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Recently, the U.S. Court of Appeals for the Federal Circuit issued a precedential opinion in <em>Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, Inc.</em>, Nos. 2021-2299, -2338 (Sept. 15, 2023), vacating and remanding a judgment of non-infringement entered for Seirus.&nbsp;

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Columbia sued Seirus for infringement of Columbia’s design patent on an ornamental design of a heat reflective material. The district court granted summary judgment of infringement in favor of Columbia. After a trial on damages, Seirus appealed, and the Federal Circuit reversed and remanded, having determined that there were issues of fact on the question of infringement that should go to a jury. On remand, infringement was tried to a jury, which issued a verdict of non-infringement in favor of Seirus. Columbia appealed the resulting judgment of non-infringement.

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The Federal Circuit vacated and remanded. The Court first considered and rejected the parties’ arguments on law of the case, noting the difference in posture as between the present appeal and the initial appeal. The Court also rejected Seirus’s arguments on judicial estoppel, explaining that any “incompatibility between a determination of infringement and the previously determined damages award may be addressed, if at all, if Columbia prevails on infringement.”

Next, the Court addressed Columbia’s challenge to the district court’s jury instructions and exclusion of evidence and argument concerning comparison prior art. Acknowledging that “the proper scope of comparison prior art that may be used in an infringement analysis is an issue of first impression,” the Court held that to qualify as comparison prior art, the prior-art design must be applied to the article of manufacture identified in the claim. The Court determined that this error was prejudicial to Columbia and warranted vacating the non-infringement judgment.

Finally, the Court considered and rejected Columbia’s challenge to the district court’s jury instructions concerning Seirus’s logo and the affect the logo’s presence on the accused articles had on the infringement determination. The Court explained that the district court’s instructions used “the ordinary-observer test for design-patent infringement materially identically to how the Supreme Court and this [C]ourt have stated it, and it added that actual confusion was not necessary to find design-patent infringement.” The Court explained that these were not incorrect statements of law, and that the district court’s failure to include Columbia’s additional requested language about the irrelevance of likelihood of confusion or confusion as to source did not constitute an abuse of discretion.

CAFC Decides Issue of First Impression Concerning Comparison Prior Art for Design Patent Cases

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