“Comparison Prior Art” Must Be Tied to the Same Article of Manufacture as That Claimed | Sheppard Mullin Richter & Hampton LLP
In Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, Inc. 2021-2299, 2021-2338 (Fed. Cir. Sept. 15, 2023), the Federal Circuit vacated a jury verdict of non-infringement in a design-patent infringement action filed by Columbia Sportswear against Seirus Innovative Accessories. It found that the lower court erred by failing to instruct the jury that “comparison prior art” must be tied to the same article of manufacture as that claimed.
Background
Columbia asserted U.S. Design Patent No. D657,093, which claims “[t]he ornamental design of a heat reflective material” featuring contrasting wavy lines, against Seirus based on Serius’ HeatWave products. These products (e.g., gloves) have a wavy pattern with the “Seirus” logo throughout the design. Columbia obtained summary judgment of infringement against Seirus, and Seirus successfully appealed. On remand, the jury returned a verdict of non-infringement.
Columbia appealed, mainly challenging the jury instructions on comparison art (which serves as background when comparing a claimed and accused design) and jury instructions on the Seirus logo.
Regarding the jury instructions on comparison prior art, Columbia argued that the district court erred by failing to instruct the jury as to the scope of the comparison prior art. At trial, Columbia submitted draft jury instructions stating that “[t]he term ‘prior art’ refers to prior designs of the same article of manufacture or of articles so similar that a person of ordinary skill would look to such articles for their design.” The district court refused to apply Columbia’s draft instructions and instead gave instruction that the jury “must decide what is prior art.” Regarding the jury instructions addressing Seirus’ logo on the accused HeatWave design, Columbia argued that the district court’s instructions were erroneous for not specifying (1) that consumer confusion as to source is irrelevant to design-patent infringement, or (2) that a jury need not find a likelihood of consumer confusion to find such infringement.
Issues
Whether the district court erred in its jury instructions on the comparison prior art and the Seirus logo.
Holding(s)
The Federal Circuit agreed with Columbia that the district court failed to properly instruct the jury because the jury was not provided the correct standard for determining whether an admitted reference qualified as comparison prior art. The Federal Circuit further found that the error was prejudicial and warranted vacating the non-infringement judgment and remanding for further proceedings. However, the Federal Circuit disagreed with Columbia’s argument that the district court erred by not instructing that consumer confusion as to source is irrelevant for design-patent infringement, or that likelihood of confusion (in addition to actual confusion) need not be found.
Reasoning
Regarding the jury instruction on comparison prior art, the Federal Circuit stated that “the proper scope of comparison prior art that may be used in an infringement analysis is an issue of first impression.” Thus, the prior-art design must be applied to the article of manufacture identified in the claim. The district court erred by failing to instruct the jury as to the scope of the asserted patent’s claim (design for a heat reflective material). The Federal Circuit stated this error was an understandable one, given that the court had just now articulated this standard.
Regarding the jury instruction on Serius’ logo, the Federal Circuit reasoned that the district court’s provision of the ordinary-observer test for design patent infringement was materially identical to how the Supreme Court and Federal Circuit have stated it, and that the district court specified that actual confusion was not necessary to find design-patent infringement. The Federal Circuit was not convinced that the district court’s decision not to include these additions or clarifications was an abuse of discretion or resulted in instructions that were misleading or incomplete. While the Federal Circuit acknowledged the potential for a jury to be led astray and mistakenly conflate the significance of a logo’s source-identifying function with whatever impact it might have on a comparison of the designs, it found that district courts are in the best position to decide whether and when to provide clarification on these issues.
