Columbia v. Seirus – Limited Series - Season 2, Episode 1

In Season 1, Episode 1, the district court granted Columbia’s motion for summary judgment of infringement against Seirus based on Columbia’s design patent D657,093 for a Heat Reflective Material. A jury trial was then held on the issue of damages, and the jury awarded Seirus’ total profit to Columbia. Seirus appealed to the Federal Circuit. One of the issues facing the Court was determining the article of manufacture for calculating total profit damages, a critical question left open by the Supreme Court in Samsung v. Apple. The Federal Circuit did not rule on that important issue, instead finding that the presence of Seirus’ logo on its products should be considered in determining infringement.

In Season 1, Episode 2, a petition for rehearing was filed, supported by a number of amicus briefs, to try and get the Court to reconsider its position regarding the effect of Seirus’ logo. The petition was denied, whereupon the case was remanded to the district court for retrial.

Now we are proud to present in a brand new season (Season 2, Episode 1) of Columbia v. Seirus.

On remand from the Federal Circuit a jury found no infringement of Columbia’s design patent, basing its verdict in part of consideration of the following “comparison” prior art presented by Seirus (shown after the patented and accused designs):

Prior Art #1: METHOD OF PROVIDING PLASTIC SHEETS WITH INLAID STRIPES

Prior Art #2: BREATHABLE SHELL FOR OUTERWEAR

Prior Art #3: UNWOVEN PRODUCT AND PROCESS FOR MAKING THE SAME

Columbia has appealed to the Federal Circuit.

There are 2 main issues on appeal.

1. The jury’s consideration of prior art designs that were not the same as, or analogous to, the article of manufacture as the patented and accused designs; and

2. The jury’s consideration of Seirus’ logo in determining infringement.

Issue #1 involves the Federal Circuit’s recent opinion In re Surgisil which reversed an examiner’s anticipation rejection since the prior art reference to an art tool – despite looking almost identical to the claimed design - was not the same article of manufacture – a lip implant - as the claimed design. See my prior post.

Issue #2 challenges the Federal Circuit’s prior decision in Season 1, Episode 1. This is a critical issue since the prior decision opened the door for infringers to avoid infringement simply by putting its name/logo on its products. It will be interesting to see if Columbia’s argument changes the Court’s position.

More specifically, Columbia framed the following issues facing the Court in its opening brief:

1. As a matter of first impression for the Court, and in view of this Court’s recent decision in In re Surgisil, L.L.P., 14 F.4th 1380, 1382 (Oct. 4, 2021), what is the relevant scope of “comparison prior art” that is to be considered in a design patent infringement analysis under Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 678-79 (Fed. Cir. 2008) (en banc)?

2. Whether the district court erred in instructing the jury that all prior patents are comparison prior art to a design patent, and in failing to instruct the jury to limit the scope of comparison prior art for the design infringement analysis to “heat reflective materials,” which is the article of manufacture identified in the claim of the asserted U.S. Patent D657,093 (D’093 Patent)?

3. Whether, in the alternative, the district court erred in failing to instruct that “the scope of prior art” to a design patent is limited to “designs of the same article of manufacture or of articles so similar that a person of ordinary skill would look to such articles for their designs,” as this Court held in Hupp v. Siroflex of Am., Inc., 122 F.3d 1456, 1462 (Fed. Cir. 1997).

4. Whether the district court erred in prohibiting Columbia from distinguishing prior art on grounds that it failed to disclose a “heat reflective material,” which is the article of manufacture identified in the claim of D’093 Patent?

5. Where the Gorham standard applicable to design patent infringement concerns “deceiving” a consumer concerning products available for “purchase,” and where (a) Columbia did not sell a patented product for purchase, and where (b) Seirus applied its brand name to its products, whether the district court erred in failing to instruct the jury that:

a. “Likelihood of confusion,” or “confusion as to the source or provider of the goods accused of infringing is irrelevant to determining whether a patent is infringed,” as this Court held in Braun Inc. v. Dynamics Corp. of Am., 975 F.2d 815, 820 (Fed. Cir. 1992), and Unette Corp. v. Unit Pack Co. Inc., 785 F.2d 1026, 1029 (Fed. Cir. 1986); and

b. “Labelling a product with source identification or branding does not avoid infringement,” as this Court held in L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1126 (Fed. Cir. 1993).

STAY TUNED for our next exciting episode, where the big reveal will be Seirus’ opening brief.