Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, Inc.
Docket Nos. 2018-1329, 1331, -1728
LOURIE, MOORE, STOLL
November 13, 2019
Brief Summary: DC finding that Columbia’s utility patent is invalid for obviousness affirmed. DC grant of SJ that Columbia’s design patent was not infringed reversed and remanded.
Summary: Columbia appealed California DC decision that claims 2 and 23 utility patent US 8,453,270 directed to “heat management material[s]” used in boots and the like are invalid as anticipated and obvious. Seirus appealed Oregon DC grant of summary judgment (SJ) that it infringes design patent US D657,093 directed to the “ornamental design of a heat reflective material” and its award of damages. The Oregon case was moved to California upon Seirus’s request following the TC Heartland decision (US 2017) (not reversed here). The FC panel found that substantial evidence supported the obviousness finding and did not therefore reach the anticipation grounds. In alleging obviousness, Seirus argued that the ranges of the prior art and the claims overlap (“surface area ratio of heat-directing elements to base material is from about 7:3 to about 3:7”) and “establishes a prima facie case of obviousness, which was not rebutted”. The FC panel agreed substantial evidence supported that position (e.g., In re Harris, FC 2005, citing In re Peterson, FC 2003 (“even a slight overlap in range establishes a prima facie case of obviousness”); Perfect Web, FC 2009 (“The technology here…is ‘easily understandable without the need for expert explanatory testimony.’”)) Seirus and Columbia agreed that the testimony of at least one of Seirus’s experts was incorrect, but the FC panel did not conclude the “misstatements warrant a new trial” (Fraige, FC 1993; Rembrandt, FC 2016).
The FC panel found that the grant of SJ regarding the design ‘093 patent was erroneous due to “a series of errors regarding damages for infringing that patent”, explaining that “[d]esign patent infringement is a question of fact, which a patentee must prove by a preponderance of the evidence” under “ordinary observer” test (Richardson, FC 2010; Egyptian Goddess, FC 2008 (“the sole test”, “if the resemblance is such to deceive an observer”); Crocs, FC 2010 (“The ordinary observer test applies to the patented design in its entirety, as it is claimed.”); Amini, FC 2006 (the fact-finder must “analyze the design as a whole”)). Seirus argued “that this case should not have been resolved on SJ because of several fact disputes”, including ignoring “the repeating Seirus logo boxes, which are an integral part of the accused design” and the FC panel agreed (e.g., “the court improperly declined to consider the effect of Seirus’s logo in its infringement analysis”, the DC improperly relied on L.A. Gear (FC 1993) “for the proposition that logos should be wholly disregarded in the design-infringement analysis”), “Seirus raised several disputed fact issues regarding differences between its design and Columbia’s patented one.”) The FC panel declined to reach the damages issue.