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Design Patents are Heating Up at the Federal Circuit

Blog - Protecting the Product

Oral arguments were held on Thursday, January 12, 2023, in Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, Inc.  The parties faced off in a rematch at the Federal Circuit following an earlier bout involving the same design patent, U.S. D657,093 (“D’093”) for a “Heat Reflective Material,” which as illustrated side-by-side below had been asserted against Seirus’s HeatWave™ material.

In this instance, Columbia appealed to the Federal Circuit after the jury returned a verdict of non-infringement in the lower court.  In addition to challenging the Federal Circuit’s 2020 decision in Columbia v. Seirus regarding the consideration of a name/logo in the design infringement analysis, at issue now is the scope of the comparison prior art that is to be considered in a design patent infringement analysis, particularly in view of the Federal Circuit’s recent decisions in In re: Surgisil, L.L.P. et al. and Curver Luxembourg, SARL, v. Home Expressions Inc. 

According to Columbia, the D’093 Patent defines the article of manufacture as “Heat Reflective Material” and, thus, only prior art references showing “heat reflective” materials should have been considered in comparison with the accused Seirus HeatWave™ material.  Since all of the comparison prior art, which is reproduced below, relates to fabrics or materials that are not “heat reflective,” Columbia argues that the jury should have been instructed to exclude from the comparison prior art any material that is not described as being “heat reflective.” 

In opposition, Seirus argues that Columbia improperly reads a functional limitation, i.e., heat reflectivity, into its design patent in order to disregard prior art that is relevant for the infringement analysis.  Further, Seirus conditionally renews its damages appeal as a cross-appeal, arguing that the article of manufacture for purposes of calculating total profits should be the HeatWave™ fabric, rather than the end-products, e.g., gloves and hats, containing the fabric as one of many components. 

Of particular relevance here are the opinions of the Federal Circuit in In re: Surgisil, L.L.P. et al. and Curver Luxembourg, SARL, v. Home Expressions Inc., which each address the issue of determining the article of manufacture, but for different stages of the patent process.  As we wrote about here, In re Surgisil relates to the prior art analysis for purposes of patentability, where the Federal Circuit reversed an examiner’s anticipation rejection of a design for a “lip implant” based on the prior art showing a design for an “art tool” because these were determined to be different articles of manufacture.  Curver Luxembourg relates to the infringement analysis, where the Federal Circuit held that the claimed design was limited in scope to a “Pattern for a Chair” and did not read on the accused “basket” because they were different articles of manufacture. 

Columbia argues here that to be consistent with the holdings in Surgisil and Curver, the scope of the claim must be limited to “heat reflective material” for both the infringement analysis and the prior art analysis, unlike the comparison prior art above for materials that are not taught as being “heat reflective.” 

If the Court were to agree with Columbia’s position, the holding could provide much needed clarity and, even, harmony in the law of design patents with regard to the appropriate application of prior art in the patentability and infringement contexts. 

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