by Dennis Crouch
I have written a few posts about the design patent infringement case Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, Inc. In November, the Federal Circuit vacated the lower court’s summary judgment of infringement — holding that logo placement in this case might allow the defendant to avoid an infringement judgment. This holding is in tension with the court’s 1993 decision in L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117 (1993).
In the last post, I included an image of my Seirus glove liner. My first update is that the glove liner has completely fallen apart — apparently it is a liner and not intended simply as a biking glove.
Second update is that Columbia (the patentee) has petitioned the court for en banc rehearing to address issues of design patent infringement. Questions presented:
- When conducting a design-patent infringement analysis under Gorham v. White, may a fact-finder consider the addition of brand names or other labeling on an otherwise infringing design?
- When conducting a design-patent infringement analysis under Gorham v. White, should the fact-finder compare the overall appearance of the claimed design (i) to the overall appearance of the accused design, or (ii) to the overall appearance of the entire accused product, which may include aspects extraneous to the claimed design (e.g., logos, tradenames, color, size, etc.)?
[Columbia-petition]. The new petition added design patent expert Christopher Carani representing Columbia. The Court has requested a responsive brief from Seirus due January 30, 2020. Several amici are also planning to submit briefs, although there is some fight over whether the court will allow them an extension of time. Amici include a “Group of Interested Practitioners” including Tracy-Gene Durkin, Robert Katz, and Perry Saidman. The Industrial Designers Society of America, Inc. (represented by Damon Neagle) and Bison Designs / Golight (represented by Ian Walsworth) are also expected to support the petition. In opposing the extension, Seirus explained that “there is no reason a group comprised of at least seven design patent attorneys from at least six law firms cannot draft a 2,600 word brief in the time allotted.” In my contrary experience, a group of seven patent attorneys rarely accomplish anything within the time allotted.