Takeaway: The U.S. Court of Appeals for the Federal Circuit recently clarified key aspects of design patent law, addressing the scope of comparison prior art and the role of logos in infringement analysis, offering consistency and discretion to district courts.
In a recent precedential decision, the U.S. Court of Appeals for the Federal Circuit clarified key aspects of design patent law. The case in question, Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, Inc., centered on the infringement of a design patent related to heat-resistant liner material. Initially, a district court ruled in favor of Columbia, but Seirus appealed. The Federal Circuit vacated the summary judgment and remanded the case. Subsequently, Columbia appealed again after a jury found non-infringement at the district court level.
The Federal Circuit addressed two main issues in this case:
Scope of Comparison Prior Art: The court clarified that the scope of comparison prior art in design patent infringement cases is limited to the article of manufacture identified in the patent claim. This aligns with previous Federal Circuit decisions that required prior art designs to be applied to the same article of manufacture as specified in the claim for anticipation or infringement analysis.
- Effect of a Logo on Infringement Analysis: The court left it to district courts to determine how juries should consider the impact of logos or trademarks applied to accused goods during a design patent infringement analysis. The court emphasized the distinction between trademark infringement (which involves consumer confusion about a product's source) and design patent infringement, stating that the lack of confusion regarding the source does not preclude a determination of design patent infringement. However, the court acknowledged that logos and trademarks could affect the similarity between the patented and accused designs, potentially leading to a finding of non-infringement.
The decision offers clarity and consistency in applying the same standards for prior art analysis in patentability, infringement, and comparison art assessments. It also grants district courts discretion in deciding how logos and trademarks should be considered in design patent infringement cases on a case-by-case basis, providing flexibility in addressing this issue.