Riding The Design Wave

// As I have said on these pages before, design patents are different. In that 2020 column, I noted research showing that the most common litigation pairing when it comes to the parties in a design patent infringement case involves small or medium competitors. Because design patent cases often involve competitors, there is perhaps an enhanced chance, absent settlement, for design patent disputes to get all the way up to the Federal Circuit for review. When that happens, as it did last week, the usual result is an important decision with broad impact on design patent jurisprudence. Last week’s decision in Columbia v. Seirus wears the “important” description well, at least as measured by the rare multiple–post treatment on Patently-O.com that the Federal Circuit’s opinion garnered.

For those with an interest in design patents, the most recent Federal Circuit ruling is just the latest legal event in this long-running dispute. Back in 2019, an earlier panel had reversed a grant of summary judgment of infringement in Columbia’s favor “for two reasons: (1) the court improperly declined to consider the effect of Seirus’s logo in its infringement analysis and (2) the court resolved a series of disputed fact issues, in some instances relying  on an incorrect standard, that should have been tried to a jury.” As a result of that reversal, Columbia’s $3 million verdict was wiped away as well, with the case going back to the district court for a new trial. In that post-remand trial, Seirus secured a verdict of non-infringement, which Columbia appealed. But rather than attack the jury’s verdict, often a losing proposition on appeal, Columbia chose to challenge the jury instructions, as well as the district court’s decision to preclude Columbia from challenging the comparison prior art on the grounds that it was not directed to heat-reflective material, but rather just to the broader category of fabric.

googletag.cmd.push( function() { // Display ad. googletag.display( "div-id-for-top-300x250" ); });

To start, the Federal Circuit panel dealt with some arguments by both sides regarding potential waiver of arguments based on the outcome of the original appeal, before turning to “Columbia’s challenges to (1) the jury instructions (and exclusion of evidence and argument) concerning comparison prior art and (2) the jury instructions implicating Seirus’s logo.” On the former, the panel noted “the proper scope of comparison prior art that may be used in an infringement analysis is an issue of first impression for this court.” On balance, therefore, the panel concluded that “using the same scope for anticipatory prior art and comparison prior art makes good practical sense” as the best way of finding answers when “close questions may arise as to the relationship between a given article of manufacture and what the claim identifies.” Here, the jury verdict could not stand because the jury instructions did not incorporate the legal standard that the Federal Circuit had just determined was the appropriate one. In other words, the trial was retroactively deemed premature, since the proper standard on comparison prior art was not yet articulated. In this case, where Columbia argued that the relevant prior art had to come from the universe of articles that encompassed heat-reflective material, as opposed to any type of fabric, the incomplete jury instruction was thus prejudicial. Having tossed the jury verdict, the panel charged the district court on remand to figure out what articles of manufacture contain the requisite heat-reflective material, a determination that when reached could be dispositive to the infringement question based on its potential bearing on the comparison prior art that would remain.

Sponsored Lex Machina's Karl Harris On Success With AI Lex Machina CEO Karl Harris weighs in on the future of generative AI in legal tech, and what best positions a company for success. From Ethan Beberness  

Next, the panel turned to the question of whether the district court’s jury instruction went far enough in terms of making clear to the jury 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.” Here, the panel disagreed with Columbia that such a far-reaching instruction was necessary. It did so even as it expressed that it could “appreciate 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.” Still, the jury instruction here, which set forth the proper legal test for design patent infringement, while also instructing the jury that they did not need to find actual confusion in order to find infringement passed muster.

Lastly, the panel punted on the question of scope of damages, as like in the first Columbia decision, the Federal Circuit’s ruling on appeal left the infringement issue unsettled.

googletag.cmd.push( function() { // Display ad. googletag.display( "div-id-for-middle-300x250" ); }); googletag.cmd.push( function() { // Display ad. googletag.display( "div-id-for-storycontent-440x100" ); }); googletag.cmd.push( function() { // Display ad. googletag.display( "div-id-for-in-story-youtube-1x1" ); });

Ultimately, this latest decision will likely continue to generate additional discussion from the design patent community. It will be interesting to see whether the parties themselves decide that they have had enough of the fight — as each has now won below only to see the Federal Circuit reverse — or whether they will continue the battle. Either way, their mutual contribution to design patent jurisprudence is a substantial one. Future design patent litigants will benefit from Columbia and Seirus’s willingness to ride the design wave up and down to the Federal Circuit multiple times.

(N.B. I was a recent guest on the Loyal Littles Podcast, where I discussed my journey into IP, writing this column, and of course my longstanding relationship from afar with Tony Kornheiser. Thanks to Chuck and Roxy for having me on and for taking the time to bring people with shared interests together.)

Sponsored Sponsored NetDocuments’ Rebecca Sattin On Customer-First Approach And Future-Proofing Your Firm How a customer-focused transition from Worldox to NetDocuments sets the stage for a future of successful tech advancement. From Ethan Beberness   Sponsored Lex Machina's Karl Harris On Success With AI Lex Machina CEO Karl Harris weighs in on the future of generative AI in legal tech, and what best positions a company for success. From Ethan Beberness   Sponsored Announcing Ontra Atlas, Modern Entity Management Built for Private Equity Ontra Atlas extends Ontra’s Legal Operating System, an AI-enabled platform that digitally transforms critical legal workflows. From Ontra   Sponsored NetDocuments’ Rebecca Sattin On Customer-First Approach And Future-Proofing Your Firm How a customer-focused transition from Worldox to NetDocuments sets the stage for a future of successful tech advancement. From Ethan Beberness  

Please feel free to send comments or questions to me at [email protected] or via Twitter: @gkroub. Any topic suggestions or thoughts are most welcome.

Gaston Kroub lives in Brooklyn and is a founding partner of Kroub, Silbersher & Kolmykov PLLC, an intellectual property litigation boutique, and Markman Advisors LLC, a leading consultancy on patent issues for the investment community. Gaston’s practice focuses on intellectual property litigation and related counseling, with a strong focus on patent matters. You can reach him at [email protected] or follow him on Twitter: @gkroub.

googletag.cmd.push( function() { // Display ad. googletag.display( "div-id-for-bottom-300x250" ); }); Sponsored Sponsored InterAction+ Brings Power Of CRM Software To Law Firms Of All Sizes The only legal CRM with exclusive content from LexisNexis®. From LexisNexis® InterAction+™   Sponsored Experience AI-Powered Contract Negotiation With Ontra Tired of negotiating and managing routine contracts? Ontra makes the most of human expertise and proprietary AI assistance to automate contracts like never before. From Ethan Beberness   Topics

Biglaw, Design Patents, Gaston Kroub, Intellectual Property