Fed Circ revives design patent case for Columbia after jury 'improperly' instructed
Dispute centres upon a design patent that covers heat-reflective fabric used in outdoor gear | Columbia given third chance to prove alleged infringement by small outdoor brand after appeals court says ‘improper’ instructions were given to jury.
A California jury was wrong to clear an outdoor brand’s alleged infringement of a ‘wavy’ design patent owned by Columbia Sportswear North America, according to the US Court of Appeals for the Federal Circuit.
In its precedential decision, handed down on Friday, September 15, the court vacated a district court’s judgment that small US firm Seirus Innovations Accessories had infringed the patent.
US patent D657,093, titled “Heat Reflective Material”, claims ‘[t]he ornamental design of a heat-reflective material’ used for outdoor gear in Columbia’s Omni-Heat range of products such as jackets, shirts, gloves, socks and headwear.
Seirus manufactures and sells clothing and accessories made with a silver-lined material called HeatWave, which it claims to provide “the first dual-stage heating system, both reflecting and amplifying heat”.
The rivals’ fabrics both sport a wavy pattern, although Seirus argues that since its HeatWave products bear its logo throughout the material, that differentiates the design enough from Columbia’s claimed design.
Background
Columbia initially sued Seirus for alleged infringement of the patent in December 2015. A district court (then in Oregon, where Columbia is based, but the case was later transferred to California) granted summary judgment of infringement and a jury awarded Columbia $3.2 million in damages.
Utah-based Seirus appealed, but the appeals court vacated the summary judgment and remanded for further proceedings.
On remand, a jury found that Seirus did not infringe, but Columbia appealed, mainly challenging the jury instructions. Seirus conditionally cross-appealed as to damages, leading to the decision last week.
Design-patent specifics
The case pivots upon the key issues of comparison prior art—which is “by and large peculiar to design-patent law”, the court noted—and logos in design patent infringement.
In its decision, the appeals court described the district court’s “three-way comparison of the D’093 patent, the Seirus HeatWave material, and Blauer [a 1997 utility patent titled ‘Breathable Shell for Outerwear’]—as well as the court’s resulting finding that ‘[t]he overall visual effect of the Columbia and Seirus designs [is] nearly identical’.”
The appeals court concluded that “this fact finding was improper on summary judgment”, holding that the district court failed to properly instruct the jury as to the scope of the patent claim and the proper scope of comparison prior art.
“Columbia correctly states that a design-patent claim’s scope is limited to the article of manufacture identified in the claim (which here is heat-reflective material), and it argues that the scope of comparison prior art should be likewise limited,” wrote Circuit Judge Sharon Prost.
“Seirus, though quick to say ‘that is not the law’, does not meaningfully dispute that this is an open question of law,” she continued. “And, outside of a passing remark that comparison prior art must be ‘close’, Seirus does not develop a relevant argument as to what the scope should be.
“In any event, we agree with Columbia.”
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