Mixed results reached on validity of patents for heat reflective materials


April 13, 2017

In a patent dispute over heat reflective material that can reflect body heat back towards the user while allowing breathability and moisture wicking, as used in a variety of garments, including gloves and jackets, plaintiff Columbia Sportswear North America, Inc., was granted partial summary judgment by the federal district court in Portland, Oregon, of no invalidity as to two utility patents. Specifically, the court granted summary judgment that nine of 10 cited prior art references do not anticipate the utility patents. However, Columbia’s motion was denied as to whether one of the prior art references anticipates the utility patents. In addition, its motions as to obviousness were denied. Defendant Seirus Innovative Accessories, Inc.’s motion for partial summary judgment of invalidity was denied. The court also denied Columbia’s motion to strike Seirus’s expert’s testimony as well as Columbia’s Daubert motion (Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, Inc., April 12, 2017, Hernandez, M.).

Columbia alleges that defendant Seirus infringed three of Columbia’s patents relating to a health reflective lining used in outdoor sporting gear, namely, U.S Patent Nos, 8,424,119 (the ‘119 patent), 8,453,270 (the ‘270 patent) (collectively the utility patents) and D657,093 (the design patent). The court previously granted summary judgment that Seirus infringed the design patent. Columbia’s flagship "Omni-Heat" technology is a heat reflective material that can reflect body heat back toward the user while allowing breathability and moisture wicking. The utility patents relate to coupling heat-directing elements to the innermost surface of a garment in a discontinuous pattern to allow the garment to breathe while simultaneously reflecting body heat back towards the user. Columbia uses Omni-Heat technology in a variety of garments, including jackets, gloves, shirts, and more. Seirus also sells outdoor gear, including gloves and glove liners, with a breathable, heat reflective material it calls "HeatWave."

Anticipation. Columbia sought summary judgment that each of the 10 prior art references do not anticipate the utility patents. Seirus, by contrast, sought summary judgment that the Fottinger, Harber, and Vaughn prior art references anticipate the utility patents and that the summary judgment not be granted in Columbia’s favor as to Hartmann and Worley. Because Seirus does not assert or defend on the issue of anticipation as to five of the prior art references, the court granted summary judgment that these references do not anticipate the utility patents.

Fottinger, a UK patent titled "binder coated textiles" was disclosed to the patent examiner during the patent application process and the examiner concluded that it did not anticipate any of the asserted claims. Columbia argued that Fottinger does not direct a person of ordinary skill in the art to construct a garment with heat-directing elements but rather that Fottinger would lead a person of ordinary skill in the art to create a jacket that absorbed or conducted heat and did not direct heat in a desired direction. Seirus, on the other hand, maintained that Fottinger discloses a combination of conduction and reflection.

According to the court, the parties have raised a genuine dispute of material fact as to whether Fottinger discloses a heat reflecting element that reflects heat back towards the user. Because Seirus has not demonstrated that Fottinger anticipates every element of the asserted claims by clear and convincing evidence, it is not entitled to summary judgment of invalidity. Looking at the evidence in the light most favorable to Seirus, Fottinger claims reflective properties and so the court must continue its analysis to determine whether other elements are not anticipated. If Fottinger does not anticipate a different element of the asserted claims, then Columbia would be entitled to summary judgment of no invalidity as to Fottinger. As to the innermost surfaces, the court ruled that Seirus has at least raised a genuine factual dispute as to whether Fottinger discloses the innermost surface requirement. As to the coverage ratio, there is a disputed issue of material fact as to whether Fottinger’s range anticipates the utility patents’ coverage area limitation. Thus, both parties’ motions for summary judgment as to Fottinger are denied.

The court also addressed the Vaughn, Harber, Hartmann, and Worley prior art references, Vaughn does not disclose every element of the asserted claims, nor does it enable a person of ordinary skill in the art to practice an embodiment of the utility patents without undue experimentation. Thus, summary judgment was granted to Columbia that Vaughn does not anticipate. Similarly, Harber is silent on the issue of coverage ratio and, because it does not anticipate the range limitations contained in the asserted claims, the court granted summary judgment to Columbia that Harber does not anticipate and it denied Seirus’s motion on the issue. As for Hartmann and Worley, because they do not disclose directing heat in a desired direction or directing heat towards the body of the wearer, the court granted summary judgment to Columbia that neither reference anticipates the asserted claims and denied Seirus’s motion on the issue.

Obviousness. Both parties moved for summary judgment on the issue of whether the utility patents are invalid as obvious. Because there are genuine issues of material fact regarding prior art reference combinations, motivations, and objective consideration of nonobviousness, the court denied Seirus’s motion for summary judgment on obviousness.

Columbia moved for summary judgment of no invalidity for obviousness only on the ground that Seirus’s arguments rely on Dr. Block’s expert testimony, which it argues should be excluded. Because the court denies Columbia’s Daubert motion to exclude Dr. Block’s testimony, Columbia’s motion for summary judgment on obviousness was also denied. Because the court has already denied the parties’ motions regarding obviousness, it did not address the parties’ dispute about the sufficiency of Columbia’s evidence of nonobviousness.

Columbia’s Daubert motion. Columbia moved to exclude the testimony of Dr. Block, Seirus’s expert, claiming that Dr. Block failed to account for objective considerations of nonobviousness and that he applied the wrong legal standard for finding a motivation to combine prior art references. Because Dr. Block’s opinion is not supported by sufficient facts and is based on the incorrect legal standard, Columbia maintains, it is unreliable and should be excluded.

According to the court, Dr. Block’s failure to account for objective considerations in his expert report was substantially justified because his declaration in support of Seirus’s summary judgment reply was the first opportunity that Seirus had to respond to Columbia’s expert’s rebuttal report. Seirus cannot be expected to rebut Columbia’s evidence of objective considerations of nonobviousness before Columbia has identified the evidence. Thus, Columbia’s motion to strike Dr. Block’s declaration was denied, as was Columbia’s Daubert motion. To the extent that Dr. Block’s testimony accounts for some, but not all forms of objective considerations, the court found that this disputed gap goes to the weight, rather than the admissibility, of his testimony. In sum, the court found that Dr. Block’s opinion provides the necessary articulated reasoning with some rational underpinning to survive Columbia’s Daubert motion.

The case is No. 3:15-cv-00064-HZ.

Attorneys: Nicholas F. Aldrich, Jr. (Schwabe, Williamson & Wyatt PC) for Columbia Sportswear North America, Inc. Alison A. Grounds (Troutman Sanders LLP) for Seirus Innovative Accessories.

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

MainStory: TopStory OregonNews

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