Columbia design patent ruling created ‘illogical’ test, says Seirus
Accessories maker argues that Federal Circuit decision conflicts with past precedents | Long-running legal battle centres upon a heat reflective design patent and has been back and forth between US courts.
Columbia Sportswear should not be able to assert a heat reflective design patent claim that has already been invalidated twice before, Seirus Innovations Accessories has told the US Supreme Court.
The petition filed this week is the latest twist in a long-running legal dispute spanning nearly a decade.
Seirus argues that a ruling by the US Court of Appeals for the Federal Circuit contradicts both Federal Circuit and Supreme Court precedents, and that it had introduced a deeply flawed test for design patents.
An illogical test
“The Court of Appeals ... created an illogical, unworkable test that will be impossible to apply in this case or in future cases,” said Seirus in the filing.
Columbia sued the outdoor accessories maker at the US District Court for the Southern District of California back in 2015, 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 more than $3 million in damages, Seirus appealed to the Federal Circuit.
In 2019, the Federal Circuit found that Columbia’s utility patent on heat reflective material was invalid, and vacated the earlier summary judgment that Seirus had infringed Columbia’s design patent.
On remand, the district court limited the admissible comparison of prior art to ‘wave patterns on fabric’, barring an argument that the alleged comparison prior art references do not disclose heat reflective material—which Columbia said was a requirement given the claim language. As a result, the jury sided with Seirus.
Comparison of prior art
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.
In September 2023, 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 explained 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.”
Consequently, the Federal Circuit opined that the district court had erred by not instructing the jury accordingly.
Fish & Richardson filed the latest petition on behalf of Seirus.
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