The Federal Circuit has ruled that “comparison prior art” used in infringement analysis in a design patent infringement must be applied to the same “article of manufacture” that is identified in the claim of the design patent.
Columbia’s D’093 patent, titled “Heat Reflective Material,” claims “[t]he ornamental design of a heat reflective material.
Seirus markets and sells products (e.g., gloves) made with material that it calls HeatWave.
Columbia sued Seirus for allegedly infringing its design patent.
The district court began by discussing the “ordinary observer” test for design-patent infringement:
[I]f, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.
In design-patent infringement analysis, comparison prior art serves as background when comparing a claimed and accused design.
The district court rejected Seirus’s argument that the Seirus logo appearing throughout the design of HeatWave material made that design different enough from the claimed Columbia design to preclude summary judgment of infringement.
The district court also found that prior art offered by Seirus to support its non-infringement argument wasn’t relevant because the product was “far afield” from the products covered by the Columbia design patent.
A jury awarded more than $3 million in damages to Columbia.
The Federal Circuit concluded that the district court had erred in two ways:
- improperly declining to consider the effect of Seirus’s logo in its infringement analysis; and
- resolving certain fact issues that should have been left to a jury, including the impact of Seirus’s comparison prior art.
Infringement then was tried to a jury, which found no infringement.
After yet another appeal (this time by Columbia), the Federal Circuit addressed:
- the comparison prior art (and related arguments),
- the jury instructions on comparison prior art, and
- the jury instructions implicating the Seirus logo.
At trial, Seirus had introduced as prior art several items including a 1951 utility patent that discloses a method of inlaying plastic threads into plastic sheets.
Noted the Federal Circuit:
The district court, in addition to admitting these references because they disclosed fabric, precluded Columbia from trying to distinguish them as not disclosing heat reflective material. The district court reasoned that allowing Columbia to do so (e.g., by argument or witness questioning) would improperly import functional considerations into the design-patent infringement analysis.
The Proposed jury instruction no. 9F (titled “What is Prior Art”) stated:
In design patent law, the term “prior art” refers to prior designs that address the same subject matter or field of endeavor as the patented design or that address a field of endeavor so similar that a designer having ordinary skill would look to articles in that field for their designs. The subject matter and field of endeavor of the D’093 patent is ornamental designs for heat reflective materials.
The court concluded that to qualify as comparison prior art, the prior-art design must be applied to the article of manufacture identified in the claim and found that the jury lacked the correct standard for determining whether an admitted reference qualified as such art:
Whether a particular reference meets that standard for comparison prior art—i.e., whether it discloses a design applied to the article of manufacture identified in the claim—is a question of fact reserved for the fact finder (at least, where there could be reasonable disagreement on that fact question such that it has not been reduced to a question of law)….
But the standard itself is legal. And the failure to provide it was error—albeit quite an understandable one, given that we have only now articulated the standard.
This case shows the importance of stating the relevant article of manufacture in the claim of a design patent, as that may be essential in an infringement case.
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