The Scope of Comparison Prior Art in Design Patent Infringement

by Dennis Crouch

The pending appeal in Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, Inc., 2021-2299 (Fed. Cir. 2022) raises a number of important design patent law questions, including an issue of first-impression of the scope of “comparison prior art” available for the ordinary observer infringement analysis under Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (en banc) and its key predecessor Smith v. Whitman Saddle Co, 148 U.S. 674 (1893).  Since Egyptian Goddess, the Federal Circuit has placed renewed importance on the claimed “article of manufacture,” but not in the comparison portion of infringement analysis.

In 2021, the Federal Circuit issued the important, albeit short-winded, design patent decision In re SurgiSil, L.L.P., 14 F.4th 1380 (Fed. Cir. 2021).  In SurgiSil, the court held that the particular article-of-manufacture recited by the claims should not be ignored, even for anticipation purposes. SurgiSil’s cosmetic lip implant has a remarkably similar shape to lots of other two-pointed cylinders.  As an example, the image above shows the SurgiSil lip implant (bottom) compared against a prior art blending stump (top) sold by Blick.

The PTAB found SurgiSil’s claim anticipated, but the Federal Circuit reversed–holding that a blending stump does not anticipate a lip implant.

Utility patent attorneys are familiar with the Schreiber decision that allows for non-analogous art to be used for anticipation rejections.  In re Schreiber, 128 F.3d 1473 (Fed. Cir. 1997)(“whether a reference is analogous art is irrelevant to whether that reference anticipates”). In some ways, Schreiber could be seen as intension with SurgiSil.  In reality though the two decisions fit well together and SurgiSil did not make a special design patent rule or reject Schreiber.  Rather, Surgisil simply interpreted the claim at issue as requiring a lip implant and then found that a non-lip-implant didn’t satisfy that claim limitation.    I will note that SurgiSil was a patent applicant’s appeal from the USPTO.  The case was remanded back to the USPTO 10 months ago, and not patent has issued yet. I expect that the examiner has now rejected the claim on obviousness grounds.

SurgiSil, coupled with the court’s prior decision in Curver Luxembourg, SARL v. Home Expressions Inc., 938 F.3d 1334 (Fed. Cir. 2019), place new weight on the  claimed ‘article of manufacture.’ On open question is how this focus should play out in the infringement analysis under Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (en banc).

A design patent’s scope is typically determined by its recited article of manufacture and single embodiment shown in the drawings.  An accused design does not have to exactly match the drawings.  Rather, what we do is ask whether an “ordinary observer” would be deceived that the accused design is the patented design.  Egyptian Goddess. Before making the comparison, the ordinary observer is supposed to become familiar with the prior art (if the issue is raised).  The prior art is used to help measure the scope of the claims.  If there is no prior art remotely similar, then the patented design is going to be given a broader scope by the ordinary observer; on the other hand, when the prior art is quite similar to the patented design the patent scope will be narrow.  Of note, comparison prior art is only used at the accused infringer’s behest, and so the issue will strategically arise only when the defendant has evidence of very similar prior art.

The open question: What prior art should we look to when making a comparison? That question is before the court in Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, Inc., 2021-2299 (Fed. Cir. 2022) (pending before the Federal Circuit).  In the case, the accused infringer (Seirus) had some spot-on comparison prior art, the only problem is that the references were sourced from disparate articles of manufacture far afield from Columbia’s claimed “heat reflective material.”  The case is potentially big because of the profit disgorgement remedy available in design patent cases. 35 U.S.C. 289 (“[the infringer] shall be liable to the [patent] owner to the extent of [the infringer’s] total profit”).  And, we might expect a strong potential that a decision here on the infringement side will reflect-back to also apply in any obviousness analysis.

I have written before about the Columbia v. Seirus lawsuit that involves the reflective (but water permeable) inner layer that both use to line their cold weather gear.  Columbia’s Design Patent No. D657,093 claims the “ornamental design of a heat reflective material” as shown the drawings. As you can see from Figures 1 and 2 below, the design shows a wave-like design, which the inventor (Zach Snyder) says was inspired from his time living in Arizona and seeing heat ripple mirages rising from the ground.

The Seirus product is similar and uses a wave/ripple design.  Early Seirus products lacked branding, but Seirus later added its brand name to the designs in order to promote its brand and avoid confusion. If you have seen these designs on apparel liners, it is coming from Seirus brand.  Although Columbia has the patent, the company initially launched its product using a pixilated design (covered by a separate design patent) and later decided to not adopt the wave in order to avoid confusion with Seirus.

At trial, the jury was shown images of the patent as well as the accused product in order for it to conduct the ordinary observer test.  The Egyptian Goddess infringement analysis also requires consideration of the prior art.  Seirus presented some visually close references, including a 1913 utility patent covering the inner tire liner. (Fig 5 below from US1,515,792). The court limited the scope of comparison prior art to only fabrics for the Egyptian Goddess comparison. That tire patent was allowed because the inner layer was in a fabric form.

At trial, the jury sided with the defendant Seirus and found the patent not infringed.

Now on appeal, the patentee argues that infringement analysis prior art (“comparison prior art”) should be limited by the patent’s stated article of manufacture.  If the Columbia court had limited comparison prior art to only those showing “heat reflective material,” it would have all been excluded.  But, the district court allowed-in the prior art from unrelated arts, and then went further by precluding Columbia from asking the jury to reject the unrelated comparison prior art.  The basic idea for limiting comparison prior art stems from the same notions expressed by the Federal Circuit in SurgiSil and Curver Luxembourg: design patents do not cover bare designs but rather designs “for an article of manufacture.” 35 U.S.C. 171.  And, that “article of manufacture” portion  of the law should remain at the forefront of all design patent doctrines.   In Egyptian Goddess, the patent covered the “ornamental design for a nail buffer” and all the comparison prior art references were also nail buffers.  543 F.3d 665 (Fed. Cir. 2008).  Likewise, in Whitman Saddle, the design patent at issue was directed to a “design for a riding saddle,” and the prior art used in comparison was also a riding saddle. 148 U.S. 674 (1893).  But, the district court in Columbia refused to limit comparison prior art to only the same article of manufacture.  The district court concluded that such a ruling would improperly import too much functional into the design patent right — design patents cover form, not functionality.

In my view, Columbia’s proposal of a strict article-of-manufacture limitation is too limiting because it does not reflect the perspective of either a designer or an ordinary observer and because it offers the potential opportunity for undue gamesmanship in the writing of the claims. As an alternative rule of law, the patentee suggests that the scope of comparison prior art be limited to articles that are either the same article of manufacture or “articles sufficiently similar that a person of ordinary skill would look to such articles for their designs”  This test comes from Hupp v. Siroflex of Am., Inc., 122 F.3d 1456 (Fed. Cir. 1997) and was used to define the scope of prior art for an obviousness test rather than comparison prior art for the infringement analysis.  But, it seems to roughly make sense that the same scope of prior art should be considered both for obviousness and for infringement analysis — although obviousness is from the perspective of a skilled designer and infringement is looks to the ordinary observer (i.e., consumer).

I would argue that even Columbia’s broader alternative approach is too narrow.  In Columbia’s asserted patent, the images (below) show the use of the material as an inner liner for various articles of clothing as well as an outer liner for a sleeping bag.  It would make sense to me that an ordinary observer might be deceived by other apparel liners using the same wave, even if not “heat reflective;” and thus that a jury should be permitted to consider those products as comparison prior art in the Egyptian Goddess infringement analysis.  Unfortunately for Columbia, my broader notion of comparison prior art makes their case difficult since at least one of the comparison references shown to the jury was the wave pattern used as the outer liner of a rain jacket, US5626949, and all of the references are some form of fabric.  Further, in some ways Columbia opened the door to a very broad scope of comparison prior art by including Figure 1 (shown above) claiming the material as a pattern apart from any particular application (such as those shown in other figures). Liner Patent

There are two primary procedural mechanisms to limit the scope of comparison prior art. (1) exclude prior art from consideration as irrelevant; (2) allow the jury to consider the evidence, but allow the parties to also introduce evidence regarding the extent that the prior art might influence the ordinary observer or skilled artisan.  These are all issues that folks have repeatedly worked through (and continue to argue about) with regard to validity and obviousness in utility patents, but they remain undecided in the design patent infringement context post Egyptian Goddess.  The appellate brief asks three particular questions on point:

  1. What is the relevant scope of “comparison prior art” that is to be considered in a design patent infringement analysis?
  2. Is it error to instruct the jury that all prior patents are comparison prior art to a design patent, and to fail to instruct the jury to limit the scope of comparison prior art to those related to the claimed article of manufacture?
  3. Was it an error to prohibit Columbia from distinguishing comparison prior art on grounds that it failed to disclose a the claimed article of manufacture?

Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, Inc. (Fed. Cir. 2022) (Appellant’s opening brief).

Now lets talk about the Logo. The figure above might be the key exhibit of the whole case.  The figure shows the Seirus design with an overlay from Figure 2 of the Columbia patent.  As you can see, the waves fit up almost perfectly (after a bit of resizing). A detailed analysis can find other differences in the waves, but the key visual difference is the repeated Seirus logo.

The importance of those logos was a key element of the prior appeal in the case. Columbia Sportswear N.A., Inc. v. Seirus Innovative Accessories, Inc., 942 F.3d 1119 (Fed. Cir. 2019) (Columbia I)  The leading precedent of L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1124 (Fed. Cir. 1993) indicates a copycat cannot escape design patent infringement by labelling products with a different trade name. (Images of the L.A. Gear patent and Accused infringer below).  In Columbia I, the Federal Circuit distinguished L.A. Gear by explaining that the precedent “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.”  Id.   Rather the logo should be considered for its “effect of the whole design.” Id. (Quoting Gorham).

In the second trial, Seirus spent some time focusing on the logos as important design elements and that may well have made the difference for the jury. In particular Seirus provided evidence that the logos were arranged and designed in a decorative way to be both ornamental and to catch attention.  In addition, the logos are used to break-up the wave so that folks don’t get hypnotized.  In other words, the logos were more than mere labeling.  Still, on appeal Columbia has asked the appellate court to address these issues once again in the form of objections to the jury instructions:

  • Did the court err by failing to instruct the jury – that in this case – confusion (or lack of confusion) as to the source of goods “is irrelevant to determining whether a patent is infringed?”  Columbia suggests that the problem comes about with the infringement instructions that focus on “deceiving” consumers. Columbia also implies that in some cases customer confusion as to source could be relevant evidence — such as in cases where the patentee also manufactures a product covered by the patent.  Here, however, Columbia does not practice the patented invention.
  • Did the court err by failing to instruct the jury that “Labelling a product with source identification or branding does not avoid infringement?” (Quoting L.A. Gear).  This final question appears to be rehashing the issue decided in Columbia I and so has presumably become unappealable law of the case.  For its part, Columbia argues that “[t]o the extent Columbia I is in conflict with Unette, Braun, or L.A. Gear, the prior cases control.”  On this point, it appears that Columbia may be preserving the issue for en banc or Supreme Court review.

Read the briefs:

48 thoughts on “The Scope of Comparison Prior Art in Design Patent Infringement

  1. 8

    “references were sourced from disparate articles of manufacture far afield from Columbia’s claimed “heat reflective material.”

    What, pray tell, is the scientific and objective definition of “heat reflective material”? Seems important to at least the party trying to make a Federal case out of an absurd “right” that should never have been granted to them.

    1. 8.1

      Seems important to at least


      Why would “scientific and objective definition” be important under design patent law?

      Are you thinking that a PHOSITA would somehow need that to “decipher” the claims (vis a vis In re SurgiSel’s inclusion in the claimed invention the context of the object to which the ornament is applied to?

      Perhaps you would prefer that “pure ornamentation SANS any designation (in the claim) be some type of proper scope of design patents?

      (Let me remind you that this is perhaps the only section of patent law that we find some agreement in: design patent law should NEVER have been attempted to have been shoe-horned into utility patent law)

      1. 8.1.1

        The term “heat reflective material” is being used by the patentee here in a legal context to affect the scope of the grant. It’s a description of a type of material based on its utility.

        You think the term should be given a subjective non-scientific definition? Because … why? Tell everyone, Mr. “Rule of Law”.



          You did not even come close to answering any of my questions to you, Malcolm.

          Had you done so, you would not have needed to ask your own rather silly question in reply.

          You do know that the legal fiction of the Person Having Ordinary Skill In The Art IS the appropriate lens (rather than your rather ham-fisted “scientific and objective,” eh?

          Why in the world would YOU then suggest that very odd “ subjective non-scientific” — which is nowhere near anything that I have ever postulated in regards to DESIGN patent law (you know, for that Rule of Law thing which I DO nail all of the time).

  2. 7

    If it is possible to obtain a design patent on a “wave pattern” in the 21st century and get to a jury trial on such a patent then can we please just put a fork in the design patent system and admit it is completely jacked up?

    Seriously. Scrap it and start over.

    1. 7.1

      DC: “ Further, in some ways Columbia opened the door to a very broad scope of comparison prior art by including Figure 1 (shown above) claiming the material as a pattern apart from any particular application (such as those shown in other figures).”

      Ya think?

      1. 7.1.1

        claiming the material as a pattern apart from

        No, that is clearly NOT an accurate statement, nor would it be a viable position to take.

        I “get” you do not like Design Patent Law (you are not alone), but please stop making things up — you only look even more f00l1sh and on an emotional rant.

  3. 6

    I’m confused. Prof. Crouch stated that he felt that there might be a 103 rejection holding up issuance of a patent, and so I thought, well, let’s just check Patent Center and see what’s up. But when I type in the appl. ser. no. 29/491, 550, it does not allow me to see the prosecution history. I thought that once a case goes to the CAFC, irrespective as to whether or not the applicant had previously kept the file history private, it becomes public, but that does not appear to be the case, at least for design applications. What am I missing here?

      1. 6.1.1

        So a design application’s prosecution history is kept private even when it is before the CAFC? That makes no sense to me.


            I am pretty sure that for utility applications that are filed only in the US with a non-publication request, if that case goes before the CAFC, the prosecution history becomes publically available. So why is this different?


              [If] utility applications that are filed only in the US with a non-publication request… [go] before the CAFC, the prosecution history becomes publically available.

              This just is not accurate. You can prove to yourself that it is not so by trying to pull the file wrappers on any number of Gil Hyatt’s applications that have been to the CAFC. There is no “if it goes to the CAFC, it becomes open to the public” rule, either in statute or regulations.

  4. 5

    Okay can we try for a little bit of sanity when discussing this horrifyingly awful design patent application in Surgisil that should never have been applied for and hopefully (for the sake of comedy) will never be granted?

    Some ridiculous person below writes: “[If] I ask a dozen designers I know if they would look to art stumps when designing a lip implant, I’d get back 12 “are you kidding me?”

    Maybe they are laughing at you and not with you because the question itself is so daft and it misses the point by a thousand miles.

    A far better question is simply: what is appropriate prior art to consider when looking at the allegedly ornamental design of the shape of a useful object?

    And the answer is: look at other useful objects (as opposed to objects that are ornamental, like … ornaments).

    There is no way that the “ornamental” “design” of the lip implant is non-obvious. Granting a patent on the so-called “design” would be sillier than arguing that design patent law is anything more than a complete joke propped up only by abusers of the system and a couple of stand up comedians posing as law professors.

    1. 5.1

      “A little bit” of sanity is a VERY generous self-description.
      Give me – if you dare – your real name and address so I can send you this box of pacifiers that I had been saving for MM, who had long been the king of this particular mountain, the top of which you now have all to yourself.

  5. 4

    As to the trademark issue, I see the issue as being the size of the pattern claimed or “swatch.” If Fig. 2 is the size of the swatch, then the swatch fits between the Serius logos therefore infringement. However, Fig. 1 is the size of the swatch so there are at least 4 logos in there. Additionally, when I look at Figs. 1 and 4-10 in the patent (but not so much in the figure on the first page of the patent) I see a secondary wave pattern, which is probably a trick of the eye. I don’t see this secondary pattern in the samples of Seirius fabric.

  6. 3

    Dennis, you said: “I will note that SurgiSil was a patent applicant’s appeal from the USPTO. The case was remanded back to the USPTO 10 months ago, and not patent has issued yet. I expect that the examiner has now rejected the claim on obviousness grounds.”
    A 103 rejection of a lip implant design based on an art tool should fail, since 103 requires that the person to whom the invention (design) must be obvious is one of ordinary skill in the art “to which the claimed invention pertains.” An art tool is clearly outside the “art to which the claimed invention pertains” and would not be considered by a POSITA who is designing a lip implant.

    1. 3.1

      It appears that the ‘power’ in in re SurgiSil (the ‘directed to’ portion of the claim) does NOT want to be recognized.

      There is a non-linear expansiveness in “this type of SPECIFIC manufacture — not that one” that seems to draw fear from the punditry.

    2. 3.2

      Thanks Perry – Based upon what I know about the SurgiSil case, I agree that the blending stump doesn’t seem like analogous prior art. Of course the PHOSITA we’re talking about here folks doing ornamental design and so would draw from a different set of sources than PHOSITA looking to solve a technical problem.

      1. 3.2.1

        Perhaps. But if I ask a dozen designers I know if they would look to art stumps when designing a lip implant, I’d get back 12 “are you kidding me?”

      1. 3.3.1

        Good question. I’ve been citing In re SurgiSil in several different cases with 102 and/or 103 rejections, and each time the Examiner has withdrawn the reference(s) and cited s new one(s). Perry’s posted in the past that it takes the USPTO some time to form new policy around new case law but for cases relying on In re SurgiSil, there seems to be a “drag out prosecution” policy going on. It’s a gross abuse of power at this point.


            What does this get ipguy or anyone similarly situated? Does it automatically get him an allowance if they back down? Seems like they just keep coming back with new rejections based on new art.



              You are correct — there is NO such ‘automatic allowance.’

              But the Office would open itself up to malfeasance charges (a la some “despised guy” on the utility patent side), were the Office not be making a good faith attempt to advance prosecution.

              Clearly here, the point is that “pure design” (itself NOT allowed) is immensely more difficult to reject based on the Court’s express tie to the claim being (in both directions) limited to the VERY specific article of manufacture PORTION of the claim.


          As of Surgisil and many many others (including you, most likely) aren’t abusing the design patent “system.”


            I know that you know this, but doing things YOU do not like is just not the same thing as “abusing the system.”

            Maybe NOT dive into that one-bucket syndrome of yours, eh Malcolm?

  7. 2

    The logo issue is particularly troubling. If upheld in favor of Serius, it’d be a roadmap to escape liability for every infringer: it’s ok to copy the patented design, but make sure you put your name/logo on it, even if it’s tiny. Awful.

      1. 2.1.1

        Since Columbia’s Fig. 2 is surrounded by broken lines, and if it is resized to fit in an area of the Serius product that is unadorned by the Serius logo (note your illustration of “Serius’s design”), that in and of itself should negate the logo issue.


          This is an important issue that I glossed over in the case. What exactly does the court mean by the “design as a whole.” I think you are correct that we’re taking about the patented design, the accused product might have lots of other portions, but those are seemingly irrelevant.


            I agree that “other portions” of Serius’s design are irrelevant. Think of a utility patent claim to a bike comprising A, B, C + D – an infringer whose bike has A,B,C & D can’t avoid liability by hanging a basket, or a carburetor, on the handlebars.

            There’s even a bigger issue in the case. Assuming liability, will the infringer’s total profit under Sec. 289 be based on Serius’s profits on the heat reflective material itself, or its end products as sold (gloves, socks, shoes, etc.) to which the heat reflective material was applied (as shown in the figures of the patent, part of the claimed “design as a whole”)? The retail profits on the end products will be much, much larger than that on the wholesale material used to make them.


              “ Think of a utility patent claim to a bike ”

              How about think about the fact that infringement of a utility patent is based on completely different factual considerations and then please stop making ridiculous analogies to utility patents when discussing design patents.

      2. 2.1.2

        Re: “We need a bit of a showdown here between trademark and design patent law.” [Un-muddling?]
        How about the need for a Sup. Ct. showdown for the Fed. Cir. disparate treatment of design patent case law for obviousness and claim interpretation / infringement, including ignoring KSR and Markman?


          Oh, gosh, Paul. Don’t you think that by now, if KSR was a semi-meaningful issue applied to design patents (it isn’t), that someone would have litigated it by now?

          The Federal Circuit has not ignored Markman for design patents. Egyptian Goddess has cabined it somewhat in saying that a proper claim construction, rather than consisting of a 5 page “verbal description”, can simply refer to the design patent drawings. Which is 100% correct.



            You have tried nigh countless times (and I have attempted a similar number of reminders) to teach Paul how case law is applied in the contextual sphere of design patents.

            One may (rightfully) conclude that Paul really has NO desire to understand this.

    1. 1.2

      The “part” that is ornamental is the overall shape, which is claimed, and was not subject to a functionality rejection.


          Apotu tends to be more reasonable, so I would be more interested in his reply than Malcolm’s attempted snide rebuttal

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