Monday, September 18, 2023

Federal Circuit Declines to Reach Design Patent Damages Issues

The decision, handed down on Friday, is Columbia Sportswear North America, Inc. v. Seirus InnovativeAccessories, Inc., with a precedential opinion by Judge Prost, joined by Judges Reyna and Hughes.  This a design patent case, involving the alleged infringement of D657,093, for “the ornamental design of a heat reflective material,” and this is the second time it has been to the Federal Circuit.  The first time around, the district court had granted a summary judgment of infringement, after which a jury awarded damages in the amount of $3,018,174.  The Federal Circuit vacated the grant of summary judgment of infringement and remanded for further proceedings, without reaching the damages issues.  This time around, the case went to the jury, which found no infringement.  On appeal, the parties dispute whether certain issues were “the law of the case,” as well as the correctness of the jury instructions on prior art and infringement.  Since this blog focuses on damages, I will pass over these except to note that the appellate court’s holdings on some of these issues—that “to qualify as comparison prior art, the prior-art design must be applied to the article of manufacture identified in the claim”; that the district court erred by “failing to instruct the jury as to the scope of the D’094 patent claim (design for a heat reflective material) and, relatedly, the proper scope of comparison prior art”; and that “just because a logo’s potential to eliminate confusion as to source is irrelevant to design-patent infringement, its potential to render an accused design dissimilar to the patented one—maybe even enough to establish non-infringement as a matter of law—should not be discounted”—would seem pretty important to the substantive law of design patents.   Nevertheless, because the case has to go back yet again for retrial, the court (correctly, in my view) leaves the damages issues (important thought they indeed are) for another day:

Seirus argues that, for purposes of calculating damages under 35 U.S.C. § 289,14 the relevant “article of manufacture” is the HeatWave material—not the entire end product to which it is applied (e.g., gloves with portions not made of HeatWave material). . . . Seirus also argues that the district court erred by instructing the jury (at the damages trial) that Seirus bore the burden of proving that the article of manufacture for § 289 damages purposes is less than the entire end product. According to Seirus, Columbia—as the patentee—bore the burden of proving what that article is. The parties further disagree as to whether any damages retrial on profit-disgorgement issues should be tried to a jury or the bench.

14 Section 289 provides (in relevant part):


Whoever during the term of a patent for a design, without license of the owner, (1) applies the patented design, or any colorable imitation thereof, to any article of manufacture for the purpose of sale, or (2) sells or exposes for sale any article of manufacture to which such design or colorable imitation has been applied shall be liable to the owner to the extent of his total profit, but not less than $250, recoverable in any United States district court having jurisdiction of the parties.


35 U.S.C. § 289.


As we indicated in Columbia I, these are important issues. See 942 F.3d at 1132. But we did not reach them there because our disposition left the case with no infringement determination. See id. Because our disposition here likewise leaves the case without an infringement determination, we do not reach these issues (pp. 32-33).

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