As I’ve stated on these pages earlier than, design patents are completely different. In that 2020 column, I famous analysis displaying that the most typical litigation pairing in the case of the events in a design patent infringement case includes small or medium rivals. Because design patent instances typically contain rivals, there may be maybe an enhanced probability, absent settlement, for design patent disputes to get all the approach as much as the Federal Circuit for assessment. When that occurs, because it did final week, the traditional end result is a vital resolution with broad impression on design patent jurisprudence. Last week’s resolution in Columbia v. Seirus wears the “important” description nicely, not less than as measured by the uncommon a number of–submit therapy on Patently-O.com that the Federal Circuit’s opinion garnered.
For these with an curiosity in design patents, the most up-to-date Federal Circuit ruling is simply the newest authorized occasion on this lengthy-working dispute. Back in 2019, an earlier panel had reversed a grant of abstract judgment of infringement in Columbia’s favor “for two reasons: (1) the court improperly declined to consider the effect of Seirus’s logo in its infringement analysis and (2) the court resolved a series of disputed fact issues, in some instances relying on an incorrect standard, that should have been tried to a jury.” As a results of that reversal, Columbia’s $3 million verdict was wiped away as nicely, with the case going again to the district court docket for a brand new trial. In that submit-remand trial, Seirus secured a verdict of non-infringement, which Columbia appealed. But moderately than assault the jury’s verdict, typically a shedding proposition on attraction, Columbia selected to problem the jury directions, in addition to the district court docket’s resolution to preclude Columbia from difficult the comparability prior artwork on the grounds that it was not directed to warmth-reflective materials, however moderately simply to the broader class of material.
To begin, the Federal Circuit panel handled some arguments by each side relating to potential waiver of arguments based mostly on the final result of the authentic attraction, earlier than turning to “Columbia’s challenges to (1) the jury instructions (and exclusion of evidence and argument) concerning comparison prior art and (2) the jury instructions implicating Seirus’s logo.” On the former, the panel famous “the proper scope of comparison prior art that may be used in an infringement analysis is an issue of first impression for this court.” On steadiness, subsequently, the panel concluded that “using the same scope for anticipatory prior art and comparison prior art makes good practical sense” as the greatest approach of discovering solutions when “close questions may arise as to the relationship between a given article of manufacture and what the claim identifies.” Here, the jury verdict couldn’t stand as a result of the jury directions didn’t incorporate the authorized customary that the Federal Circuit had simply decided was the applicable one. In different phrases, the trial was retroactively deemed untimely, since the correct customary on comparability prior artwork was not but articulated. In this case, the place Columbia argued that the related prior artwork needed to come from the universe of articles that encompassed warmth-reflective materials, versus any kind of material, the incomplete jury instruction was thus prejudicial. Having tossed the jury verdict, the panel charged the district court docket on remand to determine what articles of manufacture comprise the requisite warmth-reflective materials, a dedication that when reached might be dispositive to the infringement query based mostly on its potential bearing on the comparability prior artwork that will stay.
Next, the panel turned to the query of whether or not the district court docket’s jury instruction went far sufficient when it comes to making clear to the jury that “consumer confusion as to source is irrelevant for design-patent infringement, or that likelihood of confusion (in addition to actual confusion) need not be found.” Here, the panel disagreed with Columbia that such a far-reaching instruction was crucial. It did so even because it expressed that it may “appreciate the potential for a jury to be led astray and mistakenly conflate the significance of a logo’s source-identifying function with whatever impact it might have on a comparison of the designs.” Still, the jury instruction right here, which set forth the correct authorized take a look at for design patent infringement, whereas additionally instructing the jury that they didn’t want to search out precise confusion with the intention to discover infringement handed muster.
Lastly, the panel punted on the query of scope of damages, as like in the first Columbia resolution, the Federal Circuit’s ruling on attraction left the infringement concern unsettled.
Ultimately, this newest resolution will possible proceed to generate further dialogue from the design patent group. It shall be fascinating to see whether or not the events themselves determine that they’ve had sufficient of the battle — as every has now gained beneath solely to see the Federal Circuit reverse — or whether or not they may proceed the battle. Either approach, their mutual contribution to design patent jurisprudence is a considerable one. Future design patent litigants will profit from Columbia and Seirus’s willingness to journey the design wave up and right down to the Federal Circuit a number of instances.
(N.B. I used to be a current visitor on the Loyal Littles Podcast, the place I mentioned my journey into IP, penning this column, and naturally my longstanding relationship from afar with Tony Kornheiser. Thanks to Chuck and Roxy for having me on and for taking the time to convey individuals with shared pursuits collectively.)
Please be at liberty to ship feedback or inquiries to me at gkroub@kskiplaw.com or through Twitter: @gkroub. Any subject recommendations or ideas are most welcome.
Gaston Kroub lives in Brooklyn and is a founding associate of Kroub, Silbersher & Kolmykov PLLC, an mental property litigation boutique, and Markman Advisors LLC, a number one consultancy on patent points for the funding group. Gaston’s follow focuses on mental property litigation and associated counseling, with a powerful concentrate on patent issues. You can attain him at gkroub@kskiplaw.com or observe him on Twitter: @gkroub.
