanation.

Slip Op.

Venue: The venue setup for this case was interesting.  It was originally filed in Oregon and then was transferred to California following T.C. Heartland.  Since the case was already far-along in the litigation process (post summary judgment), Judge Hernandez who handled the case in Oregon also got himself temporarily assigned to the case in California and ran the trial from there.  On appeal, Columbia argued that the transfer was improper because Seirus had waived its venue argument. However, the Federal Circuit found no problem — holding that the district court did not abuse its discretion in excusing Seirus’s waiver of its venue defense.

First Post-Samsung Design Patent Damages Verdict

By Sarah Burstein, Professor of Law at the University of Oklahoma College of Law

Gamon Plus has filed a petition for rehearing in its design patent dispute against Campbell (previous Patently-O coverage of the case by Professor Crouch here).

Like the majority and the dissent in the panel decision, the petition does not directly address the main difficulty raised by this case—namely, how should we apply the design patent “primary reference” test for multi-article designs?

According to Gamon Plus, its two patents claim “designs of displays developed by Appellee Gamon Plus specifically for the display of Campbell Soup cans in stores.” Here are the illustrations Gamon Plus included in its petition for rehearing:

However these claims are interpreted (a matter of much dispute in this case), they are each clearly directed to what we might call a “multi-article” design. Each design defines parts of the shapes of separate articles—a dispenser and a can.

The problem is that the design patent “primary reference” requirement was created in the context of—and implicitly assumes—a single-article design. The lesson in Durling and Rosen was that you can’t create a Franken-article to serve as a primary reference. If the patent (or application) claims a design for a table, you can’t splice parts of different tables together to form a single, hypothetical table. You have to find a table that actually exists (or a sufficient description thereof) in the prior art.

But what happens when the design extends over separate articles? Gamon Plus (and Judge Newman, in dissent) seem to argue that there must be a single reference that explicitly discloses both articles being used together in the same way. That can’t possibly be right—especially on the facts of this case.

Gamon Plus conceptualizes its design as a “display” with a label and a can with “specific dimensions” is placed “at a specified relative location spaced below the [dispenser] label.” But Gamon Plus didn’t invent that can shape. To the contrary, as quoted above, Gamon Plus says the dispenser was designed specifically for Campbell’s Soup cans.

The only shape that Gamon Plus invented was the shape of the dispenser. That shape may be defined by and adapted to the shape of the can. And it may be meant to display that can in a particular position. But a patentee should not be able to effectively immunize a design for one article from § 103 scrutiny merely by claiming the “design” is really the use of that article with some other (unoriginal) article.

Whether inherency is the best way to get at these issues is another question. Perhaps, when it comes to multi-article designs, the primary reference test should be applied on an article-by-article basis. Or maybe § 171 should be interpreted to exclude multi-article designs. But in any case, it would be nice to see the Federal Circuit confront these issues directly.

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Side note: As someone who’s studied design patent nonobviousness for a long time, the thing I found most surprising thing about this decision was that the majority thought Linz looked similar enough to be a primary reference—hypothetical can or no hypothetical can. In recent cases, it’s been hard to see much blue sky between “basically the same” (the primary reference standard) and “the same” (the anticipation standard), at least as the former is applied by the Federal Circuit. For more on some of these cases, and design patent nonobviousness more generally, see this article and this post. If Campbell signals a shift away from that overly strict application of the test, that would be a welcome development.

by Dennis Crouch

In re Copeland-Smith (Fed. Cir. 2019)

David Copeland-Smith is a leading soccer coach and has been training players for years using his registered trademark BEAST MODE SOCCER. [beastmodesoccer.com] .

The mark was registered early-on for “coaching services.” However, Copeland-Smith also wanted a registration covering t-shirts and soccer balls. (The amended application disclaimed rights to SOCCER except as part of BEAST MODE SOCCER.)

The problem for Copeland-Smith is that other folks have their own registered Beast-Mode marks. This include’s former NFL’r Marshawn Lynch’s BEAST MODE apparel line. [beastmodeonline.com].

In this situation, the PTO asks whether the applicant’s mark is likely to cause confusion with another registered mark. § 2(d) of the Lanham Act (15 U.S.C. § 1052(d)).  The du Pont factors serve as the guide in this likelihood of confusion analysis.  Here, the focus was on factors 1 and 6:

1. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression.

6. The number and nature of similar marks in use on similar goods.

Factor 1 – similarity of the mark —  Copeland-Smith argued that BEAST MODE SOCCER has substantial dissimilarity from the shorter BEAST MODE. On appeal, the Federal Circuit agreed with the TTAB that the word SOCCER shouldn’t be given much weight because it is a generic/descriptive term and that BEAST MODE is the most memorable and impactful portion of the mark.  The court also affirmed the potential overlapping markets because Lynch’s mark is not tied to “football themed” apparel, but rather “encompass trade channels through which soccer clothing is also sold.”  Note here that analysis of these factors is a question of fact, and so the Board’s conclusions were given substantial deference on appeal.

Factor 6 – number and nature of similar marks — Copeland argues that Lynch’s mark is weak because “Beast Mode” is a well known American slang referring to using “high effort or energy in exercise or sport.” (Citing the UrbanDictionary). (I’ll note that several UrbanDictionary definitions refer directly to Lynch. E.g., “beastmoed: to go crazy like marshawn lynch does.”) (I’ll also note the following definition “Patent: To take an existing commodity and claim ownership over its production rights.”)

On appeal, the Federal Circuit again agreed with the TTAB’s factual conclusion that Factor 6 favored denial-of-registration.  The court noted that Copeland-Smith produced a “large quantity of evidence”, but that the evidence lacked “quality.”

The Board closely inspected the evidence and determined that, despite the volume of evidence submitted, much of it was of limited probative value on the question of the weakness of Lynch’s BEAST MODE mark for t-shirts and other clothing.

Denial affirmed – no registered mark for BEAST MODE SOCCER on clothing or soccer balls.

Chestnut Hill Sound Inc. v. Apple Inc. (Supreme Court 2019)

In an appeal from an inter partes review decision of unpatentability, a losing Patent Owner-Appellant is more than three times as likely to receive a one-word summary affirmation than a losing Petitioner-Appellant. The Federal Circuit issues these one-word summary affirmations under Federal Circuit Rule 36.

This Court has already requested briefing on a related question regarding Federal Circuit Rule 36(e) in Straight Path IP Group, LLC v. Apple Inc., et al., Sup. Ct. No 19-253.

The Questions Presented below address disparities of outcomes for Patent Owners versus Petitioners, but they may be considered companion issues.

1. Can a court ever choose to write reasoned opinions for one class of losing appellants and not another under the Due Process and Equal Protection Clauses; and if so, how disparate can the issuance rates of reasoned opinions, versus summary affirmations, be for different classes of appellants?

2. Is the Public entitled to reasoned opinions when the absence of those opinions diminishes the Public’s right of access to the courts and ultimately results in the erosion of the Rule of Law?

ChestnutHillPetition Oct292019.

[Note, the Federal Circuit issued eight judgments on appeals today: Six R36 affirmances without opinion; and two non-precedential opinions.]

From the Petition:

by Dennis Crouch

The chart above shows that the trend is continuing — more inventors per patent application.  The rising series are applications with 3 or more listed inventors and the declining series are those applications with only 1 listed inventor.  The percentage of applications with 2 listed inventors is remaining fairly constant over the past 15 years.  I’ll do a follow-up showing that more-inventors correlates with higher allowance rate.  The series stops in Spring 2018 because of the 18-month publication delay of new applications.

by Dennis Crouch

Telefonaktiebolaget LM Ericsson v. TCL Corp. (Fed. Cir. 2019)

The PTAB sided with TCL — finding the challenged claims of Ericsson’s US Patent 6,029,052 unpatentable as obvious.  Only claim 18 is on appeal, which claims a method for filtering an inbound signal, including “band-pass filtering” (12); then amplifying the signal (34); then mixing (40) the signal with “inphase and quadrature oscillator signals” that were derived from a frequency-divided first oscillator signal (36) (resulting in two separate signals); then low-pass filtering both signals (42).

A key focus of the appeal is the question of whether the purported prior art – a German magazine article – was publicly available prior to Ericsson’s critical date (here 1-year before filing date of July 1, 1997).

The cover of the magazine lists a date of May/June 1996. However, Ericsson argued that the listed date on a magazine is not enough to prove that it was actually published by that time — especially here where a one-month delay discrepancy in publication would mean that the document was not prior art.  Ericsson found the article in the UCLA library — and provided evidence that it had not been received at UCLA until October 1996 — after the critical date.

TCL then provided a first letter from a German librarian who indicated that their library received access on June 19, 1996 (just before the critical date).  However, on challenge from Ericsson, the letter was withdrawn as inadmissible because the librarian refused to provide a sworn statement or to be deposed in the US.

Subsequently, TCL found Doris Michel — the “only individual TCL found who has personal knowledge of the record-keeping procedures used in 1996, was willing to sign a sworn declaration, and is willing to travel to the U.S. to be deposed.”  Michel indicated in a sworn statement that the article was “inventoried by the Library on June 18, 1996” and, if standard procedures were followed, would have been “accessible for use to the public after a processing time of 1-2 days.”

The PTAB allowed the Michel evidence and testimony and held that the article was publicly accessible (albeit in Germany) prior to the critical date.  And, as such was prior art.

Admissibility: On appeal, the patentee argued that the evidence should have been excluded by the PTAB because it was not timely.  In particular, PTAB rules require petitioner to provide sufficient evidence at the petition stage, not well into the trial phase. Under PTO Regs, supplemental information can only be submitted if it “reasonably could not have been obtained earlier.”  In this case, however, TCL did not even start looking for the librarian until after Ericsson filed its objections.

The motion to submit supplemental information must show why the supplemental information reasonably could not have been obtained earlier, and that consideration of the supplemental information would be in the interests-of-justice.

37 C.F.R. 42.123.  In this case, the Federal Circuit affirmed the PTAB decision allowing the evidence — finding that the PTAB did not abuse its discretion in determining that “consideration of the supplemental information would be in the interests of justice” — especially because Ericsson was given sufficient opportunity to respond to the evidence and to provide any contrary evidence.

Note that the Federal Circuit did not directly address the requirement of showing that the evidence could not have been obtained earlier.

As to the merits, Ericsson argued that public shelving is insufficient to show public accessibility.  Although the article/magazine were apparently not meaningfully indexed, the magazine had been published for the past thirty years.  As such, “[t]his case is unlike cases in which a single dissertation or thesis was housed in a library.”

Note here, that the appellate panel again does not provide a full analysis of its reasoning here.  Since the article/magazine was not meaningfully indexed, what were the additional features to let the court know that it was sufficiently publicly accessible? What would have connected the dots here would be (1) some showing that the publication was well known to persons interested in the subject matter; (2) that the publication was known to be in the library in-question (perhaps proven by showing that the library had a subscription for several years); and (3) that the article in question is one that would be expected to find in the magazine.

Obviousness Affirmed.

Debbie McComas (Haynes & Boone) handled the appeal for Ericsson while Julie Goldemberg (Morgan, Lewis & Bockius) represented TCL.

by Dennis Crouch

Chrimar Systems v. ALE (Alcatel-Lucent) (Fed. Cir. 2019)(en banc petition)

This case raises important Federal Courts questions that have had a major impact on patent law.  Chrimar has petitioned for en banc rehearing and five amici briefs have been filed in support — all focusing on “the rules of finality that attach to an Article III judgment, when a later PTAB decision conflicts with that judgment.”

The current Federal Circuit rule stems from a 2013 decision captioned Fresenius:

A PTAB unpatentability decision takes precedence over prior court rulings and retroactively precludes those decisions so long as any issue of liability/damages remains pending in the court case, even if validity questions were waived or finally decided in the court case.

[This is my restatement of the holdings] See XY, LLC v. Trans Ova Genetics, 890 F.3d 1282 (Fed. Cir. 2018).

The en banc petition explains that the Federal Circuit’s preclusion rule is out of line with “every other circuit” and the Restatement (Second) of Judgments.

• Chrimar En Banc Brief
• Eagle Forum Brief (Schlafly)
• US Inventor Brief (Morinville)
• USIJ, Center for Individual Freedom, and Conservatives for Property Rights Brief
• Brief of 14 Local Inventor Associations
• Brief of 20 Entrepreneurial Inventors

The difficulty for the Federal Circuit in this case is the 1922 Supreme Court case of John Simmons Co. v. Grier Bros. Co., 258 U.S. 82 (1922) that the briefs do a good job of explaining away (as does Prof. Paul Gugliuzza in his article (In)Valid Patents). “It is a stretch to claim, as the Federal Circuit has, that Simmons is controlling in modern cases involving inconsistent validity decisions by a court and the PTO.”

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Looking particularly at Chrimar’s case.  In 2016, a jury sided with Chrimar against ALE — finding the patent infringed and not invalid. In a 2018 appeal, the Federal Circuit affirmed the damages award but modified the claim construction of one of the infringed claims (one of many). Chrimar I. On remand, the district court dismissed the challenged claim after Chrimar provided ALE with a covenant not to sue on that claim.  ALE then appealed again — arguing that the disclaimer was insufficient because it did not expressly cover ALE’s customers. In response, Chrimar expressly expanded its disclaimer to make clear that it was a complete disclaimer of the claims (not just for ALE). 

Meanwhile, in 2018 the same claims at issue were all found unpatentable by the PTAB in an IPR brought by a separate party. Chrimar appealed that PTAB case that was affirmed without opinion (R.36 Judgment). Chrimar II. Relying on that R.36 Judgment, the Federal Circuit then vacated the jury verdict and district court damage award. Chrimar III.  It is this final vacatur – Chrimar III – that is the subject of the en banc petition.  Chrimar argues that the Federal Circuit was wrong to use the PTAB decision to collaterally and retroactively undermine the already final determination of the district court.

by Dennis Crouch

In re Fought (Fed. Cir. 2019)

This is a nice short USPTO claim construction case. Heartland RV (Thor Indus.) filed its patent application back in 2012 claiming a movable-wall-structure for a travel trailer.  In the example given in the patent, the wall might divide the back “garage portion” of the trailer from the front “living quarters.”  The wall can then be adjusted according to the size of your ride.

Two pending claims:

1. A travel trailer having a first and second compartment therein separated by a wall assembly which is movable so as to alter the relative dimensions of the first and second compartments without altering the exterior appearance of the travel trailer.

2. A travel trailer having a front wall, rear wall, and two side walls with a first and a second compartment therein, those compartments being separated by a wall assembly, the wall assembly having a forward wall and at least one side member, the side member being located adjacent to and movable in parallel with respect to a side wall of the trailer, and the wall assembly being moved along the longitudinal length of the trailer by drive means positioned between the side member and the side wall.

The examiner rejected issued initial and final rejections in 2014 and 2015 respectively.  The PTAB then sided with the examiner in its 2018 decision — holding that the claims were anticipated by two old prior art references.  Claim 1 by U.S. Patent No. 4,049,311 (Dietrich); and Claim 2 by U.S. Patent No. 2,752,864 (McDougal).

The problem, is that neither prior art reference is directed to a “travel trailer” but rather to more conventional shipping compartments as shown below.

Although the are directed to a modified “travel trailer,” the PTAB gave no weight to that preamble term — finding that the broadest reasonable interpretation of the claims left that term as a mere non-limiting intended use.

On appeal, the Federal Circuit has reversed and remanded — holding that the preamble term is limiting because it serves as an antecedent basis for terms found in the claims.  The Federal Circuit also noted that a “travel trailer” is known in the industry as a particular type of towable RV — not simply an intended use of a trailer.

Probably the single most-popular class of towable RV is the Travel Trailer. Spanning 13 to 35 feet long, travel trailers are designed to be towed by cars, vans, and pickup trucks with only the addition of a frame or bumper mounted hitch. Single axles are common, but dual and even triple axles may be found on larger units to carry the load.

Quote from Woodall’s RV Buyer’s Guide.

On remand, the Board will now have to decide whether to move forward with an obviousness rejection sua sponte or send the case back to the examiner for review.

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The court noted two other claim construction tidbits:

PHOSITA: Claims are construed from the frame of reference of a person of ordinary skill in the art. As per its usual approach, the Board did not articulare the level of skill in the art that should be applied in this case.  On appeal, the Federal Circuit found no error with that approach. “Unless the patentee places the level of ordinary skill in the art in dispute and explains with particularity how the dispute would alter the outcome, neither the Board nor the examiner need articulate the level of ordinary skill in the art.”

PREAMBLE: Note the claim above is not written in the traditional form: [Preamble] comprising [Body].  Here, the applicant argued that the claim does not include a preamble at all because there is no transition phrase.  On appeal, the Federal Circuit quickly rejected that suggestion. “Though this claim does not use the typical claim language (comprising) which denotes the transition between the preamble and the body, the word “having” performs the same role here.”

The chart below shows patent application status for published utility patent applications as of Oct 27, 2019 grouped by patent application filing date.

From the chart – About 95% of patent applications filed Nov 2014 (5 years ago) have been disposed-of (either issued or abandoned).  Those 5% remaining are likely to be associated with an appeal or multiple RCE filings.