September 21, 2023

Comparison prior art designs are, in appropriate cases, useful as background for highlighting distinctions and similarities between the claimed and accused designs in a design patent infringement analysis.  In Columbia Sportwear N. Am., Inc. v. Seirus Innovations Accessories, Inc., ---F.4th---, 2023 WL 5988026 (Fed. Cir. Sept. 15, 2023), an appeal from a non-infringement judgment, the Federal Circuit establishes the standard for the scope of comparison prior art that can be used in this context.

When the Court held in Egyptian Goddess that the ordinary observer test is the sole test for design patent infringement it retained a role for prior art “in cases where ‘the claimed and accused designs are not plainly dissimilar.’” Id. at *8 (quoting Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 678 (Fed. Cir. 2008) (en banc)).  The Federal Circuit panel in Columbia Sportwear discussed this role and the Court’s reasoning in Egyptian Goddess for applying the ordinary observer test in close cases “with reference to prior art designs.” Id. at *8; Egyptian Goddess at 543 F.3d at 676-77 (reasoning, for instance, that prior art designs can inform the perspective of the hypothetical ordinary observer).

Addressing the comparison prior art issues raised by Columbia Sportswear, the panel confirmed that a design patent’s scope is limited to the article of manufacture identified in the claim (here, heat reflective material) and agreed that this limitation should also apply to the scope of comparison prior art. 2023 WL 5988026, at *8.  The panel then held that “to qualify as comparison prior art, the prior art design must be applied to the [same] article of manufacture identified in the claim.” Id. at *8-10 (discussing reasons for applying this requirement to comparison prior art, including that this standard best accords with the purpose of comparison prior art, it conforms with many cases in which comparison prior art designs have been used, and it is “already in the system” for determining anticipatory prior art and thus it makes sense to use the same scope for comparison prior art).

The panel vacated the non-infringement judgment and remanded for further proceedings after considering other issues raised by Columbia Sportswear and determining that it could not address Seirus’ damages-related challenges because its disposition left the case without an infringement determination. Id. at *11-14 (discussing, for instance, the role of function in design patents and particularly its use to determine whether the identified article to which a claimed design is applied is the same as another article, and the consideration of logos, their placement and appearance, in the design patent infringement analysis).