The “ordinary observer” test for design-patent infringement is as follows:

[I]f, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.

Gorham Co. v. White, 81 U.S. (14 Wall.) 511, 528 (1871).

In the design-patent infringement analysis, comparison with the prior art serves as background when comparing a claimed and accused design because the “ordinary observer is deemed to view the differences between the patented design and the accused product in the context of the prior art.” Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 676 (Fed. Cir. 2008) (en banc).

Particularly in close cases, it can be difficult to answer the question whether one thing is like another without being given a frame of reference. The context in which the claimed and accused designs are compared, i.e., the background prior art, provides such a frame of reference and is therefore often useful in the process of comparison. Where the frame of reference consists of numerous similar prior art designs, those designs can highlight the distinctions between the claimed design and the accused design as viewed by the ordinary observer.

Egyptian Goddess, 543 F.3d at 676–77; see also Int'l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1239 (Fed. Cir. 2009) (noting that Egyptian Goddess “refined the ordinary observer test” by incorporating the context of the prior art). Notably, Egyptian Goddess eliminated the separate point-of-novelty test and held that the ordinary-observer test is the sole test for design-patent infringement. Id., 543 F.3d at 678.

Wavy Design for Heat Reflective Material

In Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, Inc., No. 2021-2299, — F.4th — (Fed. Cir. Sept. 15, 2023), the Federal Circuit recently held that “comparison prior art” used for infringement analysis must be tied to the same article of manufacture as that claimed in the design patent.

Columbia owns U.S. Design Patent No. D657,093 for a heat reflective material featuring contrasting wavy lines. Seirus sells gloves and other products incorporating its HeatWave material, which features similar wavy lines. And Columbia sued Seirus.

Earlier, the district court had granted summary judgment of infringement in Columbia's favor, which was vacated on appeal because of disputed issues of fact regarding the impact of Seirus's logo and certain prior art references. Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, Inc., 942 F.3d 1119 (Fed. Cir. 2019) (“Columbia I”) (holding that logo placement might allow the defendant to avoid an infringement judgment).

On remand, the case went to trial, and a jury found no infringement.

This time, the Federal Circuit vacated the jury verdict because the jury compared prior art that was not the same article of manufacture claimed in the design patent.

Prior design patent infringement precedent from the Federal Circuit had limited the universe of anticipatory prior art and infringing designs to the particular article of manufacture claimed. See Curver Luxembourg, SARL v. Home Expressions Inc., 938 F.3d 1334, 1340 (Fed. Cir. 2019); Int'l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1240 (Fed. Cir. 2009).

We have held that, for a prior-art design to anticipate, it must be applied to the article of manufacture identified in the claim. We have also held that, for an accused design to infringe, it must be applied to the article of manufacture identified in the claim. We conclude that this requirement also applies to comparison prior art used in an infringement analysis.

The Court explained that this narrow approach aligns with the purpose of allowing comparison prior art: “that purpose is to help inform an ordinary observer's comparison between the claimed and accused designs—designs that, necessarily, must be applied to the same article of manufacture.” Thus, while design patents cannot claim primarily functional designs, referring to an article of manufacture's function to distinguish it from other articles is permissible and relevant.

The design patent was limited to ornamental designs for “heat reflective material”; but the district court instructed jurors that they must decide for themselves what constitutes comparison prior art, without explaining that it must involve designs applied to heat reflective material. The prior art was directed to plastic threads inlaid into plastic sheets, unwoven fabric for tires, and shell fabric for outerwear; and was admitted into evidence as disclosing “wave patterns on fabric.”

The Federal Circuit vacated and remanded, suggesting that the district court conduct a claim construction on the term “heat reflective material.”

Logos

Also, if a design is copied but the product is labeled with someone else's name or logo, then that does not avoid liability for design patent infringement. Columbia I, 942 F.3d at 1131 (holding that because design-patent infringement does not consider consumer confusion as to source, such infringement “is not avoided ‘by labelling'” (quoting L.A. Gear, 988 F.2d at 1126)).

But logos are hardly irrelevant, either.

But, that “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.” Id. at 1131 (emphasis in original).

            The takeaway is: just because consumers might not be confused about an accused product's source, that alone would not preclude an ordinary observer from deeming the claimed and accused designs similar enough to constitute design-patent infringement. See Braun, 975 F.2d at 828 (discussing differences between trademark and design-patent infringement and noting that what matters for the latter is “that an ordinary observer would be deceived by reason of an accused [product]'s ornamental design” (emphasis added)). At the same time, however, just because a logo's potential to eliminate confusion as to source is irrelevant to design-patent infringement, its potential to render an accused design dissimilar to the patented one—maybe even enough to establish non-infringement as a matter of law—should not be discounted.

The Federal Circuit held that an instruction that the jury did “not need, however, to find that any purchasers were actually deceived or confused by the appearance of the accused products” was not an incorrect statement of law.

The patent attorneys at Thomas P. Howard, LLC enforce patents and defend against infringement in litigation nationwide including in Colorado.