Columbia Sportswear v. Seirus: Pacesetter for Application of the Government's 'Article of Manufacture' Test in Design Patent Damages Cases

• Author: Perry J. Saidman - William P. Gvoth
• Position: Perry J. Saidman is the founder of Saidman DesignLaw Group LLC in Silver Spring, Maryland. He is a recognized pioneer in design law, now focusing on enforcement of design patents, trade dress (3D product configurations), and design copyrights. He can be reached at perry.saidman@designlawgroup.com. William P. Gvoth is a patent attorney...
• Pages: 48-63

Published in Landslide® magazine, Volume 12, Number 1, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2019 by the American Bar Association. Reproduced with permission. All rights reserved.

This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.

Columbia

Sportswear

v. Seirus

Pacesetter for

Application of the

Government’s “Article

of Manufacture” Test

in Design Patent

Damages Cases

By Perry J. Saidman

and William P. Gvoth

Every so often a legal case is situated to be

a pacesetter for application of a new law

or test. Columbia Sportswear v. Seirus1 is

such a case and is currently pending in the

U.S. Court of Appeals for the Federal Cir-

cuit. This is the rst time that the Federal Circuit will

review arguments under a four-factor test for deter-

mining the “article of manufacture” for the purpose

of calculating design patent damages. The four-factor

test was rst suggested by the U.S. government via the

Department of Justice and the United States Patent and

Trademark Ofce (USPTO) in their amicus curiae brief

led in the U.S. Supreme Court in Samsung v. Apple.2

Columbia Sportswear North America Inc. and Seirus

Innovative Accessories Inc. agreed that the government’s

four-factor test is appropriate for determining the “arti-

cle of manufacture” under 35 U.S.C. § 289. Both parties

have led briefs arguing the different factors as applied to

the facts of their case. A coauthor of this article has pub-

lished a critique of the four-factor test.3 This article will use

the Columbia Sportswear case as a way to evaluate the four-

factor test, taking into account the critique, and to predict

possible outcomes of the case.

Samsung v. Apple and the Government’s Four-Factor Test

In March 2016, the Supreme Court granted Samsung Electron-

ics Co.’s petition for certiorari in a suit between the company

and Apple Inc. over infringement of a suite of design patents

covering the original iPhone.4 The design patents at issue related

to the iPhone’s iconic graphical user interface with rows of color-

ful icons on a black background, the rounded-corner face plate with

home button, and the black touch screen with speaker opening.5

At trial, Apple prevailed on the issue of infringement of all three

design patents, whose validity was also upheld, and was awarded dam-

ages that were eventually calculated to be $399 million for Samsung’s

sale of infringing smartphones.6 The damage award constituted the total

prot from the sale of all infringing smartphones by Samsung. This was

based on a nding that the entire smartphone that Samsung sold was the

relevant “article of manufacture” under 35 U.S.C. § 289 for the purpose of

determining total prot damages.7 Section 289 states:

Whoever during the term of a patent for a design, without license of

the owner, (1) applies the patented design, or any colorable imitation

thereof, to any article of manufacture for the purpose of sale, or (2) sells

or exposes for sale any article of manufacture to which such design

or colorable imitation has been applied shall be liable to the owner to

the extent of his total prot, but not less than $250, recoverable in any

United States district court having jurisdiction of the parties.8

The issue raised by Samsung in the Supreme Court was whether the

Federal Circuit’s identication of the entire smartphone as the article of man-

ufacture for the purpose of total prot damages under § 289 was appropriate.

The Supreme Court found that under § 289 the relevant article of manufac-

ture is not necessarily the entire product when a multicomponent product,

like a smartphone, is at issue, but declined to address the narrower question of

whether in that case the article of manufacture was the smartphone, or a com-

ponent of the smartphone, for each design patent at issue. The Court declined

to adopt a test for determining the article of manufacture in any given case,

Published in Landslide® magazine, Volume 12, Number 1, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2019 by the American Bar Association. Reproduced with permission. All rights reserved.

This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.

Perry J. Saidman is the founder of Saidman DesignLaw Group

LLC in Silver Spring, Maryland. He is a recognized pioneer in design

law, now focusing on enforcement of design patents, trade dress

(3D product congurations), and design copyrights. He can be

reached at perry.saidman@designlawgroup.com. William P. Gvoth

is a patent attorney practicing in the Washington, D.C., metro area.

He specializes in preparing and prosecuting design and utility patent

applications in the electrical, software, and mechanical technology

areas. He can be reached at wpgvoth@gmail.com.

leaving the issue to be decided in subsequent litigation in the

lower courts.9 Importantly, it did note that for a single compo-

nent product, such as a dinner plate, the article of manufacture

is indeed the infringer’s entire product as sold.10

In Samsung, the government as amicus curiae presented

a four-factor test for identifying the relevant “article of man-

ufacture” under § 289.11 The government’s four factors—a

specic factual inquiry designed to assess the relationship

between the design claimed in the design patent at issue, the

infringing product, and components of the infringing prod-

uct—may be summarized as:

1. The scope of the design claimed in the plaintiff’s pat-

ent, including the drawings and the written description;

2. The relative prominence of the design within the prod-

uct as a whole;

3. Whether the design is conceptually distinct from the

product as a whole; and

4. The physical relationship between the patented design

and the rest of the product.12

Under these factors, the factnder is prompted to consider such

things as the scope of the design patent, whether the design is to

a minor component of a product or a component that does not

affect many other components of the product, the effect of the

component on the overall appearance of the product, whether the

patented design can be separated from the product, whether the

patented design is sold separately from the product, and the like.13

The Supreme Court in Samsung remanded the case to the

lower court to determine the article of manufacture for each

patented design. Interestingly, in a retrial on damages, the

jury in the district court—instructed to use the government’s

four-factor test—awarded Apple $539 million (substantially

higher than the initial award).14 This suggests that the jury ulti-

mately found Samsung’s entire smartphone to be the article of

manufacture for each design patent. It was an ironic result for

Samsung, coming after it had won at the Supreme Court.

Columbia Sportswear v. Seirus

Columbia’s design patent covers a material for its Omni-

Heat® line of products.15 As shown in gures 1–3 of

Columbia’s U.S. Patent No. D657,093 (’093 patent), the pat-

ented design comprised a pattern of parallel wavy lines on a

heat reective material. Columbia posited that this design was

intended to conjure images of heat rising from a desert oor.16

Figures 4–10 show the material with the patented design

applied to various products, such as boots, gloves, socks, and

jackets.17 The various products are shown in broken lines in

the ’093 patent and thus form no part of the claimed design.

Columbia sued Seirus over the sale of its line of Heat-

wave™ products that includes hats, gloves, glove liners, and

socks.18 As exemplied below, the Heatwave™ line of prod-

ucts included a material with a similar pattern of wavy lines

as that shown in Columbia’s design patent. At trial in the

U.S. District Court for the District of Oregon, a jury awarded

Columbia over $3 million in damages.19 This result implied

that the jury found the entire end products of the Heatwave™

line, and not merely the material shown in gures 1–3 of the

’093 patent, to be the relevant article of manufacture for the

purpose of assessing total prot under § 289.

Federal Circuit Appeal and Application of the

Government’s Four-Factor Test

Both Columbia and Seirus appealed various issues to the Federal

Circuit, including determination of the relevant article of manu-

facture under § 289. The district court had instructed the jury to

apply the government’s four-factor test for determining the rele-

vant article of manufacture, should the jury determine that Seirus’s

products were multicomponent products.20 Unfortunately, due to

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