Federal Circuit Narrows Scope of Egyptian Goddess

by Dennis Crouch

The Federal Circuit lately vacated a jury verdict of non-infringement within the long-running design patent dispute between outside attire corporations Columbia Sportswear and Seirus Modern Equipment. Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, Inc., No. 2021-2299, — F.4th — (Fed. Cir. Sept. 15, 2023). The Federal Circuit held that “comparability prior artwork” used for infringement evaluation have to be tied to the identical article of manufacture as that claimed.  The decrease courtroom thus erred by allowing the jury to think about extra references. The choice advantages design patent holders – making it simpler to show infringement and in addition locations extra weight on skillful choices made throughout prosecution to outline the article of manufacture.

Columbia owns U.S. Design Patent No. D657,093, which claims a decorative design for a warmth reflective materials that includes contrasting wavy traces. Seirus sells gloves and different merchandise incorporating its HeatWave materials, which options comparable wavy traces. Columbia sued Seirus for infringing the ‘D’093 patent in Oregon federal courtroom.

The district courtroom initially granted abstract judgment of infringement in Columbia’s favor. On enchantment, the Federal Circuit vacated and remanded, discovering disputed problems with truth concerning the impression of Seirus’s emblem and sure prior artwork references.  Columbia Sportswear North America, Inc. v. Seirus Modern Equipment, Inc., 942 F.3d 1119 (Fed. Cir. 2019) (“Columbia I”) (holding that emblem placement may permit the defendant to keep away from an infringement judgment).  I famous beforehand that this holding is in some rigidity with the courtroom’s 1993 determination in L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2nd 1117 (1993). On remand, the case went to trial, and a jury got here to the other conclusion — discovering no infringement. Columbia once more appealed to the Federal Circuit.

Jury verdicts are given robust deference on enchantment and so are often circuitously challenged. Right here, the appellant skirted the decision itself by specializing in the jury directions, with the patentee arguing that the district courtroom erred in its directions concerning “comparability prior artwork.”

In design patent legislation, the check for infringement is whether or not an unusual observer would discover the accused design considerably much like the claimed design, such that they might be deceived into buying the accused design believing it to be the claimed design. See Gorham Co. v. White, 81 U.S. 511 (1871). When the claimed and accused designs are usually not plainly dissimilar, courts apply this “unusual observer” check in mild of the prior artwork. Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 676 (Fed. Cir. 2008) (en banc).  The rationale is that prior artwork designs present context that may assist spotlight similarities and variations between the claimed and accused designs.

In its determination, the Federal Circuit held for the primary time {that a} prior artwork reference can qualify as comparability prior artwork provided that it discloses a design utilized to the similar article of manufacture recognized within the design patent declare. This holding aligns with different design patent infringement precedent limiting the universe of anticipatory prior artwork and infringing designs to the actual article of manufacture claimed. See Curver Luxembourg, SARL v. House Expressions Inc., 938 F.3d 1334, 1340 (Fed. Cir. 2019); Int’l Seaway Buying and selling Corp. v. Walgreens Corp., 589 F.3d 1233, 1240 (Fed. Cir. 2009).

We now have held that, for a prior-art design to anticipate, it have to be utilized to the article of manufacture recognized within the declare. We now have additionally held that, for an accused design to infringe, it have to be utilized to the article of manufacture recognized within the declare. We conclude that this requirement additionally applies to comparability prior artwork utilized in an infringement evaluation.

Slip Op. (inner citations eliminated). The courtroom defined its reasoning that its slender strategy aligns with the aim of permitting comparability prior artwork: “that objective is to assist inform an unusual observer’s comparability between the claimed and accused designs—designs that, essentially, have to be utilized to the identical article of manufacture.”  And, though the problem has not been expressly determined, prior circumstances additionally typically concerned comparability prior artwork that had been utilized to the identical article of manufacture as that claimed.

Right here, Columbia’s ‘D’093 patent declare was restricted to decorative designs for “warmth reflective materials.” But the district courtroom instructed jurors that they need to determine for themselves what constitutes comparability prior artwork, with out explaining that it should contain designs utilized to warmth reflective materials.  Three explicit references with wavy designs had been introduced to the jury, together with U.S. Patent Nos. 2,539,690  (inlaying plastic threads into plastic sheets); 1,515,792 (unwoven material for tires); 5,626,949 (shell material for outerwear).  Thought the declare is directed to “warmth reflective materials,” the courtroom had admitted the references disclosing “wave patterns on material.” Columbia argued these references had been improperly admitted as comparability prior artwork since they didn’t contain designs utilized to warmth reflective supplies. However the Federal Circuit declined to straight rule on their admissibility, as an alternative vacating and remanding for the district courtroom to rethink the problem beneath the brand new narrower requiring comparability prior artwork to be utilized to the claimed article of manufacture.  The courtroom steered that the district courtroom conduct a declare development on the time period warmth reflective materials earlier than figuring out whether or not the references match inside the scope.

Seirus additionally argued that limiting the patent to warmth reflective materials would improperly import a useful limitation into the design patent declare. The Federal Circuit correctly rejected that argument. Whereas design patents can not declare primarily useful designs, referring to an article of manufacture’s perform to differentiate it from different articles is permissible and related.