throbber

`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`COLUMBIA SPORTSWEAR NORTH AMERICA,
`INC., AN OREGON CORPORATION,
`Plaintiff-Appellant
`
`v.
`
`SEIRUS INNOVATIVE ACCESSORIES, INC., A
`UTAH CORPORATION,
`Defendant-Cross-Appellant
`______________________
`
`2018-1329, 2018-1331, 2018-1728
`______________________
`
`Appeals from the United States District Court for the
`Southern District of California in No. 3:17-cv-01781-HZ,
`Judge Marco A. Hernandez.
`______________________
`
`Decided: November 13, 2019
`______________________
`
`NICHOLAS (NIKA) FREMONT ALDRICH, JR., Schwabe,
`Williamson & Wyatt, Portland, OR, argued for plaintiff-ap-
`pellant. Also represented by DAVID W. AXELROD, SARA
`KOBAK.
`
` SETH MCCARTHY SPROUL, Fish & Richardson, PC, San
`Diego, CA, argued for defendant-cross-appellant. Also rep-
`resented by CHRISTOPHER MARCHESE, OLIVER RICHARDS,
`TUCKER N. TERHUFEN.
`
`

`

`2
`
`COLUMBIA SPORTSWEAR v. SEIRUS INNOVATIVE ACCESSORIES
`
` ______________________
`
`Before LOURIE, MOORE, and STOLL, Circuit Judges.
`LOURIE, Circuit Judge.
`Columbia Sportswear North America, Inc. (“Colum-
`bia”) appeals from the U.S. District Court for the Southern
`District of California’s judgment after a jury trial that
`claims 2 and 23 of U.S. Patent 8,453,270 (“the ’270 patent”)
`are invalid as anticipated and obvious. See Judgment, Co-
`lumbia Sportswear N. Am. v. Seirus Innovative Accessories,
`Inc., No. 3:17-cv-01781 (S.D. Cal. Nov. 22, 2017), ECF No.
`403. Seirus Innovative Accessories, Inc. (“Seirus”) cross-
`appeals from the U.S. District Court for the District of Or-
`egon’s grant of summary judgment that it infringes U.S.
`Patent D657,093 (“the ’093 patent”) and from its entry of
`the jury’s damages award. Columbia Sportswear N. Am.,
`Inc. v. Seirus Innovative Accessories, 202 F. Supp. 3d 1186
`(D. Or. 2016) (“Summary Judgment Decision”). Because
`we conclude that the court did not err in holding claims 2
`and 23 of the ’270 patent invalid but that it did err in grant-
`ing summary judgment of infringement for the ’093 patent,
`we affirm-in-part, reverse-in-part, and remand for further
`proceedings.
`
`BACKGROUND
`At issue in these proceedings are two patents: the ’270
`patent and the ’093 patent. The ’270 patent is a utility pa-
`tent directed to materials that use a pattern of heat-direct-
`ing elements coupled to a base fabric to manage heat
`through reflection or conductivity. ’270 patent col. 1 ll. 22–
`27. Figures in the patent depict the material’s use in cold-
`weather and camping gear, including jackets, boots, gloves,
`hats, pants, sleeping bags, and tents. Id. figures 4–15. At
`issue here are claims 2 and 23. Claim 2 depends from claim
`1, which recites:
`
`

`

`COLUMBIA SPORTSWEAR v. SEIRUS INNOVATIVE ACCESSORIES
`
`3
`
`1. A heat management material adapted for use
`with body gear, comprising:
`a base material having a transfer property that is
`adapted to allow, impede, and/or restrict passage of
`a natural element through the base material; and
`a discontinuous array of discrete heat-directing el-
`ements, each independently coupled to a first side
`of a base material, the heat directing elements be-
`ing positioned to direct heat in a desired direction,
`wherein a surface area ratio of heat-directing ele-
`ments to base material is from about 7:3 to about
`3:7 and wherein the placement and spacing of the
`heat-directing elements permits the base material
`to retain partial performance of the transfer prop-
`erty.
`Id. col. 8 ll. 8–22. Claim 2 further requires that “the base
`material comprises an innermost layer of the body gear
`having an innermost surface, and wherein the heat-direct-
`ing elements are positioned on the innermost surface to di-
`rect heat towards the body of a body gear user.” Id. col. 8
`ll. 23–26.
`The ’093 patent is a design patent drawn to the “orna-
`mental design of a heat reflective material.” As with all
`design patents, what is claimed is “the ornamental design
`. . . as shown and described.” 37 C.F.R. § 1.153(a). Figure
`1 depicts the claimed wave-pattern design:
`
`
`
`
`
`
`

`

`4
`
`COLUMBIA SPORTSWEAR v. SEIRUS INNOVATIVE ACCESSORIES
`
`Several remaining figures in the patent depict the design
`as applied to sleeping bags, boots, pants, gloves, and jack-
`ets. ’093 patent figures 4–10.
`On January 12, 2015, Columbia filed suit in the Dis-
`trict of Oregon accusing Seirus of infringing both patents.
`Seirus first filed a motion to dismiss for improper venue
`under Fed. R. Civ. P. 12(b)(3). Relying on VE Holding
`Corp. v. Johnson Gas Appliance Co., 917 F.2d 1574 (Fed.
`Cir. 1990), Seirus argued that it was not subject to personal
`jurisdiction in Oregon, so it did not reside in the district for
`purposes of 28 U.S.C. § 1400(b). Defendant Seirus Innova-
`tion Accessories, Inc.’s Memorandum in Support of Motion
`to Dismiss, or, Alternatively, Transfer Venue to the South-
`ern District of California, Columbia Sportswear N. Am. v.
`Seirus Innovative Accessories, Inc., No. 3:17-cv-01781 (Feb.
`27, 2015), ECF No. 16. Seirus moved in the alternative to
`transfer the case to the Southern District of California for
`convenience. The court declined to dismiss or transfer the
`case because it found itself to have personal jurisdiction
`over Seirus and found the convenience transfer factors to
`be balanced. See Columbia Sportswear N. Am., Inc. v.
`Seirus Innovative Accessories, No. 3:15-CV-00064-HZ, 2015
`WL 3986148, at *1 (D. Or. June 29, 2015).
`The district court also granted summary judgment that
`Seirus’s HeatWave products infringe the ’093 patent. See
`Summary Judgment Decision, 202 F. Supp. 3d 1186. The
`court first held that the “ordinary observer” for the design
`patent infringement analysis would be the end buyer and
`user of Seirus’s gloves and products. Id. at 1192. Viewing
`the designs side-by-side, the court then reasoned that “even
`the most discerning customer would be hard pressed to no-
`tice the differences between Seirus’s HeatWave design and
`Columbia’s patented design,” characterizing the difference
`in wave pattern, orientation, and the presence of Seirus’s
`logo as “minor differences.” Id. at 1192–93.
`
`

`

`COLUMBIA SPORTSWEAR v. SEIRUS INNOVATIVE ACCESSORIES
`
`5
`
`Two years after its first venue motion, Seirus moved
`again under Rule 12(b)(3) to dismiss the case for lack of
`jurisdiction or to transfer it to the Southern District of Cal-
`ifornia. This time, Seirus’s argument relied on the Su-
`preme Court’s intervening decision in TC Heartland LLC v.
`Kraft Foods Grp. Brands LLC, 137 S. Ct. 1514 (2017), which
`overruled VE Holding. Although it found Seirus had waived
`its venue challenge, the district court found TC Heartland to
`be “an intervening change in the law excusing [Seirus]’s
`waiver” and transferred the case to the Southern District of
`California. Columbia Sportswear N. Am., Inc. v. Seirus Inno-
`vative Accessories, Inc., 265 F. Supp. 3d 1196, 1208 (D. Or.
`2017) (“Transfer Decision”).
`In that court, infringement and invalidity of the ’270
`patent were tried to a jury, and the jury determined that
`claims 2 and 23 were invalid as both anticipated and obvi-
`ous. See Jury Verdict Form, Columbia Sportswear N. Am.
`v. Seirus Innovative Accessories, Inc., No. 3:17-cv-01781
`(Sept. 29, 2017), ECF No. 377, J.A. 4–6. The jury did not
`reach the issue of infringement of the ’270 patent. The jury
`also considered damages and willfulness for infringement
`of the ’093 patent, awarding Columbia $3,018,174 in dam-
`ages but finding that the infringement was not willful. Id.
`Both parties filed post-trial motions for judgment as a
`matter of law and for a new trial, but the court summarily
`denied them in a two-page opinion. J.A. 7–9. Both parties
`filed notices of appeal. We have jurisdiction under 28
`U.S.C. § 1295(a)(1).
`
`DISCUSSION
`In its appeal, Columbia argues that the district court
`should have granted its motion for judgment as a matter of
`law that the invention of the ’270 patent was not antici-
`pated and would not have been obvious at the time of the
`invention. Columbia also asks us to grant it a new trial on
`validity issues for the ’270 patent. If the case is remanded
`for any reason, Columbia requests that we reverse the
`
`

`

`6
`
`COLUMBIA SPORTSWEAR v. SEIRUS INNOVATIVE ACCESSORIES
`
`district court’s decision, rendered after TC Heartland, to
`transfer the case to the Southern District of California. In
`the cross-appeal, Seirus requests that we reverse the dis-
`trict court’s grant of summary judgment that its products
`infringe the ’093 patent and reverse or vacate the damages.
`We consider each issue in turn.
`In reviewing issues tried to a jury, we review the dis-
`trict court’s denial of post-trial motions for judgment as a
`matter of law and for a new trial under the law of the re-
`gional circuit—here, the Ninth Circuit. See Finjan, Inc. v.
`Secure Computing Corp., 626 F.3d 1197, 1202 (Fed. Cir.
`2010) (citing Revolution Eyewear, Inc. v. Aspex Eyewear,
`Inc., 563 F.3d 1358, 1370 (Fed. Cir. 2009)). In evaluating
`a district court’s ruling on motions for judgment as a mat-
`ter of law, we ask whether the verdict was supported by
`substantial evidence. Unicolors, Inc. v. Urban Outfitters,
`Inc., 853 F.3d 980, 984 (9th Cir. 2017) (citing Harper v. City
`of Los Angeles, 533 F.3d 1010, 1021 (9th Cir. 2008)). Under
`Ninth Circuit law, “[a] jury’s verdict must be upheld if sup-
`ported by substantial evidence.” OTR Wheel Eng’g, Inc. v.
`W. Worldwide Servs. Inc., 897 F.3d 1008, 1015 (9th Cir.
`2018) (citing Unicolors, 853 F.3d at 984). “Substantial ev-
`idence is evidence adequate to support the jury’s conclu-
`sion, even if it is possible to draw a contrary conclusion
`from the same evidence,” and “[t]he credibility of the wit-
`nesses and the weight of the evidence are issues for the jury
`and are generally not subject to appellate review.” Id.
`We review the district court’s denial of a motion for a
`new trial for an abuse of discretion. Molski v. M.J. Cable,
`Inc., 481 F.3d 724, 728 (9th Cir. 2007) (citing Dorn v. Bur-
`lington N. Santa Fe R.R. Co., 397 F.3d 1183, 1189 (9th Cir.
`2005)). Rule 59(a)(1)(A) provides that the district court
`may grant a motion for a new trial after a jury trial “for any
`reason for which a new trial has . . . been granted in an
`action at law in federal court.” A “motion for a new trial
`may invoke the discretion of the court in so far as it is bot-
`tomed on the claim that the verdict is against the weight of
`
`

`

`COLUMBIA SPORTSWEAR v. SEIRUS INNOVATIVE ACCESSORIES
`
`7
`
`the evidence . . . and may raise questions of law arising out
`of alleged substantial errors in admission or rejection of ev-
`idence or instructions to the jury.” Montgomery Ward &
`Co. v. Duncan, 311 U.S. 243, 251 (1940). In the Ninth Cir-
`cuit, a “trial court may grant a new trial only if the verdict
`is contrary to the clear weight of the evidence, is based
`upon false or perjurious evidence, or to prevent a miscar-
`riage of justice.” Passantino v. Johnson & Johnson Con-
`sumer Prods., Inc., 212 F.3d 493, 510 n.15 (9th Cir. 2000)
`(citing Ace v. Aetna Life Ins. Co., 139 F.3d 1241, 1248 (9th
`Cir. 1998), cert denied, 525 U.S. 930 (1998)).
`I. THE APPEAL – THE ’270 PATENT
`We first consider the jury’s findings that the ’270 pa-
`tent is invalid. At trial, Seirus presented two invalidity
`grounds to the jury: that the asserted claims were antici-
`pated by Fottinger and that the claims would have been
`obvious over Fottinger alone or in combination with one of
`Halley, Worley, Vaughn, or Blauer. The jury found the
`claims invalid under both theories.
`Fottinger, U.K. Patent Application GB 2,073,613A, de-
`scribes textile sheets coated on at least one face with a
`binder and metal powder. Fottinger lists as suitable “[a]ll
`known dispersible binders” and comments that aluminum
`or aluminum alloy are preferred metals. The coating is de-
`scribed as discontinuous and as coating from 5% to 40% of
`the surface area of the coated face, while the textile sheet
`is described as “very suitable for use as interlinings and as
`lining fabrics for articles of clothing.” Fottinger col. 2
`ll. 48–50.
`The other references each relate to outerwear materi-
`als with various coatings. Halley, U.S. Patent Application
`2002/0197924, relates to composite lining materials for
`garments. Halley Abstract. Halley describes a water-re-
`sistant, water-vapor permeable, flexible substrate that has
`fabric secured to one side and a plurality of discrete abra-
`sion-resisting polymeric dots on the other. Id. The
`
`

`

`8
`
`COLUMBIA SPORTSWEAR v. SEIRUS INNOVATIVE ACCESSORIES
`
`abrasion-resisting dots cover 30% to 70% by area of the
`flexible substrate, and “coverage of the substrate material
`is not too great to substantially affect the water-vapor-per-
`meability thereof.” Id. ¶ 44.
`Vaughn, U.K. Patent Application GB 2,350,073, simi-
`larly describes a water-resistant water-vapor permeable
`material with polymer coating to improve abrasion re-
`sistance, while Blauer, U.S. Patent 5,626,949, describes a
`breathable shell for outerwear with a high tensile strength
`stratum printed on the inner face of the fabric, covering
`10% to 90% of the surface area of the inner face. Worley,
`U.S. Patent 7,135,424, also describes a substrate coated
`discontinuously with a polymeric material for use in ap-
`parel, footwear, medical products, and other products.
`Columbia argues on appeal that the district court
`should have granted its motion for JMOL that the claims
`are not anticipated and would not have been obvious over
`the references. It devotes most of its briefing to the antici-
`pation ground. But because we agree with Seirus that sub-
`stantial evidence supports the jury’s verdict that the claims
`would have been obvious, we need not reach Columbia’s an-
`ticipation arguments.
`Columbia raises two challenges to the jury’s obvious-
`ness findings: (1) that Fottinger fails to disclose certain
`claim limitations, and (2) that Seirus’s expert testimony
`was deficient. First, Columbia argues that Fottinger fails
`to teach the placement of “discrete heat directing ele-
`ments,” “each individually coupled” to a base material, on
`the “innermost surface” of a garment. Specifically, Colum-
`bia points to a passage in Fottinger that states that the dis-
`closed materials are “very suitable for use as interlining
`and as lining fabrics” and suggests that interlinings differ
`from the innermost surface of a garment. Appellant’s Br.
`44 (citing Fottinger, col. 2 ll. 48–52). Columbia further
`maintains that Fottinger does not disclose heat-directing
`elements because the plastic binder in Fottinger does not
`
`

`

`COLUMBIA SPORTSWEAR v. SEIRUS INNOVATIVE ACCESSORIES
`
`9
`
`direct heat, and, if the aluminum particles in the binder
`are considered to be the heat-directing elements, those par-
`ticles are not independently coupled to the base material
`as required by the claims.
`To the extent Seirus relies on other references to meet
`these limitations, Columbia argues that the record lacks
`evidence regarding combining the art. Additionally, Co-
`lumbia contends that a person of skill would not have ex-
`pected 30% to 70% coverage to be successful in view of
`Fottinger, which teaches no more than 40% coverage of a
`material with the binder.
`Second, Columbia argues that this case involves a tech-
`nical area beyond the training and education of most jurors
`and thus requires competent expert testimony on the issue
`of obviousness. Columbia then suggests that Dr. Block’s
`testimony is unable to support the jury’s verdict because he
`failed to apply the correct legal standard for obviousness
`and failed to consider objective indicia in his analysis.
`As to the merits of the obviousness defense, Seirus re-
`sponds that the range in Fottinger and the range in the
`claims overlap and that the overlap establishes a prima fa-
`cie case of obviousness, which was not rebutted. Seirus
`also counters that Fottinger discloses every limitation of
`the claims, but, to the extent Fottinger fails to meet every
`limitation, Seirus relies on any of Vaughn, Halley, Blauer,
`and Worly as disclosing 30% to 70% coverage.
`In response to Columbia’s argument regarding expert
`testimony, Seirus maintains that expert testimony is not
`required in this case because the references are easily un-
`derstandable. If expert testimony is required, however,
`Seirus relies on Dr. Block’s testimony and argues that it is
`legally correct.
`We agree with Seirus that the jury’s obviousness ver-
`dict was supported by substantial evidence. Obviousness
`is a question of law, supported by underlying fact
`
`

`

`10
`
`COLUMBIA SPORTSWEAR v. SEIRUS INNOVATIVE ACCESSORIES
`
`questions. In re Baxter Int’l, Inc., 678 F.3d 1357, 1361 (Fed.
`Cir. 2012). In evaluating obviousness, we consider the
`scope and content of the prior art, differences between the
`prior art and the claims at issue, the level of ordinary skill
`in the pertinent art, and any secondary considerations.
`Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 17–18
`(1966). “[A] prima facie case of obviousness arises when
`the ranges of a claimed composition overlap the ranges dis-
`closed in the prior art.” In re Harris, 409 F.3d 1339, 1341
`(Fed. Cir. 2005) (citing In re Peterson, 315 F.3d 1325, 1329
`(Fed. Cir. 2003)). The parties dispute three claim limita-
`tions: (1) “discrete heat directing elements” that are “each
`individually coupled to a base material; (2) that those ele-
`ments are present on the innermost surface of a garment;
`and (3) that the elements cover 30% to 70% of the base ma-
`terial.
`Fottinger discloses “a textile sheet” with a “discontinu-
`ous coating comprising a binder and metal powder” cover-
`ing “from 5 to 40% of the surface area of the coated face.”
`Fottinger col. 2 ll. 54–60. The jury was entitled to rely on
`Fottinger’s disclosed “discontinuous coating comprising a
`binder and metal powder” as the claimed “discrete heat di-
`recting element.” Likewise, the jury was entitled to read
`Fottinger’s disclosure that the coating is “on at least one
`face” and could be used as “lining fabrics for articles of
`clothing” to mean that Fottinger’s coated face was on the
`innermost surface of a garment. The range of coverage in
`Fottinger significantly overlaps that in the claims, and
`“even a slight overlap in range establishes a prima facie
`case of obviousness.” In re Peterson, 315 F.3d at 1329.
`Columbia’s specific arguments that the heat directing
`elements in Fottinger are the aluminum particles and that
`the Fottinger coating could not have been on the innermost
`surface of a garment are simply inconsistent with the facts
`as indicated above. The record evidence was “adequate to
`support the jury’s conclusion,” even if Columbia would
`
`

`

`COLUMBIA SPORTSWEAR v. SEIRUS INNOVATIVE ACCESSORIES 11
`
`“draw a contrary conclusion from the same evidence.” OTR
`Wheel Eng’g, 897 F.3d at 1015.
`Columbia also argues that Seirus’s obviousness de-
`fense lacked necessary, competent expert testimony. But
`we are not persuaded that the legal determination of obvi-
`ousness in this case requires such evidence. The technol-
`ogy here—coated materials for cold weather and outdoor
`products—is “easily understandable without the need for
`expert explanatory testimony.” Perfect Web Techs., Inc. v.
`InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009) (quot-
`ing Centricut, LLC v. Esab Grp., Inc., 390 F.3d 1361, 1369
`(Fed. Cir. 2004)). The primary topics covered by the ’270
`patent specification are the pattern of the heat-directing
`elements, percentage coverage of the base material, and
`the various ways the material could be used in body gear.
`There is no discussion of thermodynamics or the mecha-
`nism that yields the claimed material’s heat retentive prop-
`erties in the patent. Thus, given the patent and references’
`general, easily understood language, this is not a case that
`requires expert explanation. See Intercontinental Great
`Brands LLC v. Kellogg N. Am. Co., 869 F.3d 1336, 1348
`(Fed. Cir. 2017) (holding expert testimony was not required
`for motivation to combine where the specification and
`claims did not include any new manufacturing equipment
`or instructions to produce the claimed food containers). Be-
`cause expert testimony is not required in this case, Colum-
`bia’s critiques of Dr. Block’s testimony do not persuade us
`that Columbia is entitled to judgment as a matter of law.
`In light of the foregoing and considering the record be-
`fore the district court, the jury’s verdict that the claims of
`the ’270 patent would have been obvious is certainly sup-
`ported by substantial evidence, and judgment as a matter
`of law was properly denied.
`Columbia argues in the alternative that it is entitled to
`a new trial for two reasons: (1) because the court declined
`to instruct the jury with Columbia’s proposed instruction
`
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`

`12
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`COLUMBIA SPORTSWEAR v. SEIRUS INNOVATIVE ACCESSORIES
`
`on anticipatory ranges and (2) because Seirus’s expert, Dr.
`Block, falsely testified that Fottinger taught an embodi-
`ment with 36% coverage.
`First, Columbia argues that the district court should
`have instructed the jury to apply a set of factors in deter-
`mining whether Fottinger’s overlapping range anticipates
`the range in the claims. The proposed instruction would
`have asked the jury to consider whether “there is a consid-
`erable difference” between the two ranges, whether the
`claimed range was “critical to the invention,” and whether
`the claimed range “performs contrary to what might be ex-
`pected from the prior art.” J.A. 1567.
`Because Columbia does not challenge the instructions
`given as misleading or incorrect statements of the law, we
`review the district court’s jury instruction for an abuse of
`discretion. Mockler v. Multnomah Cty., 140 F.3d 808, 812
`(9th Cir. 1998). Further, in the Ninth Circuit, “[h]armless
`error review applies to jury instructions in civil cases.”
`Kennedy v. S. Cal. Edison Co., 268 F.3d 763, 770 (9th Cir.
`2001). We need not decide whether the district court
`abused its discretion in declining to instruct the jury on an-
`ticipatory ranges because the jury also found the claims ob-
`vious under other jury instructions unchallenged by
`Columbia on appeal. Any error in the instructions for an-
`ticipation thus constitutes harmless error.
`Second, Columbia submits that Dr. Block’s testimony
`regarding Fottinger entitles it to a new trial. Specifically,
`Dr. Block testified at trial that Fottinger’s use of a “25
`mesh” with half-millimeter spots yielded an embodiment
`with 36% coverage. Both Seirus and Columbia agree that
`this testimony was incorrect. Appellant’s Br. 68; Appellee’s
`Br. 64. Seirus characterizes Dr. Block’s testimony as an
`error in interpreting how the dot pattern in Fottinger re-
`peated, Appellee’s Br. 67, while Columbia characterizes it
`as intentionally introduced false testimony, Appellant’s Br.
`69–70.
`
`

`

`COLUMBIA SPORTSWEAR v. SEIRUS INNOVATIVE ACCESSORIES 13
`
`We have considered the issue of false testimony in at
`least two cases, Fraige v. American-National Watermat-
`tress Corp., 996 F.2d 295 (Fed. Cir. 1993), and Rembrandt
`Vision Technologies, L.P. v. Johnson & Johnson Vision
`Care, Inc., 818 F.3d 1320 (Fed. Cir. 2016). Both came to us
`after denials of motions under Rule 60(b), which specifi-
`cally provides for relief from a judgment in the case of
`fraud. Even putting aside this procedural difference, how-
`ever, the facts here—a few lines of mistaken expert testi-
`mony—are in stark contrast to the facts in those cases. For
`example, in Fraige, the defendant’s fraudulent conduct was
`so significant that the court imposed sanctions against the
`defendant under Fed. R. Civ. P. 11 and referred the matter
`of misconduct to the United States Attorney. 996 F. 2d at
`296–97. In Rembrandt, an expert falsely testified about
`performing experiments material to the issues in the case
`and withheld data that would have undermined his opin-
`ions. 818 F.3d at 1323–24. Such conduct infects the pro-
`ceedings and can result in an unfair trial, but the record
`here is not comparable. Even if Dr. Block purposefully mis-
`represented the contents of Fottinger, Fottinger itself was
`in the record for the jury to consider. The jury could have
`easily verified any representations about the reference.
`Moreover, Columbia had ample opportunity to cross-exam-
`ine Dr. Block on his incorrect understanding of Fottinger’s
`disclosure. Under these circumstances and given the un-
`complicated nature of the evidence, we cannot conclude
`that Dr. Block’s misstatements warrant a new trial.
`II. THE CROSS APPEAL – THE ’093 PATENT
`In the cross-appeal, Seirus argues that the district
`court erred in granting summary judgment that its prod-
`ucts infringe the ’093 patent and that the court made a se-
`ries of errors regarding damages for infringing that patent.
`But, because we agree with Seirus that the district court
`erred in granting summary judgment, we need not reach
`its arguments regarding damages.
`
`

`

`14
`
`COLUMBIA SPORTSWEAR v. SEIRUS INNOVATIVE ACCESSORIES
`
`We review a grant of summary judgment under the law
`of the regional circuit, which in this case is the Ninth Cir-
`cuit. See Charles Mach. Works, Inc. v. Vermeer Mfg. Co.,
`723 F.3d 1376, 1378 (Fed. Cir. 2013). The Ninth Circuit
`“review[s] a district court’s order granting or denying sum-
`mary judgment de novo.” City of Pomona v. SQM N. Am.
`Corp., 750 F.3d 1036, 1043 (9th Cir. 2014).
`Summary judgment is appropriate when the moving
`party demonstrates that “there is no genuine dispute as to
`any material fact and the movant is entitled to judgment
`as a matter of law.” Fed. R. Civ. P. 56(a); Celotex Corp. v.
`Catrett, 477 U.S. 317, 322–23 (1986). “We determine, view-
`ing the evidence in the light most favorable to the nonmov-
`ing party, whether there are any genuine issues of material
`fact and whether the district court correctly applied the rel-
`evant substantive law.” Wallis v. Princess Cruises, Inc.,
`306 F.3d 827, 832 (9th Cir. 2002) (citing Clicks Billiards,
`Inc. v. Sixshooters Inc., 251 F.3d 1252, 1257 (9th Cir.
`2001)). The court “does not weigh the evidence or deter-
`mine the truth of the matter, but only determines whether
`there is a genuine issue for trial.” Balint v. Carson City,
`180 F.3d 1047, 1054 (9th Cir. 1999) (citing Summers v. A.
`Teichert & Son, Inc., 127 F.3d 1150, 1152 (9th Cir. 1997)).
`Design patent infringement is a question of fact, which
`a patentee must prove by a preponderance of the evidence.
`Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1295
`(Fed. Cir. 2010) (citing L.A. Gear, Inc. v. Thom McAn Shoe
`Co., 988 F.2d 1117, 1124 (Fed. Cir. 1993)). The “ordinary
`observer” test is the sole test for determining whether a de-
`sign patent has been infringed. Egyptian Goddess, Inc. v.
`Swisa, Inc., 543 F.3d 665, 678 (Fed. Cir. 2008) (en banc).
`The test originates from the Supreme Court’s Gorham de-
`cision, which provides that “if, in the eye of an ordinary ob-
`server, 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 pur-
`chase one supposing it to be the other, the first one
`
`

`

`COLUMBIA SPORTSWEAR v. SEIRUS INNOVATIVE ACCESSORIES 15
`
`patented is infringed by the other.” Gorham Co. v. White,
`81 U.S. 511, 528 (1871)). “The ordinary observer test ap-
`plies to the patented design in its entirety, as it is claimed.”
`Crocs, Inc. v. Int'l Trade Comm’n, 598 F.3d 1294, 1303
`(Fed. Cir. 2010). The ordinary observer is considered to be
`familiar with prior art designs, and “[w]hen the differences
`between the claimed and accused designs are viewed in
`light of the prior art, the attention of the hypothetical ordi-
`nary observer may be drawn to those aspects of the claimed
`design that differ from the prior art.” Id. (citing Egyptian
`Goddess, 543 F.3d at 681). “If the claimed design is close
`to the prior art designs, small differences between the ac-
`cused design and the claimed design assume more im-
`portance to the eye of the hypothetical ordinary observer.”
`Id.
`In analyzing whether Seirus’s products infringe, the
`district court began by identifying the ordinary observer.
`The court found that it was the “retail customer who buys
`and uses Seirus’s products lined with the HeatWave fabric
`to keep their hands, feet, or head warm during outdoor ac-
`tivities,” and deemed such an end buyer and user of
`Seirus’s products to be the ordinary observer. Summary
`Judgment Decision, 202 F. Supp. 3d at 1192. Considering
`the designs side-by-side, the court found that “even the
`most discerning customer would be hard pressed to notice
`the differences between Seirus’s HeatWave design and Co-
`lumbia’s patented design.” Id.
`Seirus argued that there were substantial and signifi-
`cant differences between the designs—including that the
`waves in Seirus’s design were interrupted by repeated use
`of Seirus’s logo, that waves varied in terms of orientation,
`spacing, and size, and especially that some of the designs
`differed by 90º. But the district court disagreed. First, the
`district court declined to consider Seirus’s logo placement
`because logo placement was not claimed in Columbia’s pa-
`tent. Id. at 1194. As for orientation, the court discounted
`this feature because the ’093 patent did not require a
`
`

`

`16
`
`COLUMBIA SPORTSWEAR v. SEIRUS INNOVATIVE ACCESSORIES
`
`particular design orientation. In comparing the wave spac-
`ing and size, the court found those differences were not
`claimed in the patent and were irrelevant to its analysis.
`Id. at 1195. Even considering the differences, however, the
`court found them to be “so minor as to be nearly impercep-
`tible” and that they did “not change the overall visual im-
`pression that the Seirus design is the same as Columbia’s
`patented one.” Id. To complete its analysis, the court con-
`sidered Seirus’s submitted prior art designs, which the
`court found to be “far afield from Columbia’s ‘heat manage-
`ment materials.’” Id. at 1196. Considering the closest de-
`sign, however, the court found Columbia and Seirus’s
`designs to be “substantially closer” than the pattern dis-
`closed in a prior art patent. Id. at 1197.
`Seirus argues that this case should not have been re-
`solved on summary judgment because of several fact dis-
`putes. For example, Seirus suggests that the parties
`disputed the identity of the ordinary observer, and a jury
`could have determined that the ordinary observer was a
`sophisticated, commercial buyer, not an end customer buy-
`ing the products directly. Appellee’s Br. 23. Such a buyer,
`according to Seirus, would have noticed differences be-
`tween the designs, including the physical orientation of the
`designs and the thickness of the waves. Seirus also con-
`tests the court’s evaluation of the prior art as improper res-
`olution of disputed fact issues. Seirus argues that the
`district court’s principal mistake, however, was to “ignore
`the repeating Seirus logo boxes, which are an integral part
`of the accused design.” Id. at 28. According to Seirus, ex-
`cluding such ornamental elements of the accused design
`simply because they include its logo is at odds with this
`court’s jurisprudence that the ordinary observer compare
`the overall appearance of the two designs.
`Columbia responds that there was no genuine dispute
`of material fact regarding infringement. According to Co-
`lumbia, the ordinary observer is not the intervening com-
`mercial reseller but the end consumers who are the
`
`

`

`COLUMBIA SPORTSWEAR v. SEIRUS INNOVATIVE ACCESSORIES 17
`
`principal purchasers of products with Seirus’s design. Re-
`garding Seirus’s logo, Columbia argues that its presence
`does not make Seirus’s design less infringing, and, when
`the design is compared without the logo, it is virtually iden-
`tical to that claimed in the ’093 patent. As for the product’s
`orientation, Columbia argues that fabric can be oriented in
`any direction depending on how it is held, so the court was
`correct to reject Seirus’s defense that orientation was ma-
`terial to the analysis.
`Given the record in this case, we are persuaded that
`the district court erred in granting summary judgment of
`infringement for two reasons: (1) the court improperly de-
`clined to consider the effect of Seirus’s logo in its

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