Even for seasoned patent attorneys, the world of design patents can present its own set of challenges. This September, the Federal Circuit added another wrinkle to the design patent infringement analysis when it considered whether sportswear maker Columbia’s design patent for a wave-patterned heat reflective material was infringed by a similar design from competitor Seirus, or whether Seirus’s design was distinct enough to be considered non-infringement. See Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories Inc., 80 F.4th 1363 (Fed. Cir. 2023).

As one example of design patent law’s distinctions from utility patents, when analyzing anticipation or non-obviousness of a utility patent application, “The task generally consists of simply comparing the properly construed patent [application] claim to the 'prior arts’ disclosure. See Columbia Sportswear, 80 F.4th at 1377 n. 7. Because of the more subjective nature of designs, however, this is simply not practical. Therefore, “A [claimed] design must be compared with something in existence, and not something brought into existence by selecting and combining features from prior art references.” MPEP 1504.03(II) (citing In re Jennings, 182 F.2d 207, 86 USPQ 68 (CCPA 1950)) (emphasis in original). In other words, an examiner must start with a primary reference that is nearly identical to the claimed design, and can only then rely on a secondary reference to read on individual features not disclosed by the primary reference.

Likewise, determining infringement of a design patent requires its own unique set of rules. In Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 676 (Fed. Cir. 2008) (en banc), the Federal Circuit held that the sole test for determining design patent infringement is the “ordinary observer” test:

"[I]n 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 . . . purchase [of] one supposing it to be the other, the first one patented is infringed by the other."

Id. at 670 (quoting Gorham Co. v. White, 81 U.S. 511 (1871)). The standard for determining whether “two designs are substantially the same,” however, can change on a case-by-case basis. Id. Therefore, if the claimed and accused designs are sufficiently similar, it can be useful to compare each of the accused design and the claimed design to the prior art to determine what was known in the art at the time of the claimed design’s invention, and how the claimed design differs from that prior art. See Columbia Sportswear, 80 F.4th at 1369 (Fed. Cir. 2023).

Such prior art is known as “comparison prior art.” Id. Comparison prior art provides the ordinary observer with a frame of reference to understand how and why differences or similarities between the claimed and accused designs matter. See Egyptian Goddess, 543 F.3d at 676. This is because “when the differences between the claimed and accused design are viewed in light of the prior art,” the differences between the claimed design and the prior art are most likely to draw the ordinary observer’s attention. Id. Until recently, however, no clear rule existed for determining what prior art could qualify as comparison prior art. Therefore, the Federal Circuit set out to draw this line in Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories Inc., 80 F.4th at 1377.

In Columbia Sportswear, Columbia charged Seirus with infringing its patent U.S. Design Patent No. D657,093 (“the D’093 Patent”), titled “Heat Reflective Material,” in the U.S. District Court for the District of Oregon. 80 F.4th at 1367-68. Claim 1, the sole claim of the D’093 Patent, is directed to “the ornamental design of a heat reflective material,” and the figures depict a repeated wave pattern both on its own and applied to the inner lining of various sportswear articles, the articles themselves being disclaimed. D’093 Patent at Claim 1, Figs. 1-10. According to Columbia, Seirus infringed the D’093 by producing and selling its line of “HeatWave” sportswear products, which feature a repeated wave pattern that is generally similar to the claimed design of the D’093 Patent but for the addition of the Seirus logo patterned on top of the repeated wave. Columbia Sportswear, 80 F.4th at 1368.

At trial, the District Court limited Seirus’s comparison prior art to “wave patterns on fabric.” Id. at 1371. Seirus thus offered three comparison prior art references to support its non-infringement position: U.S. Patents Nos. 2,539,690 (“the ’690 Patent,” directed to a “Method of Providing Plastic Sheets with Inlaid Stripes”), 1,515,792 (the “’792 Patent,” directed to “Unwoven Fabric and Process for Making the Same”), and 5,626,949 (“the ’949 Patent,” directed to a “Breathable Shell for Outerwear”). Id. Columbia challenged the propriety of these references, arguing that the scope of the comparison prior should have been limited to heat reflective materials only, as is recited in the D’093 Patent. Id. The District Court disagreed, stating that to do so would improperly import functionality into a design patent, and the jury ultimately found that Seirus did not infringe the D’093 Patent. Columbia therefore appealed to the Federal Circuit concerning the proper scope of comparison prior art (among other things). Id. at 1373.

On appeal, the Federal Circuit agreed with Columbia that comparison prior art used for determining infringement must be “limited to the article of manufacture identified in the [asserted] claim[.]” Id. at 1377-78. In other words, to prove non-infringement of a spoon design, the comparison prior art must also be a spoon and cannot be a fork. See Id. Although this was an issue of first impression for the Federal Circuit, it looked to the standard for design patent anticipation – which requires that prior art be limited to the article of manufacture at issue – and determined the same test should apply for the comparison prior art infringement analysis. Id. at 1378-79. In particular, the Federal Circuit gave three distinct reasons for its holding. Id.

First, doing so aligns with the overall purpose of the ordinary observer test; an allegedly infringing design is unlikely to “induc[e the] purchase [of] one supposing it to be the other” if the articles of manufacture at issue are apples and oranges. Id. at 1378; Egyptian Goddess, 543 F.3d at 676. Second, although the court had never required comparison prior art be limited to the relevant article of manufacture, it has historically done so regardless. Id. at 1378-79 (collecting cases). Finally, the Federal Circuit reasoned that adopting the anticipation standard made “good practical sense” for a few reasons. Id. at 1379. For example, it is already a known standard due to its application in anticipation analyses. Id. (citing In re SurgiSil, L.L.P., 14 F.4th 1380, 1382 (Fed. Cir. 2021) (“A design claim is limited to the article of manufacture identified in the claim; it does not broadly cover a design in the abstract. The Patent Act permits the grant of a design patent only to ‘[w]hoever invents any new, original and ornamental design for an article of manufacture.’”)). Furthermore, the “article of manufacture” standard is “easy to articulate and provides clear boundaries.” Id.

As for the District Court’s concern about importing functional limitations to a design patent, the Federal Circuit found this to be a non-issue as well. Id. at 1380-81. “Here, the issue . . . is not whether the D’093 [P]atent’s design (e.g., a wavy pattern) is dictated by function. Rather, the issue is whether the claimed article to which that design is applied is the same as another article.” Id. at 1380. The Federal Circuit admitted that the term “heat reflective material” may not have an immediately apparent definition, and therefore the District Court might be required to construe it; nevertheless, the Federal Circuit vacated the jury’s non-infringement finding and remanded the case to the District Court for a new trial using its new comparison prior art standard.

Accordingly, attorneys must be diligent to ensure that only comparison prior art of the proper scope is presented to courts and juries when making non-infringement arguments. Although the Federal Circuit’s new standard provides clear guidance in selecting that scope, it also narrows the field of eligible prior art and possibly introduces new claim construction challenges to design patent litigation.

ABOUT BAKER BOTTS L.L.P.
Baker Botts is an international law firm whose lawyers practice throughout a network of offices around the globe. Based on our experience and knowledge of our clients' industries, we are recognized as a leading firm in the energy, technology and life sciences sectors. Since 1840, we have provided creative and effective legal solutions for our clients while demonstrating an unrelenting commitment to excellence. For more information, please visit bakerbotts.com.