Design patents play a distinct role in intellectual property law, often winding up in disputes between competitors. These cases can frequently escalate all the way to the Federal Circuit for review, if settlements are not reached. A prime example of this is last week’s significant decision in Columbia v. Seirus, which stirred prominent discussions in patent jurisprudence due to its potential wide-reaching impact decision.
The Columbia v. Seirus dispute goes back several years, with a previous grant of summary judgement in Columbia’s favor reversed in 2019 on two grounds, namely the court’s refusal to factor in Seirus’ logo in its infringement analysis and the resolution of several disputed fact issues improperly. The $3 million verdict favoring Columbia was, hence, nullified, prompting a new trial. However, the jury in this new round ruled Seirus non-infringement, which Columbia appealed on the grounds of jury instructions and the court’s refusal to let Columbia raise its pre-trial issue concerning comparison prior art.
Significantly, the Federal Circuit Panel held that for the purpose of infringement analysis the scope of comparison prior art and anticipatory prior art should be the same. This was deemed as a more practical approach to address the link between a particular article of manufacture and what the claim identifies. In a case such as this, where Columbia argued that the relevant prior art should specifically pertain to heat-reflective material as opposed to fabric in general, the lack of clear jury instructions was prejudicial. The court’s decision thus rendered the trial premature.
The panel also considered whether the district court’s jury instruction was sufficiently clear about consumer confusion concerning source being irrelevant to design-patent infringement. The panel upheld that clarity on this point wasn’t essential but did underscore the potential for a jury to misinterpret a logo’s source-identification function with its potential impact on a comparison of the designs.
The panel left the question of scope of damages open, given the unsettled nature of the infringement issue, much like the first Columbia decision. This latest episode in the ongoing Columbia v. Seirus dispute is set to further stir the waters of design patent jurisprudence. The willingness of both parties in persisting despite multiple reversals at the Federal Circuit is shaping a new narrative in the realm of design patents.
Columbia and Seirus’s contribution cannot be understated, as future litigants will benefit from the precedents set by the series of trials and appeals. What remains to be seen is whether the parties will continue to invest in this pitched battle or arrive at a settlement – a decision that the design patent community and legal professionals across the globe will await with interest.
Reach out to Gaston Kroub for further insights at gkroub@kskiplaw.com or follow him on Twitter @gkroub.