Last week, in a precedential decision, the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) clarified the law on comparison prior art in design patent cases. In the decision, captioned Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, Inc., No. 2021-2299, 21-2338 (Sept. 15, 2023), the Federal Circuit provided guidance on the types of prior art that can be reviewed by courts and juries in the comparative prior art stage of the infringement analysis of design patent cases. In the initial case, Columbia Sportswear North America, Inc. (“Columbia”) sued Seirus Innovative Accessories, Inc. (“Seirus”) for infringing U.S. Design Patent No. D657,093 (“the D’093 Patent”) via sales of its products containing HeatWave™ liner material, as illustrated side-by-side below.
This case has a lengthy procedural history. In the initial stage, a district court granted summary judgment of infringement against Seirus and a jury awarded Columbia damages. Seirus then appealed to the Federal Circuit. On appeal in Columbia I, the Federal Circuit vacated the summary judgment holding and remanded to the district court. Subsequently, and as we wrote about here, Columbia appealed to the Federal Circuit after a jury returned a verdict of non-infringement at the district court stage.
At issue in this case (Columbia II) before the Federal Circuit are: (1) the proper scope of comparison prior art in design patent infringement cases; and (2) the effect of a logo on the infringement analysis. In addressing the first issue in its opinion in Columbia II, Judge Prost wrote that “Columbia correctly states that a design patent claim’s scope is limited to the article of manufacture identified in the claim” by juxtaposing the present situation with recent Federal Circuit cases related to the scope of a design patent in view of the underlying article of manufacture captured by the design.
In the Federal Circuit’s prior decisions in Surgisil and Curver, the court held that for a prior art design to anticipate, it must be applied to the same article of manufacture identified in the claim, In re Surgisil, L.L.P., 14 F.4th 1380, 1382 (Fed. Cir. 2021), and further held that for an accused design to infringe, it must be applied to the article of manufacture identified in the claim. Curver Luxembourg, SARL v. Home Expressions Inc., 938 F.3d 1334, 1340 (Fed. Cir. 2019). Applying the logic of these holdings to the present case, the court reasoned that applying the prior art design to the article of manufacture identified in the claim is aligned with comparison art’s purpose. Columbia,2022 WL 5988026 at *9. Similar to an infringement analysis, prior art designs will only qualify as relevant comparison art to the extent that they are applied to the same article of manufacture. See id. The court further reasoned that using the same scope for anticipatory prior art and comparison prior art made sense because the existing standard is easy to articulate and provides clear boundaries. See id. at *10.
Using the same standard for appropriate prior art in the patentability, infringement, and comparison art analyses will very likely reduce uncertainty for future litigants and courts alike. By aligning the standards across all three analyses, litigants, courts, and the USPTO can benefit from guidance across the spectrum of prior art analyses. From a rights holder’s perspective, this decision should reduce or remove uncertainty during litigation by limiting prior art that can be introduced at all stages of a litigation.
Turning to the second issue, relating to the effect of a logo on infringement analysis, the court effectively left it open to the district courts to determine how juries should be instructed as to the impact of a logo or trademark applied to the accused goods during a design patent infringement analysis. See id. at *13. In its analysis, the court highlighted the differences between trademark infringement and design patent infringement, focusing on trademark infringement’s requirement that consumers will likely be confused as to a product’s source, which is not a factor for design patent infringement. See id. at *12. More specifically, the court held that likely or actual lack of confusion as to the accused product’s source does not preclude an ordinary observer from determining that the claimed and accused designs are similar enough to constitute design patent infringement. See id. at *13. Conversely, the court said, “just because a logo’s potential to eliminate confusion as to source is irrelevant to design-patent infringement, its potential to render an accused design dissimilar to the patented one—maybe even enough to establish non-infringement as a matter of law—should not be discounted.” Id.
There is still an open question as to how this holding will be applied and how judges will allow trademarks and logos to be considered in the design patent infringement analysis. However, this ruling appears to clarify that district courts have discretion on a case-by-case basis to decide whether and when to provide clarification to a jury in design-patent infringement cases involving logos.
Law Clerk Rachel Ackerman assisted in drafting this blog post.
