IP Law Daily Infringement question for heat reflective design patent should have been decided by jury
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Wednesday, November 13, 2019

Infringement question for heat reflective design patent should have been decided by jury

By Brian Craig, J.D.

The district court improperly granted summary judgment on infringement for a design patent for an ornamental design that resulted in a $3 million jury award.

In a case involving two patents owned by Columbia Sportswear North America, Inc., for heat reflective material used in cold weather, the U.S. Court of Appeals of Appeals has reversed a decision by the federal district court in San Diego, California where a jury awarded $3 million in favor of Columbia. While the Federal Circuit found that the district court properly found that one of the Columbia patents was invalid, the district court erred in granting summary judgment with a finding of infringement for a design patent that resulted in a jury award for over $3 million. The district improperly declined to consider the effect of a logo placement and other evidence in its infringement analysis (Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, Inc., November 13, 2019, Lourie, A.).

Columbia Sportswear North America, Inc. sued Seirus Innovative Accessories, Inc. for infringement of two patents: U.S. Patent 8,453,270 ("the ’270 patent") and U.S. Patent D657,093 ("the ’093 patent"). The ’270 patent is a utility patent directed to materials that use a pattern of heat directing elements coupled to a base fabric to manage heat through reflection or conductivity for use in cold-weather and camping gear, including jackets, boots, gloves, hats, pants, sleeping bags, and tents. The ’093 patent is a design patent drawn to the ornamental design of a heat reflective material depicting a wave-pattern design. Columbia originally filed suit in Oregon and the case was later transferred to California. A jury determined that certain claims of the ’270 patent were invalid based on anticipation and obviousness. The district court granted summary judgment in favor of Columbia on infringement of the ’093 patent and the jury awarded Columbia $3,018,174 in damages but did not find that the infringement was willful. Both parties cross-appealed to the Federal Circuit.

The ’270 utility patent. The Federal Circuit first concluded that substantial evidence supported the jury’s verdict that the claims of the ’270 patent would have been obvious and anticipated. The Federal Circuit pointed to expert testimony in the record. The appeals court also rejected Columbia’s argument that the district court erred by failing to give instructions to the jury to apply a set of factors in determining whether a prior art’s overlapping range anticipates the range in the claims. Moreover, the Federal Circuit dismissed Columbia’s argument that the jury relied on false testimony. Here, the jury could have verified any representations and Columbia had ample opportunity to cross-examine the expert witness. Under these circumstances and given the uncomplicated nature of the evidence, the Federal Circuit could not conclude that the misstatements warranted a new trial. Therefore, substantial evidence supported the jury’s finding that the ’270 patent is invalid.

The ’093 design patent. The Federal Circuit next held that the district court improperly granted summary judgment in favor of Columbia that Seirus infringed the ’093 patent, which resulted in the jury award of $3 million.The appeals court concluded that the district court improperly declined to consider the effect of Seirus’s logo in its infringement analysis under the ordinary observer test for design patents. The district court also resolved a series of disputed fact issues, in some instances relying on an incorrect standard, which should have been tried to a jury. Seirus raised several disputed fact issues regarding differences between its design and Columbia’s patented one, including evaluation of the prior art and the wave thickness in the design. In both instances, the district court made a finding of fact—whether an element of Seirus’s design would give an ordinary observer a different visual impression than Columbia’s design—over a disputed factual record. The Federal Circuit concluded that such fact findings are not permitted on summary judgment and should be resolved by a jury on remand. Thus, the Federal Circuit reversed the district court’s grant of summary judgment that Seirus infringed the ’093 patent.

Venue. The Federal Circuit also rejected Columbia’s argument that the case was improperly transferred from Oregon to California. Although Seirus had waived its objection to venue in two different ways, the district court excused that waiver because the U.S. Supreme Court’s intervening decision in TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 137 S. Ct. 1514 (2017) constituted an intervening change in the law. Because the district court did not abuse its discretion in excusing Seirus’s waiver of its venue defense, the Federal Circuit concluded that the district court did not err on the venue issue.

Accordingly, the Federal Circuit affirmed the district court’s judgment that certain claims of the ’270 patent are invalid but reversed the district court’s grant of summary judgment that Seirus infringed the ’093 patent. As such, the Federal Circuit remanded the case to the federal district court in California.

This case is Nos. 18-132918-1331 and 18-1728.

Attorneys: Nicholas Fremont Aldrich, Jr (Schwabe, Williamson, Wyatt) for Columbia Sportswear North America, Inc. Seth McCarthy Sproul (Fish & Richardson P.C.) for Seirus Innovative Accessories, Inc.

Companies: Columbia Sportswear North America, Inc.; Seirus Innovative Accessories, Inc.

MainStory: TopStory Patent FedCirNews

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