In the recent decision Columbia Sportswear North America, Inc., v. Seirus Innovative Accessories, Inc., ("Columbia"),1 the U.S. Court of Appeals for the Federal Circuit ("CAFC") has overruled a longstanding case2 on the protective scope of design patents. As ruled in Columbia, the scope of prior art available for comparison in infringement analysis is now limited to the same type of article as the patented claim.

In Egyptian Goddess, the lower court held that a "plaintiff in a design patent case must prove both (1) that the accused device is 'substantially similar' to the claimed design under what is referred to as the 'ordinary observer test', and (2) that the accused device contains 'substantially the same points of novelty that distinguished the patented design from the prior art.'"3

Egyptian Goddess's design patent claims a hollow rectangular tube featuring nail buffer surfaces on three of the four sides. Defendant's accused product consists of a hollow rectangular tube featuring buffer surfaces on all four of the sides. The district court determined that Defendant's product lacked one of four "points of novelty" of the Egyptian Goddess design patent and the court concluded this was enough for the defendant to avoid infringement. The CAFC affirmed the district court's decision, but relied only the first prong of the test, stating that in the field of nail buffers, a three-sided nail buffer would be distinguishable from a four-side nail buffer to a person having ordinary skill in the art. This en banc opinion essentially eliminated the second prong of the analysis.

Returning to the first prong, the test for "substantially similar" was set out many years earlier, in 1871, in Gorham Co. v White ("Gorham").4 In Gorham, the Supreme Court stated that an infringing product "must be sameness of appearance, and mere difference of lines in the drawing or sketch . . . or slight variances in configuration . . . will not destroy the substantial identity." "[S]ameness of effect upon the eye, is the main test of substantial identity of design." Accordingly, the two designs need not be the same because if that were true, "[t]here never could be piracy of a patented design, for human ingenuity has never yet produced a design, in all its details, exactly like another, so like, that an expert could not distinguish them." The Gorham Court then concluded, "[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."5

The design patent in Columbia covers an ornamental design for heat reflective material having wavy lines. Seirus sells a product under the name "HeatWave" which is a reflective material having wavy lines with Seirus's logo imprinted over the wavy lines. The district court granted summary judgment in favor of Columbia citing the "ordinary observer" test set out in Gorham.

The district court discussed two issues. First, it rejected Seirus's argument that the logo appearing throughout the design of HeatWave product made that design different enough from Columbia's claimed design to preclude summary judgment of infringement, essentially disregarding the logo altogether. Second, the district court evaluated the comparison prior art that Seirus had offered in support of Seirus's non-infringement position. Three documents were submitted by Seirus as comparison prior art: one relating to inlaying plastic threads into plastic sheets, a second relating to patterns of tire treads, and the third relating to fabric for outerwear. The district court found that these prior art patents were "too far afield" from Columbia's patented heat reflective material and therefore were not relevant comparison prior art.

On appeal, the CAFC vacated and remanded the case back to the district court, finding that disputed issues of fact precluded summary judgment. The CAFC explained, as a preliminary matter, that the district court had improperly declined to consider the effect of Seirus's logo in its infringement analysis. Precedent "does not prohibit the fact finder from considering an ornamental logo, its placement, and its appearance as one among other potential differences between a patented design and an accused one." Second, the CAFC stated that the district court had resolved certain fact issues that should have been left to a jury, including the impact of Seirus's comparison prior art.

Upon remand, the district court held a jury trial and the jury returned a verdict of non-infringement in favor of Seirus. Columbia appealed, leading to the present CAFC decision. On appeal, Columbia challenged (1) the jury instructions (and exclusion of evidence and argument) concerning comparison prior art and (2) the jury instructions implicating Seirus's logo.

In the second appeal, the CAFC extended the holding of a 2019 decision stating, "for an accused design to infringe, it must be applied to the article of manufacture identified in the claim."6 The CAFC concluded that this requirement also applies to comparison prior art used in an infringement analysis. Accordingly, to qualify as comparison prior art, the prior art design must be applied to the article of manufacture identified in the allegedly infringed claim.

Finally, turning to the issue of whether Seirus's logo placement over the wavy pattern avoided infringement of Columbia's design patent, the CAFC distinguished a logo placement on a design article from trademark or trade dress infringement. Citing, in part, the initial appeal, the CAFC stated "a would-be patent infringer should not escape liability for design patent infringement if a design is copied but labeled with [a different] name." By affixing the name, an ordinary consumer might no longer be confused about the source of the article—the basis for trademark infringement—but that does not mean the ordinary observer would not find the designs similar enough to support a claim for design patent infringement.

In summary, the CAFC ruling that for an accused design to infringe it must be applied to the article of manufacture identified in the claim, shifts infringement analysis away from Egyptian Goddess's "substantially similar" test and more towards a strict novelty analysis. When filing and prosecuting a design patent, the application must, in some way, identify the article on which the design is affixed. A design patent application describing a claiming "a wavy pattern" would likely receive a formality rejection as being "non-classifiable." Such a rejection is the examiner's way of saying that the article is not identified, and a prior art search cannot be conducted. The CAFC ruling in Columbia brings the comparison prior art analysis in infringement proceedings closer to the standard that prosecution professionals have been dealing with for some time. In addition, Columbia's holding makes it more difficult for challengers to escape infringement when there are few or no similar prior art designs in the same line of goods as the patented a

Footnotes

1. Appeal No. 2021-2299, — F.4th — (Fed. Cir. Sept. 15, 2023).

2. Egyptian Goddess v. Swisa, 543 F.3d 665 (Fed. Cir. 2008).

3. Id. at 667.

4. Gorham Co. v White, 81 U.S. 511 (1871).

5. Id. at 626-628.

6. See Curver Luxembourg, SARL v. Home Expressions Inc., 938 F.3d 1334 (Fed. Cir. 2019).

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