“Seirus Petitions for Writ of Certiorari in Design Patent Dispute with Columbia Sportswear”

In a long-standing design patent dispute, Seirus has petitioned for a writ of certiorari against Columbia Sportswear. The petition raises two questions concerning the comparison process for design patent infringement, specifically focusing on what can qualify as “comparison prior art” used to provide context for the infringement analysis.

The questions presented are: Is the article’s function relevant when looking for comparison prior art? Must the comparison prior art be the “same article” as claimed?

Columbia’s design patent claims an “ornamental design of a heat reflective material” as shown in the figures. The patent is broad enough to cover any “heat reflective material” having the ornamental wave pattern applied. The case has seen multiple trials, with the most recent jury siding with the accused infringer Seirus, finding no infringement. However, the Federal Circuit vacated this judgment on appeal and remanded for another new trial.

Design patent infringement follows a unique approach, requiring the comparison of the accused product against the patent drawings. The fact finder is asked whether an “ordinary observer” who is likely to purchase the product would be deceived by the similarity between the patented design and the accused design.

In the past, the Supreme Court recognized that the ordinary observer test has the potential of allowing unduly expansive rights. To solve this problem, the concept of “comparison prior art” was introduced. Juries are provided with the closest prior art as background references to help avoid giving substantial infringement weight for features that were already in the prior art.

In the case of Columbia’s patent, there are many examples of prior art products with a similar wavy pattern. With several wave patterns as prior art references, it is easy to see why the jury found that the particular wave pattern design was not infringed.

Columbia appealed the non-infringement judgment, and the Federal Circuit vacated, concluding that the district court erred by allowing comparison prior art that was not the same article of manufacture as the patented and accused products. The Federal Circuit concluded that the comparison prior art must also be a heat reflective material.

Seirus argues that the Federal Circuit contravened both Supreme Court and its own precedent by limiting comparison prior art to designs applied to the exact same article of manufacture recited in the patent claim.

In its petition, Seirus argues that the Federal Circuit’s approach leads to unjust results, including improper recapture of the public domain. The petition also identified one old case where a door knob was used as the comparison prior art for a patented bell.

Columbia’s response to the petition is due April 24, 2024. However, Columbia’s attorneys have not yet filed an appearance in the case, suggesting that Columbia will waive its right to respond. Parties often choose not to respond to petitions for certiorari because the Supreme Court grants very few petitions, and the cost of preparing a response may not be justified.

This case highlights the complexities of design patent infringement and the role of comparison prior art in such cases. The outcome of Seirus’s petition could have significant implications for future design patent disputes.