Seirus Innovative Accessories, Inc. v. Columbia Sportswear North America, Inc.

The questions presented are:

1. Whether function must be disregarded in defining the scope of comparison prior art relevant to design patent infringement; and

2. Whether comparison prior art can be considered in evaluating design patent infringement even if it is not the exact “same article” and thus could not anticipate for purposes of determining validity. The Patent Act establishes that design patents are directed to ornament, not function: “[w]hoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor . . . .” 35 U.S.C. § 171 (emphasis added). As this Court has explained, “[t]he object of the [utility patents] may solely be increased utility, while the object of [design patents] may solely be increased gratification to a cultivated taste addressed through the eye.” Gorham Co. v. White, 81 U.S. (14 Wall.) 511, 523 (1872) (emphasis added). In addition, this Court long ago established that prior art can be relevant to design patent infringement. Smith v. Whitman Saddle Co., 148 U.S. 674, 681-82 (1893) (finding no infringement of design patent directed to a saddle after comparing the accused design to the prior art). Prior art used in this way is referred to as “comparison prior art.” In this case, a jury found that Petitioner’s fabric did not infringe Respondent’s design patent directed to a repeating wave patten on “heat reflective material.” The jury reached this decision after being presented with three prior art patents disclosing