Columbia Sportswear faces heat over ‘unworkable’ design patent test
Dispute over heat reflective design patent has been ongoing for nearly a decade | Petitioner argues that new test contravenes past precedents and will be impossible to enforce.
Columbia Sportswear has heard claims that its success in a patent design dispute has led to the formulation of an illogical, unworkable test that will be impossible to implement in future cases.
In its petition filed on November 17, Seirus Innovative Accessories asks the full US Court of Appeals for the Federal Circuit to reverse a panel ruling that revoked an earlier dismissal of Columbia's suit against it.
This case has a long and winding history that can be traced back to January 2015.
Columbia Sportswear first sued the outdoor accessories maker at the US District Court for the Southern District of California, alleging that Seirus's HeatWave products, including gloves and base layers, infringe Columbia's US patent number D657,093 for ‘Heat Reflective Material’.
After the district court granted summary judgment of infringement and a jury awarded Columbia $3,018,174 in damages, Seirus appealed to the Federal Circuit.
In 2019, the Federal Circuit vacated the earlier summary judgment that Seirus infringed Columbia’s design patent.
Prior art based on function
On remand, the district court jury sided with Seirus.
Columbia argued on appeal that the jury should have been limited to considering prior art consisting only of the claimed “heat reflective material” rather than any other fabric.
The Federal Circuit panel agreed with Columbia and vacated the jury’s non-infringement verdict. First, it rejected the district court’s refusal to limit comparison prior art based on function, holding that “referencing functionality to distinguish articles of manufacture is not categorically impermissible”.
Second, it applied the anticipation standard to comparison prior art, explaining that “[w]e have held that, for a prior-art design to anticipate, it must be applied to the article of manufacture identified in the claim”.
It further held that: “This requirement also applies to comparison prior art used in an infringement analysis. That is, to qualify as comparison prior art, the prior-art design must be applied to the article of manufacture identified in the claim.”
Past precedents
Friday’s latest petition for an appeal argues that the panel decision is contrary to precedents set by the US Supreme Court, as well as the Federal Circuit. The petition notes that the test limits design patents based on function, and applies the “same article” or anticipation standard to the comparison prior art used when deciding design patent infringement.
It then requests an answer to one or more of precedent-setting questions of “exceptional importance”.
Specifically, the petition asks: “Did the panel err in limiting comparison prior art used for design patent infringement analysis by permitting consideration of functional and importing the anticipation standard?”
The panel’s decision should be vacated, continues Seirus, because it directly contradicts Supreme Court and Federal Circuit authority that functionality is irrelevant to design patents.
“The panel decision contradicts this court’s precedent, including en banc precedent, regarding ‘comparison prior art’ used for context when deciding design patent infringement.
That precedent holds that such comparison prior art is not limited to the exact article of manufacture stated in the claim (the anticipation standard). “Finally, the panel created an illogical, unworkable test that will be impossible to apply in this case or in future cases,” says the petition.
Christopher Marchese, Seth Sproul and John Thornburgh of Fish & Richardson filed the petition for an en banc review on behalf of Seirus.
