In a case of first impression, the Court of Appeals for the Federal Circuit recently held that “comparison prior art” used in a design patent infringement analysis must be applied to the same “article of manufacture” that is identified in the claim of the design patent. Columbia Sportswear North America, Inc., v. Seirus Innovative Accessories, Inc., Nos. 2021-2299, -2338 (Fed. Cir. (S.D. Cal.) Sept. 15, 2023).
In its 2008 Egyptian Goddess decision, the Federal Circuit eliminated the “point of novelty” test and held that the “ordinary observer” test is the sole test for design patent infringement. Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 678 (Fed. Cir. 2008) (en banc). However, the Court explained in Egyptian Goddess that prior art should be considered in a design patent infringement analysis to provide the hypothetical ordinary observer with “a frame of reference.” Id. at 676-77. When prior art is used to provide such a “frame of reference,” that prior art is referred to as “comparison prior art.” Id. at 678-79. For example, when the comparison prior art is similar to the design claimed in the design patent, the design patent’s claim will be interpreted in light of the comparison prior art to be relatively narrow in scope, and infringement will be more difficult to prove because small differences between the allegedly infringing design and the claimed design may be considered to be more important to a hypothetical “ordinary observer.” In contrast, when comparison prior art is substantially different from the claimed design, the design patent’s claim will be interpreted more broadly, and a claim of infringement is more likely to succeed despite some differences between the allegedly infringing design and the claimed design.
In the recent Columbia v. Seirus case, the Federal Circuit held that, for a prior art reference to be “comparison prior art,” the prior art design must be applied to the same “article of manufacture” that is identified in the claim of the asserted design patent. Design patents, in contrast to utility patents, include only a single claim, and the claim is often stated in the following form: “An ornamental design for [the article of manufacture to which the ornamental design is applied] as shown and described.” Until now, alleged infringers were free to argue that a wide variety of prior art designs should be classified as comparison prior art, even if the prior art designs were applied to completely different articles of manufacture from the claimed design. However, the Columbia v. Seirus decision suggests that a prior art design applied to a coffee mug, for example, should not be used as comparison prior art for a design patent claiming an ornamental design for a flowerpot, even if the designs of the coffee mug and the flowerpot are virtually identical.
Even before Columbia v. Seirus, prior art used to attack the validity of a design patent on the grounds of anticipation was already required to be applied to the same article of manufacture as the claimed design. As a result of the Columbia v. Seirus decision, the same scope of prior art will now be used for both anticipatory prior art and comparison prior art.
In practice, particular attention should be paid to the article of manufacture recited in the claim of a design patent, and such language should not be treated as merely boilerplate. Rather, the article of manufacture recited in the claim now has the power to determine not only what prior art is available to be used for anticipation, but also what prior art is available to be used as comparison prior art in an infringement analysis.