by Dennis Crouch
The Federal Circuit recently vacated a jury verdict of non-infringement in the long-running design patent dispute between outdoor apparel companies Columbia Sportswear and Seirus Innovative Accessories. Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, Inc., No. 2021-2299, — F.4th — (Fed. Cir. Sept. 15, 2023). The Federal Circuit held that “comparison prior art” used for infringement analysis must be tied to the same article of manufacture as that claimed. The lower court thus erred by permitting the jury to consider additional references. The decision benefits design patent holders – making it easier to prove infringement and also places more weight on skillful decisions made during prosecution to define the article of manufacture.
Columbia owns U.S. Design Patent No. D657,093, which claims an ornamental design for a heat reflective material featuring contrasting wavy lines. Seirus sells gloves and other products incorporating its HeatWave material, which features similar wavy lines. Columbia sued Seirus for infringing the ‘D’093 patent in Oregon federal court.
The district court originally granted summary judgment of infringement in Columbia’s favor. On appeal, the Federal Circuit vacated and remanded, finding disputed issues of fact regarding the impact of Seirus’s logo and certain prior art references. Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, Inc., 942 F.3d 1119 (Fed. Cir. 2019) (“Columbia I”) (holding that logo placement might allow the defendant to avoid an infringement judgment). I noted previously that this holding is in some tension with the court’s 1993 decision in L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117 (1993). On remand, the case went to trial, and a jury came to the opposite conclusion — finding no infringement. Columbia again appealed to the Federal Circuit.
Jury verdicts are given strong deference on appeal and so are usually not directly challenged. Here, the appellant skirted the verdict itself by focusing on the jury instructions, with the patentee arguing that the district court erred in its instructions regarding “comparison prior art.”
In design patent law, the test for infringement is whether an ordinary observer would find the accused design substantially similar to the claimed design, such that they would be deceived into purchasing the accused design believing it to be the claimed design. See Gorham Co. v. White, 81 U.S. 511 (1871). When the claimed and accused designs are not plainly dissimilar, courts apply this “ordinary observer” test in light of the prior art. Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 676 (Fed. Cir. 2008) (en banc). The rationale is that prior art designs provide context that can help highlight similarities and differences between the claimed and accused designs.
In its decision, the Federal Circuit held for the first time that a prior art reference can qualify as comparison prior art only if it discloses a design applied to the same article of manufacture identified in the design patent claim. This holding aligns with other design patent infringement precedent limiting the universe of anticipatory prior art and infringing designs to the particular article of manufacture claimed. See Curver Luxembourg, SARL v. Home Expressions Inc., 938 F.3d 1334, 1340 (Fed. Cir. 2019); Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1240 (Fed. Cir. 2009).
We have held that, for a prior-art design to anticipate, it must be applied to the article of manufacture identified in the claim. 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.
Slip Op. (internal citations removed). The court explained its reasoning that its narrow approach aligns with the purpose of allowing comparison prior art: “that purpose is to help inform an ordinary observer’s comparison between the claimed and accused designs—designs that, necessarily, must be applied to the same article of manufacture.” And, although the issue has not been expressly decided, prior cases also generally involved comparison prior art that had been applied to the same article of manufacture as that claimed.
Here, Columbia’s ‘D’093 patent claim was limited to ornamental designs for “heat reflective material.” Yet the district court instructed jurors that they must decide for themselves what constitutes comparison prior art, without explaining that it must involve designs applied to heat reflective material. Three particular references with wavy designs were presented to the jury, including U.S. Patent Nos. 2,539,690 (inlaying plastic threads into plastic sheets); 1,515,792 (unwoven fabric for tires); 5,626,949 (shell fabric for outerwear). Thought the claim is directed to “heat reflective material,” the court had admitted the references disclosing “wave patterns on fabric.” Columbia argued these references were improperly admitted as comparison prior art since they did not involve designs applied to heat reflective materials. But the Federal Circuit declined to directly rule on their admissibility, instead vacating and remanding for the district court to reconsider the issue under the new narrower requiring comparison prior art to be applied to the claimed article of manufacture. The court suggested that the district court conduct a claim construction on the term heat reflective material before determining whether the references fit within the scope.
Seirus also argued that limiting the patent to heat reflective material would improperly import a functional limitation into the design patent claim. The Federal Circuit properly rejected that argument. While design patents cannot claim primarily functional designs, referring to an article of manufacture’s function to distinguish it from other articles is permissible and relevant.
So I’m concerned about how relevant prior art, based on the identified article of manufacture, will be interpreted in many instances… Let’s say it is a design patent for an “electrically powered bicycle.” Would a prior art, pedal-driven bicycle now be excluded from relevancy? Or if the patent is for a “bicycle handlebar”, the ordinary observer is not supposed to be familiar with a nearly identical handlebar on a prior art scooter? Or will the claim have to be construed to determine if pedal bikes are relevant to the article of electric bikes?
If that read of the ruling is correct, a good deal of highly relevant prior art may be improperly excluded from consideration, simply based on the way a patent has identified a claimed article. Not only would an ordinary observer be expected to be familiar with pedal bikes, or handlebars on tricycles, but a designer of ordinary skill tasked with designing a new eBike would certainly look to pedal bikes and scooters for inspiration, and aesthetic benchmarking for consumer appeal.
I would also note that this may throw another wrench in the issue of determining the article of manufacture for 289 damages (though the court apparently punted on that issue)… I Look forward to seeing how relevant prior art should apparently be restricted to heat resistant fabric for purposes of infringement, but when it comes to damages that relevant article somehow becomes the entirety of the jacket, gloves etc.? Seems as if a court would have to speak out of both sides of its mouth to allow that outcome.
Joel,
The court was quite clear that comparison prior art has to be of the same article of manufacture recited in the claim. In the Columbia case, any fabric with a wavy pattern is not comparison prior art unless it’s a “heat reflective material”. This cuts both ways. Any fabric with a wavy patten would not infringe unless it’s a heat reflective material. So, while limiting the comparison prior art, this also limits the scope of the claim. The court giveth, and the court taketh away. The groundwork was set with the Curver case (a basket with the identical pattern did not infringe a claim to furniture) and Surgisil (an art tool does not anticipate a lip implant – even though both were identically shaped).
So, in your example, a pedal-driven bike might not be prior art to an electric bike. This means that a pedal-driven bike might not infringe the electric bike design patent, no matter how close (see Surgisil). But, ultimately, it’s up to the trial court judge.
And note the court’s footnote 9: “[S]imply including some function with a claimed article’s description (e.g., via naming or argument) will [not] necessarily exclude articles from a design-patent claim’s scope that would otherwise fall within it. For example, we suspect that, if a design patent were somehow granted for a design applied to a “flower pot for planting daisies,” designs applied to prior-art flower pots not so designated could still anticipate. Including that additional function (“for planting daisies”) would not necessarily render the article genuinely distinct from other flower pots.”
Suggestion for the electric bike guy, the title/claim might be “bicycle powered by electric motor”. Broader claim against infringers, but more prior art against the patent.
Moral of the story: chose your title/claim very carefully.
Regarding your concern over damages, you’re comparing apples and oranges. The “article of manufacture” (e.g., heat reflective material) in Sec. 171 is the patentee’s product, while the article of manufacture in Sec. 289 (regarding damages) is the infringer’s product to which the heat reflective material has been applied (e.g., gloves).
Moral of the story (again): chose your title/claim carefully.
Note that Perry has confirmed my, and your, concerns as to the ability to exclude prior art from a design patent 103 analysis just by a verbal field of use limitation on the patent, irrespective of what prior art [even in a similar* product] a 103 POSITA would be likely to look to for the design feature, under current case law.
But as to damages, the Supreme Court held just a few years ago in the Apple v. Samsung case that a design patent with patent drawings of beveled rounded corners of the case of a smartphone does not allow infringement damages recovery for the entire smartphone.
*as opposed to a very dissimilar product, such as an art tool versus a lip implant as in Surgisil.
SCOTUS did not rule that. They merely said the article of manufacture can be the entire smartphone or a component, without saying how you figure that out. They remanded to the Federal Circuit, who kicked it back to the district court for another trial. The jury ruled that damages are based on the entire smartphone, and awarded about $500m in damages to Apple.
Thanks for the corrective reminder Perry. Yes, the Sup. Ct. Apple v. Samsung decision said design patent infringement damages did not have to be based on the entire product, and could instead be based on [the solid line drawing claimed?] component. But, that was a very significant decision which could drastically change the damages in some cases. If deciding between the two is just left to a jury as you indicate it supports the patent law professor who commented in the NYT article I found on this decision that if not appealed it leaves design patent damages calculations ambiguous and unpredictable. [Of course it does not affect the many design patents on simple single component products.]
I have (helpfully) linked to the discussion of the Curver case below.
“This holding aligns with other design patent infringement precedent limiting the universe of anticipatory prior art and infringing designs to the particular article of manufacture claimed.”
That is not true for utility patents, and seems inconsistent with KSR unless the other prior art was non-analogues or unobvious to the 103 POSITA [a professional product designer], as argued in the parallel pending Fed Cir. en banc review.
Why do you presume that the 103 PHOSITA is a designer?
In utility cases, the legal fiction is not by default an inventor.
The PHOSITA for design patents should be an ordinary observer, so that the tests for validity and infringement are in sync, as they are in other major design jurisdictions, e.g., Europe.
The person of ordinary skill in industrial designs is a professional industrial product designer, not an ordinary observer. I worked with several of them over the years. I have never heard of any major new products company that hires anyone off the street or from a jury pool to design the shape or appearance of its products.
Yes, but. Major new products companies do use focus groups of ordinary observers to see if new product designs are sufficiently different from previous (prior art) designs to be successful in the marketplace. So , who better to judge whether a new product is basically the same (the test for obviousness) or not than an ordinary observer? Besides, ordinary observers have judged whether a product is “substantially the same” as a patented design for infringement purposes (as they have been doing for 150+ years) so they are equally equipped to judge “basically the same”.
> Major new products companies do use focus groups of ordinary observers to see if new product designs are sufficiently different from previous (prior art) designs to be successful in the marketplace
IDK. I realize that people try to use design patents for early stage trade dress, but the point of them is give some protection the “form follows function” asethetics of a product. Put different, the major reasons to pick one vs another are unquantifiable factors like: does it looks pleasing/desireable? Does using the product feel right/natural??
Now, these kinds of soft factors should be “obvious” given the function/purpose of the device, but the magic of what industrial designers (and architects) do is that they are clearly NOT. See e.g., anything designed by engineers.
tl;dr the fed cir actually got one right. Novelty and infringement of industrial designs should both be narrowly defined and tied to a particuar type of product.
OC, I really did not understand what you meant by “the magic of what industrial designers (and architects) do is that they are clearly NOT. See e.g., anything designed by engineers.”
Most of the industrial product designers I ever worked with WERE engineers, and needed to be, to know the abilities and limitations and costs of plastic molding, metal machining, structural strength, etc. impacted by their ornamental design ideas. Furthermore they did not just work on, or have skills on, just one type of product or product line, but rather worked across the board on designs of many different products. If I recall reading correctly, a famous product designer [Raymond Massey?] designed everything from furniture to train engines?
Correction: Raymond Loewy.
I did not ever say or suggest that a “103 POSITA” has to be an “inventor.” [That is obviously not the case. It would amusingly disqualify many of the art experts who testify in utility patent suits and IPRs.] See 7.1.1.1 below.
To the contrary, Paul, and as Egon would say (crossing the streams):
link to patentlyo.com
You make an excellent case for why KSR is not applicable to design patents.
Whether or not KSR applies to design patents is the very first question being asked for inputs by the Fed. Cir. in its en banc rehearing pending since about June 30 of LKQ Corp. v. GM Global Tech., 21-2348 (Fed. Cir. 2023) (docket), and thus may soon be decided one way or another. But I suggest that the question of who is a proper 103 POSITA in a design patent case is a separate, if related, question. I agree with Perry that the tests for validity and infringement of design patents are not in sync in the U.S. [inconsistently with utility patents], even though the same statutes apply.
Since this blog so often contains comments complaining that current Fed. Cir. case law is biased against patent owners [even if compelled by Sup. Ct. decisions], I can’t help but observe that the opposite seems to be true for their case law for design patents?
The USPTO will no doubt continue to ignore SurgiSil and this case.
Dennis, although the holding regarding comparison prior art was somewhat predictable in view of Surgisil and Curver (and the Court found it difficult to find a case where incorrect comparison art was used), I believe that the bigger issue for design patentees is the logo issue since it’s an open invitation to copy – provided you use your logo on your copy. As you pointed out, it’s in tension with the old LA Gear case. I’d love to hear your spin on what the Court said about it…
“open invitation to copy”
Copy what? The use of a basic ancient pattern on a non-inventive thing?
Oh, the horror … the horror …
“ The court suggested that the district court conduct a claim construction on the term heat reflective material before determining whether the references fit within the scope.”
LOL
That will be fun. Here’s a link to some prior art from 1996. Definitely heat reflective material! Tested it myself and felt the reflected heat. And yes there are thousands of other examples out there because this “design patent” (a term that is itself a j o k e) is complete g a r b a g e.
link to rateyourmusic.com
From just over four years ago, this thread is worth a revisit:
link to patentlyo.com
(I will let the slow readers catch up)
“While design patents cannot claim primarily functional designs, referring to an article of manufacture’s function to distinguish it from other articles is permissible and relevant.”
Can I now get a design patent on a “polka dot pattern” if I specify that it’s applied to a “heat reflective sock”? How about a plaid pattern applied to “a sound dampening polymer suitable for a recreation room”?
What is the purpose of granting such patents, other than to employ circle jrkers and litigators? Serious question.
None of this makes any sense. The idea that you can obtain a design patent on a “wavy design” applied to ANY particular thing (regardless of what that particular thing is) is absurd. This is why you create and market a brand name and maybe put some thought into a logo. The abuse of the design patent system for inane c r a p like this is an appalling waste of everybody’s time.
Scary day when I find myself in agreement with Mooney.
Me, too. End times for sure.
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