Counsel: Fed Circuit Design Patent Case Decreases Prior Art Burden

A recent design patent ruling could make life easier for IP practitioners as it could make certain prior art searches more manageable as well as heighten the importance of claim construction.

On September 15, in Columbia Sportswear v. Seirus Innovative Accessories, the Federal Circuit vacated a finding that Seirus didn’t infringe Columbia’s design patent. Instead, it remanded the case to the District Court for the Southern District of California. As a result, the Federal Circuit explained what courts should consider when evaluating comparison prior art, which is used to provide context when comparing a claimed design with an accused infringer’s design.

Attorneys say that this decision is important for the future of claim construction. Finnegan partner Beth Ferrill told Managing Intellectual Property that up until now claim construction has been more focused on the figures and the visual depiction of a design.

“Now, the court is suggesting that the article of manufacture language itself needs to be construed,” she said. “I can see why both parties might be interested in a construction.”

Beth added that defendants might be interested in trying to get a narrow claim construction because that could give them a non-infringement position. “Plaintiffs might be interested in a broad construction that could strengthen their infringement positions. But they could also want a narrower claim construction because that could limit the comparison prior art.”

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