Logo Placement Not Per Se Excludable in Design Patent Infringement Test
Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, Inc., __ F.3d __, 2019 WL 5938886 (Fed. Cir. Nov. 13, 2019) (LOURIE, Moore, Stoll) (S.D. Cal.: Hernandez) (3 of 5 stars)
Fed Cir affirms judgment that Columbia’s utility patent is invalid, reverses summary judgment that Seirus infringes Columbia’s design patent, and affirms pre-trial venue transfer.
Utility patent: The district court did not abuse its discretion in denying Columbia’s motion for JMOL of nonobviousness. Columbia’s utility patent relates to heat-directing fabrics, used in cold-weather and camping gear. The opinion describes the references and finds them sufficient to support the jury’s verdict. It rejects Columbia’s attack on the expert testimony Seirus presented. Per Perfect Web, 587 F.3d 1324 (Fed. Cir. 2009), expert testimony may not be necessary where the technology is easily understandable. That is the case here, and so “Columbia’s critiques of [Seirus’s expert’s] testimony do not persuade us that Columbia is entitled to [JMOL].” Op. at 11.
The district court also did not abuse discretion in denying Columbia’s motion for a new trial. Columbia challenged the district court’s decision not to instruct as to “anticipatory ranges,” but because the jury also found the claims obvious under unchallenged instructions, any error was harmless. Columbia’s claim that Seirus intentionally introduced false expert testimony as to one reference’s content did not warrant a new trial, and the opinion notes that Columbia had an opportunity to cross-examine, and in any case the reference was before the jury.
Design patent: Summary judgment of infringement was improper. The district court erred in disregarding the placement of Seirus’s logo on accused goods as part of the infringement analysis. Per L.A. Gear, 988 F.2d 1117 (Fed. Cir. 1993) (relied on by the district court), design patent infringement liability may not be escaped merely by labeling a copied design with its name. “But L.A. Gear does not prohibit the fact finder from considering an ornamental logo, its placement, and its appearance as one among other potential differences between a patented design and an accused one.” Op. at 17. The district court also erred in its resolution of certain fact issues Seirus had raised, and the opinion criticizes its approach as “piecemeal” rather than analyzing the goods’ design “as a whole.” Id. at 18.
Because the summary judgment is reversed and the infringement finding vacated, the opinion does not reach disputes as to damages.
Venue: The district court (for the District of Oregon) did not abuse discretion in entertaining a post-TC Heartland challenge to venue in 2017. Seirus had challenged venue in 2015, but on grounds that TC Heartland subsequently overruled. Though Seirus waived that challenge by not presenting it in 2015, the district court did not abuse its discretion in excusing that waiver. Micron, 875 F.3d 1091 (Fed. Cir. 2017), is not contrary. “In Micron, this court explained that the district court had authority to find venue waiver outside the context of Rule 12 [e.g., by conduct or, here, by challenging venue on inapt grounds]. But we did not prohibit a district court from excusing litigation conduct-based waiver based on an intervening change in the law.” Op. at 21–22.
KEYWORDS: VALIDITY (NO); DESIGN PATENTS; INFRINGEMENT; VENUE; WAIVER