Columbia Sportswear N. Am., Inc. v. Seirus Innovative Accessories

• Decision Date: 10 August 2016
• Docket Number: No. 3:15-cv-00064-HZ,3:15-cv-00064-HZ
• Citation: 202 F.Supp.3d 1186
• Parties: COLUMBIA SPORTSWEAR NORTH AMERICA, INC., an Oregon corporation, Plaintiff, v. SEIRUS INNOVATIVE ACCESSORIES, a Utah corporation, Defendant.
• Court: U.S. District Court — District of Oregon

202 F.Supp.3d 1186

COLUMBIA SPORTSWEAR NORTH AMERICA, INC., an Oregon corporation, Plaintiff,

v.SEIRUS INNOVATIVE ACCESSORIES, a Utah corporation, Defendant.

No. 3:15-cv-00064-HZ

United States District Court, D. Oregon.

Signed August 10, 2016

Nicholas F. Aldrich, Jr., David W. Axelrod, Scott D. Eads, Schwabe Williamson & Wyatt, PC, 1211 SW Fifth Avenue, Ste. 1600, Portland, OR 97204, Attorneys for Plaintiff

Eric M. Jaegers, Troutman Sanders LLP, 11682 El Camino Real, Ste. 400, San Diego, CA 92130, Matthew D. Murphey, Troutman Sanders LLP, 5 Park Plaza, Ste. 1400, Irvine, CA 92614, Alison A. Grounds, Paul E. McGowan, Troutman Sanders LLP, 600 Peachtree St. NE, Ste. 5200, Atlanta, GA 30308, Anup M. Shah, Troutman Sanders LLP, 301 S. College St., Ste. 3400, Charlotte, NC 28202, Jasmine C. Hites, Troutman Sanders LLC, 100 SW Main, Ste. 1000, Portland, OR 97204, Attorneys for Defendant

OPINION & ORDER

HERNÁNDEZ, District Judge.

Plaintiff, Columbia Sportswear North America, Inc. ("Columbia") owns three patents, U.S. Patent Nos. 8,424,119 (the '119 Patent), 8,453,270 (the '270 Patent), and D657,093 (the D'093 patent), protecting its "Omni-Heat" technology, a heat reflective material that can reflect body heat but allow for breathability and moisture wicking. Compl. ¶ 2. The Omni-Heat material is used as a lining in a variety of outdoor gear such as jackets, shirts, gloves, and more. Defendant Seirus Innovative Accessories, Inc. ("Seirus") sells its own brand of cold weather gear, including gloves and glove liners with a breathable, heat reflective material it calls HeatWave. Aldrich Decl. Exs. O, T, U, ECF 76-3. Columbia alleges that Seirus's HeatWave product infringes its Omni-Heat patents, including design patent D '093. Columbia's patented design and Seirus's HeatWave design are depicted below:

The Court recently issued a claim construction Opinion & Order in which it declined to give a textual construction to Columbia's patented design, choosing to address the parties' legal arguments about the scope of Columbia's D '093 patent in this Opinion & Order. Currently before the Court is Columbia's motion for partial summary of infringement of the design patent D '093. The striking visual similarity between Seirus's design and Columbia's patented design is likely to confuse an ordinary observer, and therefore, Columbia's motion is granted.

STANDARDS

Summary judgment is appropriate if there is no genuine dispute as to any material fact and the moving party is entitled to judgment as a matter of law. FED. R. CIV. P. 56(a). The moving party bears the initial responsibility of informing the court of the basis of its motion, and identifying those portions of " 'the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any,' which it believes demonstrate the absence of a genuine issue of material fact." Celotex Corp. v. Catrett , 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986) (quoting FED. R. CIV. P. 56(c) ).

Once the moving party meets its initial burden of demonstrating the absence of a genuine issue of material fact, the burden then shifts to the nonmoving party to present "specific facts" showing a "genuine issue for trial" Fed. Trade Comm'n v. Stefanchik , 559 F.3d 924, 927–28 (9th Cir.2009) (internal quotation marks omitted). The nonmoving party must go beyond the pleadings and designate facts showing an issue for trial. Bias v. Moynihan , 508 F.3d 1212, 1218 (9th Cir.2007) (citing Celotex , 477 U.S. at 324, 106 S.Ct. 2548 ).

The substantive law governing a claim determines whether a fact is material. Suever v. Connell , 579 F.3d 1047, 1056 (9th Cir.2009). The court draws inferences from the facts in the light most favorable to the nonmoving party. Earl v. Nielsen Media Research, Inc. , 658 F.3d 1108, 1112 (9th Cir.2011).

DISCUSSION

I. Design Patent Infringement Standard

"A design patent protects the nonfunctional aspects of an ornamental design as shown in the patent." Arminak & Associates, Inc. v. Saint – Gobain Calmar, Inc. , 501 F.3d 1314, 1319 (Fed.Cir.2007) abrogated on other grounds by Egyptian Goddess, Inc. v. Swisa, Inc. , 543 F.3d 665 (Fed.Cir.2008) (quotation omitted); see also 35 U.S.C. § 171 ("Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title."). "[A] design patent is infringed by the 'unauthorized manufacture, use, or sale of the article embodying the patented design or any colorable imitation thereof.' " Arminak , 501 F.3d at 1319 (quoting Goodyear Tire & Rubber Co. v. Hercules Tire & Rubber Co. , 162 F.3d 1113, 1116–17 (Fed.Cir.1998) ).

Infringement of a design patent is evaluated in a two-step process similar to that of a utility patent. "First, the court must construe the claims of the design patent to determine their meaning and scope." Id. (citing OddzOn Prods., Inc. v. Just Toys, Inc. , 122 F.3d 1396, 1404–05 (Fed.Cir.1997) ). Design patents typically are claimed as shown in drawings, though district courts have the discretion to construe design patents with a detailed textual description. Goodyear , 162 F.3d at 1116. The court then compares the construed claims to the accused design. Id. at 1320. The accused product infringes the design patent if "the designs have the same general visual appearance, such that it is likely that the purchaser (or the ordinary observer) would be deceived into confusing" the two designs. Id. ; see also Crocs. Inc. v. Int'l Trade Comm'n , 598 F.3d 1294, 1303 (Fed.Cir.2010) (design patent is infringed if "an ordinary observer, familiar with the prior art designs, would be deceived into believing that the accused product is the same as the patented design."); Gorham Manufacturing Co. v. White , 81 U.S. (14 Wall.) 511, 528, 20 L.Ed. 731 (1871) ("[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").

"[I]n conducting a design patent infringement analysis, the patented design is viewed in its entirety, as it is claimed. The ultimate question requires determining whether 'the effect of the whole design is substantially the same.' " Payless Shoesource, Inc. v. Reebo k Int'l Ltd. , 998 F.2d 985, 990–91 (Fed.Cir.1993) (citing L.A. Gear, Inc. v. Thom McAn Shoe Co. , 988 F.2d 1117, 1125 (Fed.Cir.1993) (quotation and alterations omitted)). "[M]inor differences between a patented design and an accused article's design cannot, and shall not, prevent a finding of infringement." Id. (citing Litton Sys., Inc. v. Whirlpool Corp. , 728 F.2d 1423, 1444 (Fed.Cir.1984) ); see also Crocs , 598 F.3d at 1303 (explaining that the focus of the infringement analysis is the "overall impression of the claimed ornamental features" rather than "small differences in isolation.").

II. Infringement Analysis

As mentioned above, the Court recently issued an Opinion & Order in which it declined to give a textual construction to Columbia's D '093 patent. See Egyptian Goddess, Inc. v. Swisa, Inc. , 543 F.3d 665, 679 (Fed.Cir.2008) (the "preferable course ordinarily will be for a district court not to attempt to 'construe' a design patent claim by providing a detailed verbal description of the claimed design"). Accordingly, the Court turns here to the second step of the infringement analysis: comparing Columbia's patented design and Seirus's accused HeatWave design and asking "whether an ordinary observer, familiar with the prior art ... would be deceived into believing" the Seirus design is the same as Columbia's patented one. Id . at 681.

a. Ordinary Observer

The first issue to address is the identity of the ordinary observer. Arminak , 501 F.3d at 1321 ("A question that is central to this case, and every design patent case, is the identity of the 'ordinary observer' of the design at issue ...."). "[T]he focus is on the actual product that is presented for purchase, and the ordinary purchaser of that product." Goodyear Tire , 162 F.3d at 1117 (Fed.Cir.1998) (abrogated on other grounds by Egyptian Goddess , 543 F.3d at 678 ).

The ordinary observer in this case is a retail customer who buys and uses the articles of manufacture Seirus sells—gloves, socks, hats, and other gear—that incorporate the patented design. Gorham , 81 U.S. at 528 (describing "ordinary observers" as those "who buy and use" the products at issue); see also Braun Inc. v. Dynamics Corp. of Am. , 975 F.2d 815, 820 (Fed.Cir.1992) (proper ordinary observer in a design patent case involving hand held blenders was a person seeking to purchase such a blender)

Seirus argues that the ordinary observer here should be the "commercial purchaser rather than an individual consumer." Defendant's Response ("Def. Resp.") at 15–16, ECF 82. But the cases it cites in support are all readily distinguishable because they did not involve products that were intended for sale to retail consumers. For example in Arminak , the patented design at issue was a "trigger shroud," which in turn was part of a "trigger sprayer," a device that attaches to the top of a bottle with a tube extending down into the liquid to create a spray bottle. 501 F.3d at 1318. The ordinary observer of the trigger shroud was the industrial purchaser and not a retail customer because it was the purchaser who bought and used the trigger shroud by combining it with other parts to create a finished retail product (such as a bottle of glass cleaner). Id. at 1323–24. Similarly, in a case involving the design of a lingerie hanger specially designed to create more efficient retail displays, the court correctly found that the ordinary observer was "not the general public, but the sophisticated buyer for the garment manufacturer, who purchase[d] the hangers" and used them to create the...