From The Field

September 21, 2023

The analysis for design patent infringement differs from utility patent infringement, because, notwithstanding the Federal Circuit’s “Ordinary Observer” test that controls the analysis (see Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 676 (Fed. Cir. 2008) (en banc)), it can often simply seem like an exercise of “you know it when you see it.” 

For example, I was once involved in a case where a high-heeled shoe design patent was asserted against a flat sandal:
This type of case is easy, and the Plaintiff’s assertion against the flat sandal was dismissed on a motion to dismiss – no ordinary observer, giving such attention as a purchaser usually gives and looking at the resemblance of the two designs, would be deceived and induced to purchase one supposing it to be the other. 

But what about when the designs are much closer in appearance?  That is the case in the epic design patent battle between Columbia Sportswear and Seirus (the parties have been litigating for over eight years).  In that case, in which the Federal Circuit opined – yet again – last week, Columbia has asserted its design patent for a heat reflective material against Seirus’s HeatWave material which Seirus uses on products such as gloves:

Unlike utility infringement, differences between the claimed design and the prior art inform the infringement analysis.  As noted in Egyptian Goddess

[w]hen the differences between [those] design[s] are viewed in light of the prior art, the attention of the hypothetical ordinary observer will be drawn to those aspects of the claimed design that differ from the prior art.  And when the claimed design is close to the prior art designs, small differences between the accused design and the claimed design are likely to be important to the eye of the hypothetical ordinary observer.

Egyptian Goddess, 543 F.3d at  676. 

In the Columbia case, Seirus identified a number of prior art references, to be used to inform the infringement analysis, including the ’949 patent:

You can plainly see why Seirus wanted to use this prior art.  Taking this design into account would tend to narrow the scope of the claimed design.  However, the ’949 patent was directed to a “Breathable Shell for Outerwear” and related to a fabric construction.  There was no explicit reference to heat reflective properties. 

The Federal Circuit was asked to address: “what is the scope of comparison prior art”?  In other words, could the prior art design identified by Seirus be used to inform the infringement analysis if it was not applied to the article of manufacture identified in the claim?  (For those unfamiliar with design patents, each design patent only has one claim.  In the case of the Columbia patent, the claim was for “[t]he ornamental design of a heat reflective material, as shown and described.”)

In the latest Columbia decision, the Federal Circuit answered “No.”:  “[T]o qualify as comparison prior art, the prior-art design must be applied to the article of manufacture[ ]” identified in the claim of the design patent.  Columbia Sportswear N. Am., Inc. v. Seirus Innovative Accessories, Inc., (Fed. Cir. Sept. 15, 2023), slip op. at 21.    

Therefore, if the prior art ’949 patent (among others at issue in the litigation) is not directed towards a heat reflective material, it cannot be used to inform the infringement analysis. 

That does not mean that the ’949 patent is immediately excluded from consideration.  The Federal Circuit noted that on remand “the district court will likely be confronted with questions implicating what qualifies as heat reflective material.  Such questions could be difficult to answer without knowing what heat reflective material is.”  Id. at 27.  The Federal Circuit accordingly suggested this may be a term ripe for claim construction. 

Therefore, when looking for comparison prior art for an infringement (or non-infringement) analysis, it is essential to remember that the comparison prior art must be directed to the same article of manufacture as that claimed by the patent. 

On a side note, I noticed that Seirus appears to have redesigned its current HeatWave product while it battles it out with Columbia:

As seen above, the HeatWave pattern now viewable on the Seirus website ( has significant differences in appearance from that which appears in the Federal Circuit decision.  And that may explain how this is a case of first impression for the Federal Circuit – most parties settle their cases before the Federal Circuit gets an opportunity to weigh in.  However, given that the jury in the first trial awarded Columbia damages of slightly over $3 million, both parties have apparently dug in and continue to litigate, providing us with an opportunity to settle these esoteric questions of design law. 

Author: Benjamin Charkow