Nos.

2018-1329, -1331, -1728

__________________________________________________________________

United States Court Of Appeals

for the Federal Circuit
COLUMBIA SPORTSWEAR NORTH AMERICA, INC.,
Plaintiff- Appellant,
v.

SEIRUS INNOVATIVE ACCESSORIES, INC.,

Defendant- Cross-Appellant.
__________________________________________________________________
APPEALS FROM THE UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF
CALIFORNIA, CASE NO. 3:17-CV-1781, DISTRICT JUDGE MARCO A. HERNANDEZ
__________________________________________________________________
CROSS-APPELLANT’S OPENING BRIEF
__________________________________________________________________

Christopher S. Marchese
Seth M. Sproul
Craig E. Countryman
Oliver J. Richards
Tucker N. Terhufen
Fish & Richardson P.C.
12390 El Camino Real
San Diego, CA 92130
(858) 678-5070

August 9, 2018
 CERTIFICATE OF INTEREST

1. The full name of every party represented by me is: Seirus Innovative

Accessories, Inc.

2. The name of the real party in interest (if the party named in the caption

is not the real party in interest) represented by me is: Seirus Innovative Accessories,

Inc.

3. All parent corporations and any publicly held companies that own 10

percent or more of the stock of the party represented by me are: None.

4. The names of all law firms and the partners or associates that appeared

for the party now represented by me in the trial court or agency or are expected to

appear in this Court (and who have not entered an appearance in this Court) are:

Fish & Richardson P.C.: Michael A. Amon, Garrett K. Sakimae; Markowitz Herbold
PC: Renee Rothauge; Troutman Sanders LLC: Eric M. Jaegers, Matthew D.
Murphey, Alison A. Grounds, Paul E. McGowan, Anup M. Shah, Jasmine C. Hites

5. The title and number of any case known to counsel to be pending in this

or any other court or agency that will directly affect or be directly affected by this

court’s decision in the pending appeal:

Columbia Sportswear North America, Inc., et al. v. Ventex Co., Ltd, et al., Case No. 3:17-cv-
623 (D. Or.); Ventex Co., Ltd. v. Columbia Sportswear North America, Inc., IPR2017-00789
(P.T.A.B.); Ex-Parte Reexamination Control No. 90/014,113.

Dated: August 9, 2018 /s/ Craig E. Countryman

Craig E. Countryman

i
 TABLE OF CONTENTS

Page
STATEMENT OF RELATED CASES............................................................................................. x
JURISDICTIONAL STATEMENT ................................................................................................. xi
STATEMENT OF THE ISSUES .................................................................................................... xii
INTRODUCTION .......................................................................................................................... 1
STATEMENT OF THE FACTS ...................................................................................................... 2
I. The Design Patent………………………………………......................... 2
A. The Patent Covers the Design of a Heat
Reflective Material, Not an Overall End-Product. ........................... 2
B. The Prior Art Disclosed Wavy Designs Similar to
Columbia’s. .............................................................................................. 3
C. Seirus’s Products Include Many Components, of
Which the Fabric With the Accused Design is
Only One. ................................................................................................ 4
II. The Utility Patent……………………………………………………... 8
A. The Utility Patent Applies Well Known Principles
and Claims Partially Covering a Base Material with
Heat Directing Elements ...................................................................... 8
B. The Prior Art Disclosed the Claimed Range,
Along With All the Other Claim Elements. ..................................... 11
Fottinger Teaches Every Element of the
Asserted Claims. ....................................................................... 11
Other References Confirm That Applying
Discrete Elements in the Claimed 30-70%
Coverage Range was Well-Known ........................................ 12
III. The Proceedings Below…………………………………....................... 15
A. The Design Patent ............................................................................... 16

ii
 TABLE OF CONTENTS (continued)
Page
The Court Grants Summary Judgment of
Infringement.............................................................................. 16
The Court Incorrectly Instructs the Jury on
Damages..................................................................................... 17
The Court Denies Seirus’s Post-Trial
Motions and Awards Pre-Judgment
Interest and Supplemental Damages. .................................... 19
B. The Properly-Instructed Jury Invalidates the
Utility Patent. ........................................................................................ 19
SUMMARY OF THE ARGUMENT .............................................................................................. 21
ARGUMENT ............................................................................................................................... 23
I. Cross-Appeal: The Judgment on the Design Patent Should Be
Vacated……………………………………………………………….23
A. The Summary Judgment of Infringement Should
Be Reversed........................................................................................... 23
A Reasonable Jury Could Find the Overall
Columbia and Seirus Designs Are Not the
Same. .......................................................................................... 23
The District Court Erred by Resolving
Factual Issues and Ignoring Key
Distinctions Between the Designs. ........................................ 28
B. The HeatWave Fabric, Not Seirus’s End-
Products, Is the Relevant “Article of
Manufacture” as a Matter of Law. ..................................................... 30
The Patent Shows the Relevant Article is
the Fabric. .................................................................................. 31
The Accused Design’s Relative Lack of
Prominence in the End-Products Shows
the Article is the Fabric. .......................................................... 32
The Patented Wave Design Is Conceptually
Distinct from the Glove .......................................................... 34

iii
 TABLE OF CONTENTS (continued)
Page
The HeatWave Fabric is the Relevant
Article Because It Is Manufactured and
Sold Separately. ......................................................................... 34
C. At a Minimum, the Court Should Grant a New
Trial on Damages Given the Erroneous Jury
Instructions. .......................................................................................... 35
The Plaintiff Should Bear the Burden of
Persuasion on the Relevant “Article of
Manufacture” Under § 289. .................................................... 35
Neither Policy Nor Any Other
Consideration Justifies Shifting the Burden
of Persuasion to the Defendant. ............................................ 39
The Erroneous Jury Instructions
Prejudiced Seirus. ..................................................................... 40
II. The Jury’s Invalidity Verdict on the Utility Patent Should Be Upheld... 41
A. Substantial Evidence Supports the Jury’s
Determination that Fottinger Anticipates. ....................................... 41
Fottinger Discloses “Discrete Heat-
Directing Elements, Each Independently
Coupled” to the Base Material. .............................................. 42
Fottinger Teaches the 30-70% Coverage
Limitation .................................................................................. 44
Fottinger’s Heat-Directing Elements Are
“Positioned on the Innermost Surface” of
the Innermost Layer. ................................................................ 49
B. The Jury’s Obviousness Finding is Well-
Supported. ............................................................................................. 51
The Jury Properly Found a “Prima Facie”
Obviousness Case Because the Prior Art
Disclosed All Limitations. ....................................................... 52

iv
 TABLE OF CONTENTS (continued)
Page
Seirus’s Expert Used the Correct Legal
Standard, But the Jury’s Verdict Was
Proper Even Without His Testimony. .................................. 53
There Were Ample Reasons to Combine
the Prior Art to Arrive at the Claims. .................................... 58
C. Columbia Is Not Entitled To a New Trial ....................................... 61
There Was No Error in the Anticipation
Jury Instructions. ...................................................................... 61
The District Court Was Within its
Discretion to Find an Expert’s Innocent
Mistake Did Not Warrant a New Trial. ................................ 64
III. The District Court’s Venue Decision Was Correct…………………... 67
CONCLUSION ............................................................................................................................ 69

v
 TABLE OF AUTHORITIES
Page(s)
Cases
Apple Inc. v. Samsung Elecs. Co. Ltd.,
2017 WL 4776443 (N.D. Cal. Oct. 22, 2017)..........................................................passim
Apple Inc. v. Samsung Elecs. Co., Ltd.,
839 F.3d 1034 (Fed. Cir. 2016) (en banc) ......................................................................... 51
Arctic Cat Inc. v. Bombardier Recreational Prods. Inc.,
876 F.3d 1350 (Fed. Cir. 2017) ........................................................................... 38, 39, 41
Arminak and Assocs. v. Saint-Gobain Calmar, Inc.,
501 F.3d 1314 (Fed. Cir. 2007) ........................................................................................ 24
Atofina v. Great Lakes Chemical Corp.,
441 F.3d 991 (Fed. Cir. 2006) ................................................................................... 48, 63
Bateman v. Mnemonics, Inc.,
79 F.3d 1532 (11th Cir. 1996) .......................................................................................... 61
Blue Calypso, LLC v. Groupon, Inc.,
815 F.3d 1331 (Fed. Cir. 2016) ........................................................................................ 41
Braun Inc. v. Dynamics Corp. of Am.,
975 F.2d 815 (Fed. Cir. 1992) .......................................................................................... 23
Brooktree Corp. v. Advanced Micro Devices, Inc.,
977 F.2d 1555 (Fed.Cir.1992) .......................................................................................... 65
Bush & Lane Piano Co. v. Becker Bros.,
222 F. 902 (2d Cir. 1915) .............................................................................. 31, 32, 33, 34
Clearvalue, Inc. v. Pearl River Polymers, Inc.,
668 F.3d 1340 (Fed. Cir. 2012) ........................................................................... 46, 48, 63
Clem v. Lomeli,
566 F.3d 1177 (9th Cir. 2009) .......................................................................................... 40
Comark Commc’ns. v. Harris Corp.,
156 F.3d 1182 (Fed. Cir. 1998) ........................................................................................ 65

vi
 TABLE OF AUTHORITIES (CONTINUED)

Page(s)

Contessa Food Prods., Inc. v. Conagra, Inc.,

282 F.3d 1370 (Fed. Cir. 2002) ........................................................................................ 28
DSU Med. Corp. v. JMS Co.,
471 F.3d 1293 (Fed. Cir. 2006) ........................................................................................ 61
Egyption Goddess, 543 F.3d at 676 .................................................................................... 27, 36
Fraige v. Am.-Nat’l Watermattress Corp.,
996 F.2d 295 (Fed. Cir. 1993) ................................................................................... 65, 66
Garretson v. Clark,
111 U.S. 120 (1884) ...........................................................................................................38
Gilbrook v. City of Westminster,
177 F.3d 839 (9th Cir. 1999) ............................................................................................ 62
Goodyear Tire & Rubber Co. v. Hercules Tire & Rubber Co., Inc.,
162 F.3d 1113 (Fed. Cir. 1998) ........................................................................................ 24
Grand Rapids Refrigerator Co. v. Young,
268 F. 966 (6th Cir. 1920) ................................................................................................ 30
i4i Ltd. P’ship v. Microsoft Corp.,
598 F.3d 831 (Fed. Cir. 2010) .......................................................................................... 62
Ineos USA LLC v. Berry Plastics Corp.,
783 F.3d 865 (Fed. Cir. 2015) ............................................................................. 44, 46, 49
L.A. Gear, Inc. v. Thom McAn Shoe Co.,
988 F.2d 1117 (Fed. Cir. 1993) .................................................................... 16, 17, 28, 29
Lucent Techs., Inc. v. Gateway, Inc.,
580 F.3d 1301 (Fed. Cir. 2009) ........................................................................................ 36
Meghrig v. KFC Western, Inc.,
516 U.S. 479 (1996) ...........................................................................................................37
In re Micron Tech., Inc.,
875 F.3d 1091 (Fed. Cir. 2017) ................................................................................. 67, 68

vii
 TABLE OF AUTHORITIES (CONTINUED)

Page(s)

Montgomery Ward & Co. v. Duncan,

311 U.S. 243 (1940) .................................................................................................... 63, 64
OddzOn Prods., Inc. v. Just Toys, Inc.,
122 F.3d 1396 (Fed. Cir. 1997) ................................................................................. 23, 28
Osram Sylvania v. Am. Induction Techs. Inc.,
701 F.3d 698 (Fed. Cir. 2012) .......................................................................................... 49
Oswalt v. Resolute Indus., Inc.,
642 F.3d 856 (9th Cir. 2011) ............................................................................................ 23
Perfect Web Techs., Inc. v. InfoUSA, Inc.,
587 F.3d 1324 (Fed. Cir. 2009) ........................................................................................ 57
In re Peterson,
315 F.3d 1325 (Fed. Cir. 2003) ................................................................................. 58, 60
Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc.,
894 F.3d 1258 (Fed. Cir. 2018) ........................................................................................ 38
Rembrandt Vision Techs., L.P. v. Johnson & Johnson Vision Care, Inc.,
818 F.3d 1320 (Fed. Cir. 2016) ................................................................................. 65, 66
Richardson v. Stanley Works, Inc.,
597 F.3d 1288 (Fed. Cir. 2010) ........................................................................................ 23
Samsung Electronics Co., Ltd. v. Apple Inc.,
137 S. Ct. 429 (2016) ..................................................................................... 17, 18, 20, 39
Schaffer ex rel. Schaffer v. Weast,
546 U.S. 49 (2005) ............................................................................................................. 36
TC Heartland LLC v. Kraft Foods Group Brands LLC,
113 S. Ct. 1514 (2017) ................................................................................................ 22, 67
Union Carbide Corp. v. Am. Can Co.,
724 F.2d 1567 (Fed. Cir. 1984) ........................................................................................ 57
Verizon Services Corp. v. Cox Fibernet Virginia, Inc.,
602 F.3d 1325 (Fed. Cir. 2010) ........................................................................................ 41

viii
 TABLE OF AUTHORITIES (CONTINUED)

Page(s)

Wyers v. Master Lock Co.,

616 F.3d 1231 (Fed. Cir. 2010) ........................................................................................ 57
Statutes
15 U.S.C. § 1117(a) .................................................................................................................. 37
17 U.S.C. § 504(b).................................................................................................................... 37
35 U.S.C. § 289................................................................................................................... passim
Other Authorities
37 C.F.R. § 1.153(a) ................................................................................................................. 31
H.R. REP. NO. 49-1966.................................................................................................... 37, 40
S. REP. NO. 49-206 (1886) ..................................................................................................... 40

ix
 STATEMENT OF RELATED CASES

No prior appeal from this case has been before this or any other appellate

court, nor is there any other currently pending appeal from this proceeding.

Both of Columbia’s patents at issue in this case are currently undergoing

proceedings at the Patent Office. The Patent Office instituted an ex parte

reexamination of Columbia’s design patent (No. D657,093) on May 21, 2018—8 days

before Columbia submitted its opening brief—on at least six of the grounds of

unpatentability presented in Seirus’s reexamination request.

Columbia’s utility patent (No. 8,453,270) is undergoing an inter partes review.

See Ventex Co., Ltd. v. Columbia Sportswear North America, Inc., IPR2017-00789

(P.T.A.B.). The review includes asserted claim 2 but not asserted claim 23.

Columbia is currently asserting these two patents in another district court suit,

which is stayed pending the outcome of the inter partes review referenced above. See

Columbia Sportswear North America, Inc., et al. v. Ventex Co., Ltd, et al., Case No. 3:17-cv-

623 (D. Or.).

x
 JURISDICTIONAL STATEMENT

The district court had jurisdiction under 28 U.S.C. §§ 1331 and 1338. The

district court entered final judgment on November 22, 2017 based on the jury’s

verdict. (Appx1–3.) Both parties timely appealed on December 20, 2017.

(Appx1658–1664.) Both parties then filed post-trial motions, which the district court

denied on March 13, 2018. (Appx8-9.) Both parties filed amended notices of appeal,

on March 22 and 27, 2018, respectively, which included their objections to the post-

trial rulings. (Appx1669-–1674.) The district court awarded Columbia pre-judgment

interest on April 17, 2018. (Appx1681–1685.) Seirus filed another amended notice of

appeal on April 20, 2018 to preserve its objections to that order. (Appx1686-1688.)

This Court has jurisdiction under 28 U.S.C. § 1295(a)(1).

xi
 STATEMENT OF THE ISSUES

1. Whether the judgment on Columbia’s design patent should be reversed

where:

(a) The district court erroneously resolved infringement on summary

judgment by deciding disputed factual issues and ignoring key
differences between the two designs;

(b) The damages award was excessive because, as a matter of law, the
relevant “article of manufacture” under 35 U.S.C. § 289 is the fabric with
the accused design, not the entire end-product; and

(c) At a minimum, a new trial is required because the jury instructions

improperly shifted the burden of persuasion on the article of
manufacture issue to Serius.

2. Whether the judgment that Columbia’s utility patent is invalid should be

affirmed where:

(a) The jury’s anticipation finding was suported by substantial evidence;

(b) The jury’s obviousness finding was correct given its well-supported
factual findings; and

(c) The jury was properly instructed, and the district court did not abuse its
discretion in denying a new trial.

3. Whether the district court abused its discretion in transferring the case
where Seirus promptly raised venue once TC Heartland changed the law.

xii
 INTRODUCTION

This appeal arises from a split judgment involving a design patent and a utility

patent. Seirus’s cross-appeal relates to the design patent, and presents interesting and

important issues of design patent infringement and damages. As to that patent, the

district court granted summary judgment of infringement, and a jury awarded

Columbia damages predicated on the district court’s ruling. Both determinations were

error, and each should be reversed. The summary judgment of infringement

improperly ignored key differences between Seirus’s product and the patent while

resolving disputed facts against Seirus. As to damages, the jury awarded damages by

assuming Seirus’s entire end-products were the “article of manufacture,” when, in

fact, the design is applied only to a fabric that is one component of many. At a

minimum, a new trial on damages is required, because the court erroneously shifted

the burden of proof to Seirus, contradicting the statute and common law principles.

Columbia’s appeal addresses the utility patent and involves nothing more than

a pedestrian challenge to well-supported jury findings. The jury determined that each

asserted claim was both anticipated and obvious. Both determinations were

supported by substantial evidence and should be affirmed. Columbia’s patent

involves simple technology, where skilled artisans already knew the relevant trade-offs

and how to optimize product performance. Columbia mostly reargues facts about

what the prior art discloses, which the jury properly resolved against it. Columbia’s

attacks on Seirus’s expert, lawyers, and the jury instructions are all meritless.

1
 STATEMENT OF THE FACTS

I. The Design Patent

We begin with the facts underlying the cross-appeal on the design patent. As

two key issues in the cross-appeal are the scope of Columbia’s design patent (No.

D657,093) and the “article of manufacture” it allegedly covers, we start by examining

the patent and how it compares with the prior art and Seirus’s accused products.

A. The Patent Covers the Design of a Heat Reflective Material, Not

an Overall End-Product.
Columbia’s design patent doesn’t cover the design of any specific end-product,

like a glove or hat, but covers the design of one material used to make such a product.

The patent’s title is “Heat Reflective Material,” and, consistent with that description,

the patent’s claim is to “[t]he ornamental design of a heat reflective material, as shown

and described.” (Appx10.) Figures 1 and 2 show the material’s design:

(Appx11.) The design is an uninterrupted wave pattern, in which no other design

elements are interspersed. Figure 2 shows that a given wave in the claimed design has

the same thickness throughout its entire length.

2
 The patent’s other figures confirm it is directed to the heat-reflective material,

not any end-product. Figures 5 and 8 separate the end-product (e.g., a boot or a glove)

from the material with the claimed design using broken lines:

(Appx12.) These “broken lines depict environmental subject matter only and form no

part of the claimed design.” (Appx10.) Consistent with this description, the inventor

confirmed the pictured environments were not part of the claimed design.

(Appx2115.) He instead admitted that his patent covers the material to which the

design is applied (a “foil”), not the entire end-product. (Appx2113–2114.) Columbia

has never used this wavy design in any of its products.

B. The Prior Art Disclosed Wavy Designs Similar to Columbia’s.

Assessing the scope of a design patent (and whether it’s infringed) requires

examining how it fits with the prior art. Here, the prior art was replete with fabrics

with wave designs. For example, U.S. Patent 5,626,949 to Blauer discloses a

“breathable shell for outerwear” and relates to “fabric constructions” for “coats,

pants, jackets, boots, gloves, and other outer clothing that are designed for protection

3
against inclement weather.” (Appx4160 at 1:10-15.) Blauer shows the wavy pattern

below for a fabric’s inner surface, which closely resembles Columbia’s design:

(Appx4159.) Blauer’s wavy lines printed on the fabric are continuous and

uninterrupted by other design elements. Each given wave has a uniform width

thickness at each point along that wave. And the waves have a similar wavelength and

amplitude as the Columbia design. Recognizing this similarity, the Patent Office

recently instituted reexamination of Columbia’s patent based on Blauer and several

other references.

C. Seirus’s Products Include Many Components, of Which the Fabric

With the Accused Design is Only One.
Columbia accused a variety of Serius cold-weather products—gloves, hats,

socks, and glove liners—of infringing the design patent. The accused design is on a

single component (the HeatWave fabric) that, for most of the products, is on the

interior and is barely visibile. (Appx5283-5289; Appx4295.) The products have many

other components besides this interior fabric that are critical to their design and

functionality. (Appx3148–3149, Appx3154-3163.)

4
 For example, a schematic of one of Seirus’s outer shell gloves reproduced

below shows some of those other components, including a soft shell fabric, back

panels, a waterproof zipper, a cinch, and a bungee cord:

(Appx5749.) The gloves also include other critical components, such as an inner liner,

insulation, and a waterproof membrane. (Appx3158–3163.) Each component

embodies “distinct innovations” from the accused design. (Appx2307; Appx2324;

Appx5296–5317; Appx3154–3163.)

Contrary to Columbia’s assertion (at 11), Seirus did not “copy” Columbia’s

fabric or launch its products with the “support” of Columbia’s manufacturers. Seirus

independently developed its HeatWave fabric with a different supplier, Ventex, and

never launched any product that used a fabric from Columbia’s manufacturers.

(Appx2207–2210; Appx2328-2329; Appx3054–3057.) Ventex manufactures the

5
HeatWave fabric separately from the other components of Serius’s products.

(Appx3150–3151; Appx3518–3519; Appx3786–3787.) Ventex also sells it to other

companies, who use it for different purposes. (Appx3151–3154.)

The HeatWave fabric on Serius’s products includes a wavy design that differs

from Columbia’s patent in several respects. Seirus’s wavy design is repeatedly

interrupted by the repeating Seirus logo box, which results in discontinuous waves.

The waves are oriented vertically in relation to the logo, unlike the horizontal waves in

Columbia’s design. Moreover, any given wave has a non-uniform thickness, with

thicker and thinner portions at different points along the wave:

(Appx4295.) Seirus independently developed its accused design without any

knowledge of Columbia’s design patent, (Appx3056–3069), and the jury found that

any infringement was not willful. (Appx5.)

6
 The accused design isn’t visible in most of Seirus’s products. A customer

cannot see it when she picks up Seirus’s outer shell gloves, shown below, as it is an

interior fabric tucked deep inside the glove:

(Appx5283-5287.) The same is true for Seirus’s socks (top), where the accused design

is barely visible on the cuff, and on Seirus’s black glove liners and hats (bottom)

where it is not visiable at all:

7
(Appx5290-5291.)

Seirus does make some products with the accused design on the exterior, but

there was no evidence this impacts their sales. In fact, there was no evidence the

accused design drove sales in any way, and, in one case, a product without the accused

design had more sales than a comparable product with it. (Appx2313-2316;

Appx3420-3422; Appx5292-5295.) Even Columbia argued it was the fabric’s

functional aspects—its combination of warmth and breathability—that attracted

customers, not the design. (Appx1888–1889.)

II. The Utility Patent

A. The Utility Patent Applies Well Known Principles and Claims
Partially Covering a Base Material with Heat Directing Elements
Columbia’s utility patent claims the unremarkable idea that if you cover more

of a fabric with a heat-reflective material, there is more heat and less breathability,

while if you cover less fabric, there is less heat and more breathability. This was a

8
well-known relationship—Columbia’s expert admitted that skilled artisans knew of

this trade-off since the 1970s, and knew that “somewhere around the middle,” i.e.,

around 50% coverage, “is where you probably wanted to be.” (Appx3731.)

Columbia’s patent recites this well-known approach by referring to “body

gear” that “utilize[s] an array of heat directing elements coupled to a base material to

direct heat while also maintaining the desired transfer properties of the base

material.” (Appx14 at Abstract.) Columbia’s patent mentions in passing that, “[i]n

embodiments, the density or ratio of the surface area covered by the heat

management material elements to the surface are of base fabric left uncovered by the

heat management material elements may be from about 3:7 (30%) to about 7:3

(70%).” (Appx26 at 5:56-60.) But it doesn’t provide any supporting data, nor

suggest the range is critical.

Consistent with that view, Columbia’s initially-filed claims didn’t mention the

range and broadly covered any material with heat directing elements. (Appx4964-

4967.) Columbia later added the range to avoid the cited prior art. (Appx4733;

Appx4737.) When amending the claims, Columbia presented the Patent Office with

the data at p. 7–8 of its brief, in which it tested three points (40%, 50%, and 67%)

within its claimed range of 30–70%. (Appx4743-4744; Appx4749-4751.) But it did

not test the claimed endpoints (or beyond), (Appx2074), so it could not know if

there was anything special about them. And, in fact, the prior art had shown the

same relationship that Columbia’s inventor allegedly discovered—that one can cover

9
large percentages of the fabric without sacrificing breathability, because the

relationship between the two is non-linear. (Appx5586-5596; Appx5597-5614;

Appx3261-3262.) The prior art also showed that Columbia’s extrapolations to points

beyond its testing are wrong. (Id.)

Nevertheless, the Patent Office did not know about any of that prior art and

allowed the claims. At trial, Columbia asserted claims 2 and 23. Dependent claim 2

is shown with the disputed limitations emphasized:

1. A heat management material adapted for use with body gear, comprising:
a base material having a transfer property that is adapted to allow,
impede, and/or restrict passage of a natural element through the base
material; and
a discontinuous array of discrete heat-directing elements, each
independently coupled to a first side of a base material,
the heat directing elements being positioned to direct heat in a desired
direction,
wherein a surface area ratio of heat-directing elements to base
material is from about 7:3 to about 3:7 [i.e., 30–70%],
and wherein the placement and spacing of the heat-directing elements
permits the base material to retain partial performance of the transfer
property.
2. The heat management material of claim 1, wherein the base material
comprises an innermost layer of the body gear having an innermost surface,
and wherein the heat-directing elements are positioned on the innermost
surface to direct heat towards the body of a body gear user.
(Appx27 at 8:7-26.) Claim 23 is identical to claim 2, except it omits the requirements

of “discrete” heat-directing element that are “independently” coupled to the base

material. (Appx28 at 9:26–10:14.) Neither claim quantifies how much heat must be

10
reflected. (Appx3707-3708.)

B. The Prior Art Disclosed the Claimed Range, Along With All the
Other Claim Elements.
Fottinger Teaches Every Element of the Asserted Claims.
The key prior art is UK Patent Application GB 2,073,613A to Fottinger, which,

like Columbia’s patent, “relates to textile sheets which can have good heat retention”

(Appx4135 at 1:5-6) and describes a “textile sheet carrying, on at least one face

thereof, a discontinuous coating comprising a binder and metal powder, in which the

coating comprises individual areas.” (Appx4134 at (57).) Fottinger’s sheets “are very

suitable for use” as “lining fabrics,” (Appx4136 at 2:48-52), which are the innermost

layer of a piece of clothing. (Appx3255; Appx3380-3381.) So when Fottinger says

the coating is on “at least one face” of the “lining fabric,” it discloses that it can be on

the interior of the innermost surface, as required by Columbia’s claim 2. (Id.)

Fottinger also says its coating may be used on “outer fabrics for articles of clothing, in

which case the coated face will be on the inside of the article.” (Appx4136 at 2:48–

52.) When there are no other layers between, the coated areas are on the innermost

surface of the innermost layer. (Appx3255; Appx3380-3381.)

The parties disputed whether the “heat-directing elements” referred to in

Columbia’s patent were Fottinger’s entire coated areas or the metal powder within

them. Seirus’s expert testified it was the entire coated area, and the jury credited him.

(Appx3252–3253.) Like Columbia’s patent, Fottinger explains its coated areas are

11
discrete and independently coupled to the base material to ensure “that the

porosity/breathing and draping properties of the fabric need not be substantially

impaired with respect to the uncoated sheet.” (Appx4135 at 1:60-65.)

Fottinger’s coated areas “cover from 5 to 40% of the surface area of the coated

face.” (Appx4135 at 1:59–60; Appx3253–3254.) Fottinger was concerned that

covering more of the surface might impair breathability (i.e., the “transfer of

moisture”), and says “this disadvantage can be avoided” by not exceeding 40%.

(Appx4135 at 1:90–93.) But later prior art revealed that you can cover much more

than 40% without trapping undesirable amounts of moisture. (Appx4152 at ¶ 45;

Appx4171; Appx4195 at 6:65-67; Appx4161 at 4:14-15.) Seirus’s expert concluded

that Fottinger’s 5–40% range anticipates the claimed range, because “[t]he 30- to 70-

percent range is not critical.” (Appx3259–3263, Appx 3266–3267.)

Other References Confirm That Applying Discrete Elements

in the Claimed 30-70% Coverage Range was Well-Known
Fottinger wasn’t the only reference that taught the claimed range. Columbia’s

expert admitted that skilled artisans knew there was a “trade-off” between preserving

the base material’s properties (such as “moisture permeability” or “air permeability”)

and the benefits of other materials layered on top of that base material. (Appx3715.)

Columbia’s expert also admitted that, depending on the goal, a designer could choose

a coverage range “somewhere in the middle,” i.e., 50%, which is squarely within

Columbia’s claimed range. (Appx3715–3716.)

12
 Four additional references reflect these principles. Each discloses altering the

base material by adding a second material to cover it, while not impairing breathability

by covering too much. Seirus’s expert testified that each added material was a heat-

directing element, as in Columbia’s patent, (Appx3371–3372, Appx3375, Appx3379–

3380), but the point is ultimately immaterial. What matters is that they show skilled

artisans could easily determine the optimal range to achieve the benefits of that

additional material while preserving the base fabric’s breathability. Seirus’s expert thus

concluded that the references, when combined with Fottinger, showed that

Columbia’s claims “were definitely obvious at the time.” (Appx3266–Appx3267.)

Halley. The first reference was U.S. Patent Application 2002/0197924 to

Halley. (Appx4144-4156.) Halley’s invention “relates to a composite lining material

for a garment” made up of a “water resistant water-vapour permeable flexible

substrate” with a “fabric secured to the first side of the substrate” and a “plurality of

discrete abrasion resisting polymeric dots” on the other side. (Appx4150 at ¶¶ 15–

17.) The dots “provide a protective surface layer” to protect the substrate “from

abrasion forces.” (Appx4150 at ¶ 20.) As with Columbia’s patent, there is a balance

between this useful property and the risk that the dots impair breathability.

(Appx4149 at ¶ 8, Appx3714–3715.) Halley thus teaches that the dots cover 30–70%

of the base material, the exact range in Columbia’s patent. (Appx4152 at ¶ 45;

Appx3270–3271; Appx3266; Appx3714.) Columbia’s expert admitted that “one of

the reasons for [this] range” was not to impair “the water vapor permeability or any

13
other valued characteristic of his material,” (Appx3714–3715), that skilled artisans

would have known to increase coverage to increase thermal regulation (Appx3717),

and that “the coating may cover a smaller percentage” to maintain the properties of

the original material like “air permeability or water vapor transport.” (Appx3717–

3718.)

Vaughn. The second reference was U.K Patent Application GB 2,350,073 to

Vaughn. (Appx4164-4187.) Vaughn also disclosed adding an abrasion-resistant

material onto a water-permeable base material. (Appx4164.) Vaughn similarly

involves a “pourous substrate” (base material) and a “discontinuous pattern” of

“abrasion-resisting polymeric material” in “any suitable pattern, such as a pattern of

dots or lines, or in a grid pattern.” (Appx4171.) The pattern allows the final material

to “[e]xhibit good handlability” while maintaining sufficient breathability.

(Appx4171.) To achieve this goal Vaughn teaches a range of “preferably 30-70%.”

(Id.) This is “the exact same range” in Columbia’s patent and likewise balances the

benefits of the added material with breathability. (Appx3266, Appx3272.)

Worley. The third reference is U.S. Patent 7,135,424 to Worley. (Appx4188-

4202.) Worley discloses a material “having enhanced reversible thermal properties”

that “exhibit[s] improved flexibility, softness, air permeability, or water vapor

transport properties.” (Appx4193 at 1:19-23.) Worley achieves this goal by covering

the base material with a coating, for example, a “polymetric material and a

temperature regulating material dispersed in the polymetric material.” (Appx4193 at

14
1:51–2:10.) Worley also recognizes the tradeoff between coating and fabric

permeability: “the relative impermeable nature of the continuous coating may

substantially diminish the ability of the continuously coated fabric to transport air or

water vapor.” (Appx4193 at 1:34–42; Appx3269–3270.) Worley nevertheless

determined that a discontinuous coating covering “about 50 to about 90 percent (e.g.,

from about 50 to about 80 percent) of the surface” could achieve the desired property

without unduly sacrificing breathability. (Appx4195 at 6:65-67; Appx4192 at Fig. 3.)

Blauer. The final reference was U.S. Patent 5,626,949 to Blauer. (Appx4157–

4163.) Like the others, Blauer teaches that a known problem in constructing outwear

is it is typically “constructed from fabrics or combinations of fabrics that strive to

achieve seemingly inconsistent objectives.” (Appx4160 at 1:11–25.) Blauer also

recognized the problem with covering too much of the fabric with a coating, as “there

were no openings to allow the air to pass through the interstices of the fabric.”

(Appx4160 at 1:43–47.) Blauer nevertheless teaches embodiments in which a coating

provides 50% coverage of a base material, squarely within the claimed range.

(Appx3274; Appx4161 at 4:14-15.)

III. The Proceedings Below

This case culminated with a trial in which the jury awarded $3,018,074 on

Columbia’s design patent, while invalidating its utility patent. (Appx1–6.) To see how

the jury got there, we summarize the proceedings leading to that verdict.

15
 A. The Design Patent
The Court Grants Summary Judgment of Infringement.
The district court short-circuited the proceedings on the design patent by

granting summary judgment of infringement. (Appx181-197.) The court started by

erroneously resolving a factual dispute about the ordinary observer’s identity. It

found the ordinary observer is the “end buyer and user of Seirus’s gloves and other

products,” even though Seirus had submitted a declaration that the majority of

Seirus’s sales are made to sophisticated purchasers for large retailers, who would be

more likely to distinguish between differences in various designs. (Appx187.)

Having misframed the inquiry, the court then found substantial similarity

between Columbia’s patent and Seirus’s accused design by ignoring three key

differences—Seirus’s logo boxes, the vertical appearance of Seirus’s waves, and the

lack of uniform thickness of Seirus’s waves. (Appx189-193.) With respect to the logo

boxes, the court refused to consider them, explaining that “the Court does not

consider Seirus’s ‘surface ornamentation,’ i.e. the Seirus logo, in the infringement

analysis.” (Appx190.) The court thought L.A. Gear, Inc. v. Thom McAn Shoe Co., 988

F.2d 1117 (Fed. Cir. 1993) required this approach, even though that case didn’t deal

with a situation where the logo and its placement were integral to the design.

Likewise, the Court did not “consider the particular orientation of the wavy lines as a

distinguishing feature.” (Appx192.) The court believed the patent was not limited to

a particular orientation, even though the figures that define the claimed design show a

16
horizontal orientation. (Id.) It also ignored that, in Seirus’s products, the vertical

orientation is important based on how it interacts with the repeating logo. The court

dismissed any differences in the waves’ thickness as “not claimed in the patent” and

“minor,” (Appx193), even though the patent claims waves of uniform thickness and

the extent of the difference is a fact question for a jury.

The court concluded by finding that a comparison with the prior art did not

raise fact issues regarding non-infringement. The court acknowledged the prior

Blauer design “resemble[s] the wavy design of Columbia’s patent,” but questioned its

relevance because it was not a design patent. (Appx195.) Even considering Blauer,

the court thought Seirus’s design was closer to Columbia’s patent, because Blauer’s

waves “are not contrasting colors, and the waves in the Columbia and Seirus designs

are very close to the same wavelength and amplitude.” (Appx196.) But the court

ignored that considering color would suggest non-infringement, because Seirus’s color

scheme is the reverse of the patented design—the silver waves are thicker in Seirus’s

design (and Blauer), while Columbia’s patent has thicker black waves.

The Court Incorrectly Instructs the Jury on Damages.

With infringement erroneously resolved, the main trial issue on the design

patent was damages. The parties’ dispute centered on the appropriate “article of

manufacture” for calculating damages under 35 U.S.C. § 289. The Supreme Court

had recently issued Samsung Electronics Co., Ltd. v. Apple Inc., 137 S. Ct. 429 (2016),

which held that the “article of manufacture” might either be “a product sold to a

17
consumer” or “a component of that product” but declined to specify the test for

determining the appropriate article. Id. at 435. The Solicitor General had proposed a

four-factor test for determining the article. See 2016 WL 3194218, at *27-*29. The

parties used those factors, but disagreed on who bore the burden of persuasion.

The district court ruled for Columbia, and its jury instruction put the burden

on Seirus to prove that the relevant article is something less than the end-product,

contradicting the statute and the traditional burden for proving damages:

Columbia bears the initial burden of producing evidence identifying the article
of manufacture for which it seeks profits. Columbia may meet that burden by
showing that Seirus applied the patented design to a product that was sold and
further proving Seirus’s total profit from the sale. Seirus bears the burden of
proving that the article of manufacture is something less than the entire
product.

(Appx4489-4491; Appx4222-4223.) The court acknowledged, however, that

“reasonable people can disagree about this” and “an appellate court is going to tell us

whether we are right or not.” (Appx4490-4491.) Seirus objected to this instruction.

(Appx4323-4326; Appx5345; Appx5353; Appx1525; Appx1532; Appx3905.)

The disputed instructions certainly impacted the jury’s damages award.

Columbia’s expert, after revising downward to correct some admitted mistakes,

calculated damages as $3,018,174 by assuming the “article of manufacture” was the

entire end-product. (Appx3799–3801; Appx3839.) Columbia didn’t present any

alternative calculation if the article was instead simply the HeatWave fabric. By

contrast, Seirus’s expert calculated that damages were at most $500,817 if the relevant

18
article was the HeatWave fabric. The jury ultimately awarded Columbia’s amount,

implicitly suggesting it found the article was the entire end-product. (Appx5.)

The Court Denies Seirus’s Post-Trial Motions and Awards

Pre-Judgment Interest and Supplemental Damages.
Following trial, Seirus renewed its JMOL motion that the HeatWave fabric is

the appropriate article of manufacture and that damages should be reduced

accordingly. Seirus also moved for a new trial based on the erroneous jury

instructions. The court summarily denied both motions. (Appx9.) The court

awarded interest and supplemental damages, again based on the erroneous

assumption that the relevant article was Seirus’s end-products, rather than the

HeatWave fabric. (Appx1682; Appx1685; Appx5450-5451.)

B. The Properly-Instructed Jury Invalidates the Utility Patent.

The jury’s verdict on the utility patent reflected its findings that (1) Fottinger

anticipates the claims, and (2) the claims are obvious based on either Fottinger alone

or the combination of Fottinger with one or more of the other references above.

(Appx6.) We defer discussion of the supporting evidence until the Argument and

respond to Columbia’s unfounded assertions about Seirus’s expert and counsel there

as well. For now, it suffices to show the court was within its discretion in declining to

give Columbia’s additional requested instructions on anticipation.

Columbia doesn’t appear to dispute that the court’s anticipation instruction was

correct as far as it went. Nor could it. The court correctly explained that “for a

19
patent claim to be anticipated by the prior art, each and every limitation of the claim

must be present within a single item of prior art.” (Appx4241.) The instruction

further explained that anticipation means the claims are “not new,” and required that

the anticipating prior art contain “a description of the invention covered by the patent

claims that is sufficiently detailed to teach a person of ordinary skill in the art how to

make and use the invention without undue experimentation.” (Id.)

But Columba sought to add more regarding when a prior art range anticipates.

It first proposed an instruction with specific numbers and a list of factors to consider.

(Appx1567–1568.) The court declined that instruction because “it was pointing to

specific percentages and evidence that was inappropriate to be part of an instruction.”

(Appx3898.) Columbia then submitted a revised additional instruction a few hours

before closing stating that “the prior art reference anticipates only if a person of

ordinary skill in the art would understand the range in the prior art to disclose the

range in the patent.” (Appx1667.) The court declined that last-minute request,

because “the instructions as they sit adequately address this issue.” (Appx3898.)

The jury found anticipation and obviousness and did not find infringement.

(Appx5-6.) The court denied Columbia’s post-trial motions on invalidity, explaining

that “there were legally sufficient bases for the jury’s verdicts of invalidity, the jury

instructions on anticipation and obviousness were legally sufficient, and [Seirus’s

expert] testimony was properly admitted into evidence.” (Appx9.) Columbia did not

make any Rule 50 motions on infringement, waiving its ability to further contest it.

20
 SUMMARY OF THE ARGUMENT

Design Patent Infringement. The summary judgment of infringement

should be reversed. Infringement is an intensely factual issue where a jury should

determine whether the differences between the two designs are sufficient to avoid

infringement. Here, there are multiple differences between the two designs. The

patented design shows uninterrupted horizontal waves where each wave has a

uniform thickness throughout. By contrast, Seirus’s design features vertical waves

that are repeatedly interrupted by a unique ornamental feature—Seirus’s logo boxes—

where the thickness of each wave is not uniform. A jury could find those differences

significant, and the court erred in resolving disputed factual issues while simply

ignoring some of those key differences.

Design Patent Damages. The § 289 damages award should be reversed or

vacated. The award is excessive as a matter of law because the relevant “article of

manufcture” is the HeatWave fabric, not Seirus’s end-products. The patent identifies

the material as the relevant article, and Seirus’s fabric is distinct from the many other

components and technological innovations that make up its products. The fabric is

manufactured and sold separately, and the accused design it bears does not drive

demand for any of the accused products. So the fabric is the relevant article as a

matter of law. But, at a minimum, a new trial on damages is appropriate, because the

court improperly shifted the burden of proof (perusasion) on the relevant article to

21
Seirus. That contradicts the presumption that a plaintiff bears the burden on

damages, the statutory text, and how this Court has treated other damages sub-issues.

Utility Patent Invalidity. The jury’s invalidity verdict should be upheld. Its

anticipation finding is supported by substantial evidence—both Fottinger itself and

the expert testimony establish that each disputed claim element was disclosed.

Although Columbia has a contrary spin on the facts, that is insufficient on appeal

given the jury’s well-supported findings. Moreover, Columbia is not enitled to a new

trial because the jury was properly instructed, and the district court acted within its

discretion in refusing to give Columbia’s additional instructions and in finding the

expert testimony was proper and did not prejudice Columbia.

The jury’s obviousness determination was also well-supported. The claimed

coverage range was expressly disclosed in numerous other references, and a skilled

artisan had ample reason to combine them to achieve a garment with optimal warmth

and breathability. Columbia’s alleged secondary indicia do not change the analysis

given the strong evidence of obviousness and the lack of nexus.

Venue. The district court didn’t abuse its discretion in transferring the case.

Seirus objected to venue promptly after TC Heartland, and the district court rightly

found that this change in the law justified not finding waiver. Moreover, venue is

admittedly improper in Oregon after TC Heartland.

22
 ARGUMENT

I. Cross-Appeal: The Judgment on the Design Patent Should Be Vacated.

A. The Summary Judgment of Infringement Should Be Reversed.
The summary judgment of infringement should be reversed. This Court

reviews a grant of summary judgment de novo, Oswalt v. Resolute Indus., Inc., 642 F.3d

856, 859 (9th Cir. 2011), while “[d]esign patent infringement is a question of fact.”

Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1295 (Fed. Cir. 2010). The patentee

must show “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.”

Id. The fact-finder must consider “the ornamental aspects of the design as a whole

and not merely isolated portions of the patented design.” Braun Inc. v. Dynamics Corp.

of Am., 975 F.2d 815, 820 (Fed. Cir. 1992). “There can be no infringement based on

the similarity of specific features if the overall appearance of the designs are

dissimilar.” OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997).

Here, infringement should have gone to a jury to resolve the factual dispute regarding

the alleged similarity of Columbia’s patent and Seirus’s fabric.

A Reasonable Jury Could Find the Overall Columbia and

Seirus Designs Are Not the Same.
A jury could reasonably find Seirus’s design does not infringe given its

differences from the patented design. To begin, a jury could find the ordinary

observer is a sophisticated retail purchaser who was far more discerning than the one

23
posited by the district court. The ordinary observer’s identity is “central” to “every

design patent case.” Arminak and Assocs. v. Saint-Gobain Calmar, Inc., 501 F.3d 1314,

1321 (Fed. Cir. 2007). When determining the ordinary observer, “the focus is on the

actual product that is presented for purchase, and the ordinary purchaser of that

product.” Goodyear Tire & Rubber Co. v. Hercules Tire & Rubber Co., Inc., 162 F.3d 1113,

1117 (Fed. Cir. 1998). Here, Seirus’s Vice President testified its products are sold

mostly to “big box” stores or distributors with “sophisticated commercial buyers”

that are “more discerning than the average retail consumer.” (Appx4296-4297 at ¶¶

9–10.) Moreover, even the few end-customers who buy Seirus’s products directly

“are particularly discerning, because of the specialized nature of the products being

sold—cold weather apparel—and the fact that there are numerous products to choose

from.” (Appx4297 at ¶ 11.) So even they are “sophisticated purchasers in their own

right and discerning about their apparel and gear.” (Id.)

When viewing Seirus’s products through this ordinary observer’s more

sophisticated eye, a reasonable jury could conclude that they are different from the

patented design. The two designs are shown below, and a visual inspection reveals

multiple differences upon which a jury could find non-infringement.

24
 Seirus’s logo boxes present an immediate distinction. The patented design

contains a series of uninterrupted waves. Seirus’s design, by contrast, has repeating

logo boxes that break up the waves, disrupting the visual impression of continuous

flow the patented design conveys. The logo boxes also have unique design elements

in their own right that change the overall visual impression. The observer’s eye is

drawn to the stylized “S” in Seirus that contrasts with the rest of the name. The

swooping “S” also contrasts with the wavelength and amplitude of the waves, making

the Seirus name stand out. The overall effect is to focus the observer on the repeating

logo boxes—and the Seirus name. That is most unlike the patented design, where the

observer’s gaze falls solely on the waves.

25
 A jury could find further dissimilarities in the details of the designs. For one

thing, Seirus’s design features waves with a vertical orientation, while the patented

design features horizontal waves. The result is a markedly different aesthetic effect.

The Seirus design conveys the impression of the waves hitting an observer like a

warm wind in early Fall, while the patented design conveys the impression of waves

radiating upward from the ground. Both may convey a sense of a heat, but the

picture left behind in the observer’s mind is different.

For another thing, the sophisticated ordinary observer would notice a marked

difference in the thickness profile of the waves in the patent when compared with

Seirus’s design. In the patented design, a given wave has a uniform thickness

throughout its length. By contrast, in Seirus’s design, a given wave has thicker parts

and thinner parts, as illustrated in the image below:

26
This leads to a big-picture difference, because it results in silver lines running

horizontally through the fabric where the silver waves are thicker:

(Appx4295.) The patented design has no such additional ornamentation.

The differences between the two designs are particularly stark when the

ordinary observer considers the prior art. “[W]hen the claimed design is close to the

prior art designs, small differences between the accused design and the claimed design

are likely to be important to the eye of the hypothetical ordinary observer.” Egyptian

Goddess, 543 F.3d at 676. Here, the claimed design is remarkably similar to the prior

Blauer patent. Both show horizontal, uninterrupted waves where a given wave has

the same thickness throughout. (Appx11 at Fig. 2; Appx4159 at Fig. 5.) As a result,

the ordinary observer would be discerning when comparing “wavy” designs and not

think that any two were the same. A jury could conclude the observer would instead

think the unique aspects of the accused design—its repeated logo boxes interrupting

the waves, its vertical orientation, and its waves of varying thickness—distinguish it

from the claimed design. Summary judgment was inappropriate.

27
 The District Court Erred by Resolving Factual Issues and
Ignoring Key Distinctions Between the Designs.
The district court’s contrary decision was infected by multiple legal errors—it

ignored some distinctions between the designs, and resolved disputed factual issues

that should have been left to a jury.

The district court’s principal mistake was to ignore the repeating Seirus logo

boxes, which are an integral part of the accused design. No opinion of this Court

suggests that a fact-finder may exclude ornamental elements of an accused design

simply because they include a company’s logo. Quite the contrary: excluding those

features conflicts with the requirements that the fact-finder compare “the overall

appearance” of the two designs, OddzOn, 122 F.3d at 1405, and that “all ornamental

features visible at any time during the normal use of a product” must be considered.

Contessa Food Prods., Inc. v. Conagra, Inc., 282 F.3d 1370, 1381 (Fed. Cir. 2002).

The district court thought it had to exclude ornamentation with the logo based

on dicta in L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117 (Fed. Cir. 1993), but

that case imposes no such requirement. There, a logo was not even at issue. The

question was whether the lower court had erred in applying its findings on trade dress

to design patent infringement. This Court found no error but noted a difference

between the two: “[d]esign patent infringement relates solely to the patented design,

and does not require proof of unfair competition in the marketplace, or allow of

avoidance of infringement by labelling.” Id. at 1126. This statement does not require

28
that a fact-finder ignore ornamental aspects of an accused design anytime it includes a

company’s logo. At most, it means a defendant cannot avoid infringement by affixing

its logo to what is otherwise an “admitted” copy of the patented design. Id. at 1125.

This action does not present the case of a label slapped onto a shoe that is

otherwise an admitted copy. Seirus did not copy Columbia’s design (and the jury

found Seirus was not willful), (Appx3056–3068; Appx5), nor did it merely affix its

logo to the patented design. The repeating Seirus logo boxes are an integral part of

the design that interrupt the waves and change the overall effect on the ordinary

observer. (Appx3064.) If the repeating boxes contained another design element or

even were just fully shaded rectangles, then the ordinary observer would have to

consider them. So the fact the design element they contain is Seirus’s logo shouldn’t

be a basis to ignore them.

The district court likewise erred in ignoring the difference in the orientation

between the waves in the two designs. A jury could find that difference important.

The patent shows the waves exclusively in a horizontal orientation. That limits the

claim, which is to the design “as shown and described.” (Appx10.) By contrast, the

accused design uses vertical waves, when the waves are viewed in relation to end-

product (and the Seirus logo). The district court dismissed this difference by stating

that an ordinary observer could rotate the Seirus design 90 degrees. (Appx192.) But a

jury could reasonably reject this argument and find that the design’s orientation

matters because it creates a different overall visual impression.

29
 Having simply ignored key differences in the designs, the district court

compounded its error by resolving factual disputes on summary judgment. It ruled

against Seirus on the identity of the ordinary observer, choosing a less sophisticated

end-customer. (Appx187.) But Seirus presented declaration evidence the ordinary

observer was a more sophisticated industrial purchaser, (Appx4296-4297), which a

jury could reasonably credit. Likewise, the court dismissed the differences in the

width of Seirus’s waves as unimportant to this less sophisticated purchaser. But,

again, a jury could reasonably disagree, both because it could find the ordinary

observer to be more discerning and because it could find that small differences matter

a great deal given the closeness of the claimed design to the prior art, regardless of the

identity of the ordinary observer. The Court should thus reverse and remand for a

trial on infringement.

B. The HeatWave Fabric, Not Seirus’s End-Products, Is the Relevant

“Article of Manufacture” as a Matter of Law.
This Court should constrain the retrial on the design patent by determining

Seirus’s HeatWave fabric is the relevant “article of manufacture” for calculating § 289

damages. The parties agree that the Solicitor General’s four-factor test for

determining the relevant article is the proper legal inquiry. As discussed below, each

factor suggests the article is the HeatWave fabric. Moreover, the fabric is like other

components that prior courts have determined are the relevant articles. See, e.g., Grand

Rapids Refrigerator Co. v. Young, 268 F. 966, 974 (6th Cir. 1920) (relevant article was a

30
refrigerator latch, not the entire refrigerator); Bush & Lane Piano Co. v. Becker Bros., 222

F. 902, 903–04 (2d Cir. 1915), subsequent appeal 234 F. 79, 81–82 (2d Cir. 1916)

(relevant article was a piano case, not the entire piano). This Court should streamline

further proceedings by determining the article is the fabric.

The Patent Shows the Relevant Article is the Fabric.

The Solicitor proposes first examining “the scope of the design claimed in the

plaintiff’s patent,” because “the patent identifies the article of manufacture that the

patentee views as the article to which the design is applied.” See 2016 WL 3194218,

at *27-*28. That is consistent with the applicable regulations, which require that the

patent’s title and claim specify the article of manufacture. See 37 C.F.R. § 1.153(a).

The patent here establishes the article is the fabric (material), not any end-

product. The title is “Heat Reflective Material,” and the claim covers “[t]he

ornamental design of a heat reflective material.” (Appx 10.) The figures confirm

that the material with the design is the relevant article. Figures 5 and 8, for example,

separate most of the end-product from the heat-reflective material with broken lines:

(Appx12.) The “broken lines depict environmental subject matter only and form no

part of the claimed design,” (Appx10; Appx2115), underscoring that only the material

31
is the article. Even the inventor admitted the patent claims a design applied to a

fabric, not the end-product. (Appx2113–2114.)

Given the patent’s own designation of the relevant article, Columbia cannot

recover damages on an end-product well beyond what it claimed. Bush and Lane Piano

Co., 222 F. at 904 (reversing damages award that treated an entire piano as the relevant

article, because “[w]hat Lane invented was a piano case, not a piano” and “[h]e

received a patent for a ‘piano case’ and not for a piano”).

The Accused Design’s Relative Lack of Prominence in the

End-Products Shows the Article is the Fabric.
The Solicitor’s second factor—“the relative prominence of the design within

the product as a whole”—also shows the relevant article is the fabric. See 2016 WL

3194218, at *28. The Solicitor explains that “[i]f the design is a minor component of

the product, like a latch on a refrigerator, or if the product has many other

components unaffected by the design, that fact suggests that the ‘article’ should be

the component embodying the design.” Id.

That describes the accused design here to a T. Seirus’s products have many

other components other than the HeatWave fabric. For example, Seirus’s various

gloves include buckles, straps, pockets, zippers, different colors, leather palms,

different stitching, different types of waterproofing technologies, different insulative

materials, and even a feature that lets you operate your smartphone without taking

off the glove. (Appx2317; Appx2320; Appx3156-3160.) Moreover, sales of all

32
Seirus’s products are driven by factors wholly unrelated to the accused design. The

products are marketed based on their ability to keep customers warm, dry, and

comfortable, not the accused design. (Appx5471; Appx5481; Appx5485-5487;

Appx5584; Appx5585; Appx5615-5746; Appx1888-1896; Appx2279; Appx2320.)

Customers actually bought more units of a glove without the HeatWave fabric than

an otherwise identical glove that included the HeatWave fabric. (Appx2313-2316;

Appx3420-3422; Appx5292-5295.) Even Columbia’s witnesses admitted that

customers buy the products for reasons other than the accused design, including

their color, sizing, fit, quality, buckles, pockets, straps, and liners, along with whether

they are waterproof, the quality of their insulation, and the Seirus brand. (Appx1938-

1939; Appx2035-2037.) What’s more, the accused design is not visible on most

accused products unless one digs in to look at the interior fabric. (See, e.g.,

Appx5286-5287; Appx2103.)

The relevant article is thus only the fabric with the accused design. Columbia

did not invent and has not patented the many other components of Seirus’s

products. It should not be permitted to collect § 289 damages on features unrelated

to the accused design. Bush and Lane Piano Co., 222 F. at 903–04 (“To attribute the

sale of 958 Imperial pianos solely to the design of the case which inclosed them

seems unwarranted.”). Instead, Columbia’s damages should be tied to the article that

actually bears the accused design—the HeatWave fabric.

33
 The Patented Wave Design Is Conceptually Distinct from
the Glove
The Solicitor’s third factor—“whether the design is conceptually distinct from

the product as a whole”—also dictates the HeatWave fabric is the article of

manufacture. “If the product contains other components that embody conceptually

distinct innovations, it may be appropriate to conclude that a component is the

relevant article.” See 2016 WL 3194218, at *28-*29.

That, once again, describes this case. Seirus’s products have dozens of other

components that include distinct innovations to keep customers warm and dry.

(Appx3148-3149; Appx3154-3163.) For example, Seirus’s outer shell gloves include

insulation, a waterproof membrane, inner liner soft shell fabric, back panels, a

waterproof zipper, a cinch, a bungee cord, a buckle, and a palm portion. (Appx3154-

3163; Appx5296-5317; Appx5749.) These components are unrelated to the

HeatWave fabric with the accused design. Columbia should not be permitted to

recover damages on these unpatented components. Bush and Lane Piano Co., 222 F.

at 904 (“When the patent owner is awarded the profits due to his design he receives

all he is entitled to.”).

The HeatWave Fabric is the Relevant Article Because It Is

Manufactured and Sold Separately.
The Solicitor’s final factor—“the physical relationship between the [accused]

design and the rest of the product”—also dictates that the relevant article is the

HeatWave fabric. The relevant article is likely the component, not the entire

34
product, when the design is on a component that (1) “can physically separate from

the product as a whole,” (2) “is manufactured separately from the rest of the

product,” or (3) “can be sold separately.” See 2016 WL 3194218, at *29.

The HeatWave fabric meets each of those descriptions. It can physically

separate from Seirus’s outer shell gloves. (Appx3162; Appx3229.) It is separately

manufactured by a third-party, Ventex. (Appx3151; Appx3854.) And it is sold

separately—Ventex sells to many others, including Harley Davidson. (Appx3151-

3153; Appx3854.) This confirms what the other factors already demonstrate: the

HeatWave fabric is the article as a matter of law.

C. At a Minimum, the Court Should Grant a New Trial on Damages

Given the Erroneous Jury Instructions.
If the Court does not determine the relevant article of manufacture as a matter

of law, then it should order a new trial on the issue, because the jury was incorrectly

instructed on the burden of proof, and that error prejudiced Seirus. The plaintiff

traditionally has the burden of proof on damages. Nothing justifies shifting that

burden—the statute does not permit burden-shifting, nor do policy considerations.

The Court should thus vacate the damages award and remand for a new trial.

The Plaintiff Should Bear the Burden of Persuasion on the

Relevant “Article of Manufacture” Under § 289.
The jury should have been instructed that Columbia, not Seirus, bore the

burden of proving the relevant article of manufacture for determining damages under

§ 289. The burden of proving all elements of its case traditionally falls on the

35
plaintiff. Schaffer ex rel. Schaffer v. Weast, 546 U.S. 49, 57 (2005) (“we have usually

assumed without comment that plaintiffs bear the burden of persuasion regarding

the essential aspects of their claims.”). “Absent some reason to believe that

Congress intended otherwise, therefore, we will conclude the burden of persuasion

lies where it usually falls, upon the party seeking relief.” Id. at 57–58. Following that

rule, “[t]he burden of proving damages falls on the patentee.” Lucent Techs., Inc. v.

Gateway, Inc., 580 F.3d 1301, 1324 (Fed. Cir. 2009). Identifying the relevant article of

manufacture is part of the plaintiff’s damages case, so the plaintiff bears the burden

of proof on it. Apple Inc. v. Samsung Elecs. Co. Ltd., 2017 WL 4776443, at *13 (N.D.

Cal. Oct. 22, 2017) (“[T]he plaintiff bears the burden of persuasion on identifying the

relevant article of manufacture”).

Section 289’s text is consistent with imposing the burden of proof

(persuasion) on the patentee to show the relevant article of manufacture. The statute

sets out the boundaries of liability as follows:

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 profit. . . .

35 U.S.C. § 289. This language imposes the burden of proving infringement on the

plaintiff. See Egyptian Goddess, 543 F.3d at 678. And it does not shift the burden of

proof on any damages issue to the defendant. Indeed, the legislative history suggests

36
there was no such intent and that the plaintiff had the burden of proving its

damages. See, e.g., H.R. REP. NO. 49-1966, at 3 (1886) (“the patentee recovers the

profit actually made on the infringing article if he can prove that profit”); Apple,

2017 WL 4776443, at *13 (“[T]he legislative history of the predecessor to § 289

shows that Congress intended that the plaintiff bear the burden of persuasion.”).

Section 289’s text stands in stark contrast to other IP-related statutes, where

Congress explicitly shifted the burden of proof on some element of damages. For

example, the trademark statute allows an award of the defendant’s profits and adds

that “[i]n assessing profits the plaintiff shall be required to prove defendant’s sales

only; defendant must prove all elements of cost or deduction claimed.” 15 U.S.C.

§ 1117(a). Likewise, the copyright statute permits an award of the defendant’s profits

and again says that, “the copyright owner is required to present proof only of the

infringer’s gross revenue, and the infringer is required to prove his or her deductible

expenses and the elements of profit attributable to factors other than the copyrighted

work.” 17 U.S.C. § 504(b). Section 289, by contrast, contains no such language.

The upshot is that the plaintiff bears the burden of proving all aspects of § 289

damages, including the identity of the relevant article of manufacture. When

Congress wanted to shift the burden of proof it does so expressly. See, e.g., Meghrig v.

KFC Western, Inc., 516 U.S. 479, 485 (1996) (“Congress . . . demonstrated in

CERCLA that it knew how to provide for the recovery of cleanup costs, and . . . the

language used to define remedies under RCRA does not provide that remedy.”).

37
 Placing the burden of proof for the article of manufacture on the plaintiff is

consistent with how this Court has treated other damages sub-issues. For example, a

plaintiff seeking § 284 damages on a multi-component product must either apportion

the value of the patented component or prove the entire market value rule applies.

Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 894 F.3d 1258, 1272 (Fed. Cir.

2018). “The burden of proof in this respect is on the patent holder.” Id.; see also

Garretson v. Clark, 111 U.S. 120, 121 (1884) (“[T]he patentee must show in what

particulars his improvement has added to the usefulness of the machine or

contrivance.”). This rule ensures the plaintiff’s damages do “not overreach and

encompass components not covered by the patent.” Power Integrations, 894 F.3d at

1271. Determining the appropriate article of manufacture under § 289 serves a

similar purpose—it ensures the patentee receives compensation only for the article to

which the design is actually applied, not also for unrelated, unpatented components.

It is thus appropriate that the patentee should bear the burden to prove the relevant

article, just as it bears the burden on the entire market value rule and apportionment.

Another example is marking under § 287, where, once again, the plaintiff bears

the burden of proof. Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 876 F.3d 1350,

1368–69 (Fed. Cir. 2017). This Court recently reiterated that “the patentee bears the

burden of pleading and proving he complied with § 287” and ordered a new trial

where the jury instructions erroneously shifted that burden to the defendant. Id.

The Court did impose an initial “burden of production” on the defendant to identify

38
unmarked goods that potentially practice the patent but stressed this was a “low bar”

and concluded that “the patentee bears the burden to prove the products identified

do not practice the patented invention.” Id. Applying that approach here shows the

jury instructions were erroneous. Seirus would, at most, have the burden of

production to identify an “article of manufacture” less than its end-products, which

it did by identifying the HeatWave fabric. (Appx3151; Appx3480-3482.) At that

point, Columbia should have had the burden of proving the appropriate article of

manufacture. Apple, 2017 WL 4776443, at *14. Yet the jury instruction put the

burden of proof (persuasion) on Seirus. That was legal error requiring a new trial, as

in Arctic Cat.

Neither Policy Nor Any Other Consideration Justifies

Shifting the Burden of Persuasion to the Defendant.
The district court gave little explanation for why it shifted the burden of

persuasion, instead just adopting what it perceived to be the Solicitor General’s

suggestion to that effect in Apple. (Appx4489-4491.) The Solicitor’s brief is unclear

on whether it contemplates a shifting of the burden of persuasion or merely the

burden of production. See 2016 WL 3194218, at *30-*31. But, either way, the

suggestion is based on policy—the Solicitor thought the defendant has “superior

knowledge” on the issue. Id. at *31. This is insufficient. Policy considerations can’t

trump the statutory text and default rule that the plaintiff must prove its claim.

Moreover, the statute already provides for a situation in which the plaintiff has

39
difficulty providing its claim by setting a minimum recovery. See 35 U.S.C. § 289; See

H.R. REP. NO. 49-1966, at 3 (“[T]o meet the case where the exact profit in dollars

and cents cannot be proved … the bill prescribes a minimum recovery of $250.”); S.

REP. NO. 49-206, at 2 (1886) (similar). Courts should not use burden-shifting to

address an issue for which Congress already provided the remedy.

What’s more, the Solicitor is wrong to think the defendant has “superior

knowledge.” There is “no reason why ordinary discovery would not be sufficient to

allow a design patent plaintiff to carry its burden of persuasion on identifying the

relevant article of manufacture.” Apple, 2017 WL 4776443, at *14. The plaintiff can

access physical samples of the accused products, documents showing how they are

manufactured, and testimony about the other technologies incorporated into them.

Plaintiffs must already use this type of information to meet their burden on the

entire market value rule. They could do it equally for the article of manufacture.

The Erroneous Jury Instructions Prejudiced Seirus.

The instruction erroneously shifting the burden of proof on the “article of

manufacture” issue prejudiced Seirus, requiring a new trial. See Clem v. Lomeli, 566

F.3d 1177, 1181 (9th Cir. 2009). By shifting the burden of proof, the instruction

necessarily skewed the jury’s deliberations—its default position was to give Columbia

all the damages it sought, unless Seirus could prove a lower number. But the inquiry

should have been reversed: the burden should have been on Columbia to show it

was entitled to damages for something more than just the fabric to which the design

40
was actually applied. This Court has set aside other verdicts where the jury was

wrongly instructed on the burden for damages. Arctic Cat, 876 F.3d at 1368-69. The

same result is appropriate here.

II. The Jury’s Invalidity Verdict on the Utility Patent Should Be Upheld.
The jury’s findings of anticipation and obviousness were both correct. This

Court only need reach one to sustain the verdict—i.e., if it affirms on anticipation, it

need not reach obviousness, and vice-versa. We discuss each issue below, so the

Court can choose the most straightforward path to affirmance.

A. Substantial Evidence Supports the Jury’s Determination that

Fottinger Anticipates.
The jury’s anticipation finding should be upheld. Anticipation is a question of

fact reviewed for substantial evidence. Blue Calypso, LLC v. Groupon, Inc., 815 F.3d

1331, 1341 (Fed. Cir. 2016). “For a prior art reference to anticipate a patent, it must

disclose each and every limitation of the claimed invention.” Verizon Services Corp. v.

Cox Fibernet Virginia, Inc., 602 F.3d 1325, 1337 (Fed. Cir. 2010). Columbia confines its

challenge to three claim elements—(1) “discrete heat directing elements each

independently coupled to a first side” of a base material; (2) that cover 30–70% of the

base material; and (3) that are positioned on “the innermost surface” to direct heat

towards the user’s body. The jury reasonably concluded that Fottinger disclosed each

element. Columbia seeks simply to reargue facts the jury properly found against it.

41
 Fottinger Discloses “Discrete Heat-Directing Elements,
Each Independently Coupled” to the Base Material.
Substantial evidence supports the jury’s finding that Fottinger discloses

“discrete heat-directing elements each independently coupled” to the base material, as

required by claim 2 (but not claim 23). Fottinger discloses applying “a discontinuous

coating comprising a binder and metal powder” to a base material, where “the

individual coated areas are mutually separated.” (Appx4135 at 1:54–64.) The experts

referred to these coated areas as “dots,” because they can be circular. (Id. at 1:94–96,

Appx3318-3319; Appx3381-3383; Appx3694-3695.) Seirus’s expert testified that each

coated area (“dot”)—including both the binder and the metal powder (aluminum

particles)—was a heat-directing element. (Appx3252–3253, Appx3374; Appx3381-

3183.) He also explained that each heat-directing element was “discrete” from the

others and “independently coupled” based on Fottinger’s disclosure that the coating

was “discontinuous” and the coated areas were “mutually separated.” (Appx3252-

3253.) The jury reasonably credited this testimony, finding the entire coatings, not

just the metal particles, were the “heat-directing elements” and that the elements were

therefore “discrete” and “independently coupled” given their mutual separation. That

factual finding was well-supported.

Columbia argues (at 46) that Fottinger’s coating (i.e., the “dots”) cannot be a

heat-directing element because the binder supposedly does “not reflect or conduct

heat.” Columbia instead believes that only the metal powder within the dot—not the

42
entire dot—is a heat-directing element. But this simply reargues an intensely factual

issue the jury resolved against Columbia. The jury was justified in doing so. Seirus’s

expert repeatedly testified that the entire dot, not just the aluminum powder, was a

heat-directing element. (See, e.g., Appx3318-19 (“Q. The aluminum powder is the only

part of the substance that can actually reflect heat, correct? A. Oh no, that is very,

very wrong.”); Appx3382 (“The heat-reflective elements are the dots that contain the

aluminum powder.”); Appx3373–3375.). Moreover, even Columbia’s expert admitted

that Fottinger’s dots “possibly can conduct heat,” and that they direct at least a

“miniscule amount” of heat, because “everything is a body radiator.” (Appx3694–

3695.) Columbia’s expert also admitted the claims do not require the heat-directing

elements to direct any particular amount of heat, (Appx3707, Appx3709, Appx211),

so her testimony confirms that entire dot (coating) is a heat-directing element.

Columbia nevertheless says (at 47) that Fottinger shows the binder does not

reflect heat based on an experiment comparing a jacket with the binder and metal

particles to a control jacket with just the binder. But this experiment says nothing

about whether the binder itself reflects heat. It just established the particles within the

binder do reflect heat. And, given the expert testimony that the binder also reflects

heat, the jury reasonably concluded the entire coating (dot) is a heat-directing element.

Because the entire dot is a heat-directing element, Columbia’s argument (at 48)

that Fottinger’s elements are not “discrete” or “each [independently] coupled” fails.

Fottinger says its dots comprise “a discontinuous coating comprising a binder and

43
metal powder,” and that “the individual coated areas are mutually separated.”

(Appx4135 at 1:54-56, 1:61-64.) Seirus’s expert testified this satisfies the claims.

(Appx3252.) And Columbia’s expert agreed the “Fottinger dots” are independently

coupled to the base fabric. (Appx3706.) Columbia does not now argue that this

limitation is absent if the entire coating (dot) is the heat-directing element. So

substantial evidence supports the jury’s verdict.

Fottinger Teaches the 30-70% Coverage Limitation

Substantial evidence supports the jury’s finding that Fottinger discloses a

material where the heat-directing elements cover between 30–70% of the base

material. Fottinger discloses that its coated areas, which Seirus’s expert established

are the heat-directing elements, “cover from 5 to 40% of the surface area of the

coated face.” (Appx4135 at 1:54-60; Appx3253–3254.) The prior art range

significantly overlapped the claimed range—it disclosed a full quarter of it. A prior

art range anticipates “if it describes the claimed range with sufficient specificity such

that a reasonable fact finder could conclude that there is no reasonable difference in

how the invention operates over the ranges.” Ineos USA LLC v. Berry Plastics Corp.,

783 F.3d 865, 869 (Fed. Cir. 2015). That describes this case.

Seirus established the invention operates the same way over the respective

ranges, and that the claimed range was “not critical” to the invention. (Appx3259–

3260.) Both Columbia’s patent and Fottinger reflect the same trade-off: covering

more of the base material increases heat reflection but reduces breathability. Both

44
selected overlapping ranges to strike that balance. And, although Fottinger’s range

extended only to 40%, there was nothing that prevented extending it higher or

changed the way it worked once one did. Skilled artisans knew higher coverage

percentages would work equally well, because the “transfer of moisture through the

fabric, the transfer of air through fabric is not proportional” to the amount of

coverage, meaning that higher coverage values would beneficially generate more heat

without sacrificing breathability. (Appx3259–3260; Appx5586-5596; Appx5597-

5614.) Seirus’s expert thus concluded that “as long as you’re placing elements on the

surface of the fabric, it can be in the range of 5 to 80 percent, and it’s been shown in

the patent literature that it works.” (Appx3266–3267.) Columbia’s expert made

admissions to a similar effect—she acknowledged that skilled artisans had known

since the 1970s that “somewhere around the middle” of 0–100% coverage “is where

you probably wanted to be,” (Appx3731), that the precise point is simply “a trade-

off,” and that skilled artisans “have known that there is a continuum out there for

decades.” (Appx3715.)

What’s more, Columbia’s patent demonstrated in multiple ways that the

claimed range wasn’t critical. The claims didn’t originally include the 30–70%

limitation, and the specification just refers to it as a feature of some “embodiments.”

(Appx26 at 5:56-65; Appx4964-4967.) When it added the range to the claims,

Columbia included the modifier “about” for both the 30% and 70% ends of the

range, showing the precise numbers don’t matter. (Appx3259–3260; Appx4733-

45
4738.) Columbia’s inventor and expert couldn’t even agree on what “about” meant

or how much it stretched the claimed range. (Appx2449–2456; Appx2664-2671.)

Moreover, the claimed range of 30–70% is simply the middle of the range of

possibilities from 0–100%. (Appx3259–3260.) It is not only the middle, but

encompasses most of the entire possible range, all suggesting it is nothing special.

Indeed, Columbia’s inventor didn’t even test any points lower than 40% or greater

than 67%, again showing that the claimed end-points were arbitrary and leaving him

with no data to suggest the claimed range was critical. (Appx2075–2077; Appx4140.)

Columbia didn’t even argue the claimed range was “critical” at trial.

This case thus falls squarely within others where this Court has held that a

prior art range that overlaps the claimed range is anticipating. See, e.g., Ineos, 783 F.3d

at 870–71 (overlapping range anticipated where the patent did not identify the

claimed range as novel and there was no evidence the desired properties would

change if the prior art range was used rather than the claimed range); Clearvalue, Inc. v.

Pearl River Polymers, Inc., 668 F.3d 1340, 1345 (Fed. Cir. 2012) (finding anticipation

where there was no evidence the range was “critical” or “that the claimed method

works differently at different points within the prior art range”). Columbia’s

commercial embodiment confirmed the prior art range was interchangeable with

what is claimed—Columbia’s patented products have heat-directing elements that

cover 35–37% of the base material, which is within both the prior art range and the

claimed range. (Appx3680–3681; Appx3258.)

46
 Columbia seeks simply to reargue what it admits (at 42) is a “fact-intensive

inquiry,” and they can be rejected based on the jury’s well-supported verdict against

it. Columbia first argues (at 48) that Fottinger’s heat-directing elements are only the

metal powder, not the entire coated areas (dots) and thus do not cover 5–40% of the

base layer. But the entire Fottinger dot that is a heat-directing element, and Fottinger

unambiguously discloses that the dots cover 5-40% of the base layer. (Appx3252–

3253; Appx3374; Appx3381-3183; Appx4134 at (57); Appx4135 at 1:54-60.)

Columbia next attempts to establish (at 49–50) that the claimed range works

differently than Fottinger’s range. Columbia points to two items—(1) Fottinger’s

statement that increasing coverage beyond 40% impairs breathability, (Appx4134 at

1:84–93), and (2) Seirus’s expert testimony that increasing coverage results in a less

permeable surface. (Appx3270.) But the jury reasonably found these arguments

outweighed by the evidence above showing the claimed range was not critical. On the

first point, Fottinger’s range overlaps with the claimed range and works the exact

same way within that common set of embodiments (30–40% coverage), so it does not

matter whether Fottinger discloses the rest of the claimed range (i.e., 40–70%).

Regardless, a skilled artisan reading Fottinger at the time of invention (2010) would

have known that subsequent research showed that increasing coverage above 40%

would not have impaired breathability or caused things to work differently and would

thus not have given Fottinger’s statement on that point any weight. (Appx5586-5596;

Appx5597-5614; Appx3259-3262.) On the second point, Seirus’s expert simply

47
testified to the trade-off between heat reflection and permeability based on the point

in the range one selects. (Appx3270.) But the same principle applies equally

throughout the range (and beyond)—the skilled artisan simply selects a point based

on the desired balance of heat reflection and permeability. (Appx3269-3270.)

Moreover, Seirus’s expert showed the range was “not critical,” (Appx3259-3260), and

the jury properly credited his testimony, along with all the other evidence showing the

invention works the same throughout the range.

This case is thus unlike Atofina v. Great Lakes Chemical Corp., 441 F.3d 991 (Fed.

Cir. 2006). There, the patent claimed performing a process at a range of 330-450°C,

while the prior art disclosed a range of 100-500°C. Id at 993. The patent stated that

“only a narrow temperature range enables” the process to operate as claimed, that

problems occur when operating the reaction either below 330 °C or above 400 °C,

and that the claimed reaction “must be carried out at a temperature of between 330°C

and 450°C.” See U.S. Patent 5,900,514 at 3:23–29, 3:61–65. The patent also

contained data showing the claimed reaction didn’t work at 300°C. Id. at 5:62–6:20.

The Court thus concluded the prior art did not anticipate given this “considerable

difference” between the claimed range and the prior art, which included many non-

working temperatures. Atofina, 441 F.3d at 999; see also ClearValue, 668 F.3d at 1344–

45. By contrast, the patent here does not say anything about the claimed range being

critical, instead saying it only applies to some “embodiments.” (Appx26 at 5:56-60.)

There is no data in the specification or otherwise suggesting that particular points in

48
the range won’t work—in fact, skilled artisans knew it would work for any value from

5–80%. (Appx4152 at ¶ 45; Appx4171; Appx4195 at 6:65-67; Appx4161 at 4:14-15.)

This case thus falls squarely within ClearValue and Ineos, which found anticipation.

Columbia’s reliance (at 50–51) on Osram Sylvania v. Am. Induction Techs. Inc., 701

F.3d 698 (Fed. Cir. 2012), is likewise misplaced. The Court there reversed a summary

judgment of anticipation and remanded for a trial on whether the range was critical.

Here, Columbia had a trial and the jury found against it. Columbia is wrong to say (at

50) that “all evidence presented at trial” supported its position. There was substantial

evidence discussed above that the claimed range is not critical.

Fottinger’s Heat-Directing Elements Are “Positioned on the

Innermost Surface” of the Innermost Layer.
Substantial evidence also supports the jury’s finding that Fottinger’s heat-

directing elements (the coated areas/”dots”) are “positioned on the innermost

surface” of the garment’s innermost layer. Two aspects of Fottinger independently

disclose this limitation. First, Fottinger states its materials have the coated areas “on

at least one face thereof” and may be used as “lining fabrics for articles of clothing.”

(Appx4136 at 2:48–52.) A “lining fabric” is the innermost layer of a garment, and

Fottinger’s reference to “at least one face” discloses the coated area could be on either

side of the “lining fabric,” including the innermost layer (or both faces). (Appx3255;

Appx3380–3381; Appx3320–3321.) Second, Fottinger states its materials “may also

be used as outer fabrics for articles of clothing, in which case the coated face will be

49
on the inside of the article.” (Appx4136 at 2:48-52.) This also discloses the relevant

claim limitation—when the garment has only an outer fabric and no other layers, this

passage explicitly discloses putting the coated areas on the innermost surface of the

innermost layer. (Appx3255; Appx3380–3381; Appx3322.)

Columbia’s response is, yet again, to reargue facts the jury properly resolved

against it. Addressing the first part of Fottinger, Columbia claims (at 44) that

Fottinger isn’t clear on whether the coating is on the inside or outside of a “lining

fabric.” But Fottinger’s statement that the coating is “on at least one face” of the

fabric broadly (and expressly) discloses it could either be on the innermost surface or

the outside (or both). (Appx3254-3255; Appx3380-3381.) Because Fottinger

discloses the claimed element as one option, that is enough to anticipate. Columbia is

wrong to say (at 44–45) that Seirus’s expert admitted this element was not met.

Instead, what he said was the particular Fottinger passage referring to a “lining fabric”

doesn’t specify whether the coating is on the inside or outside. (Appx3321.) But

another part of Fottinger says the coating is “on at least one face” of the fabric, which

does disclose the option of putting it on the innermost surface. (Appx4134 at (57).)

Columbia’s spin on the second part of Fottinger fares no better. Columbia

complains (at 45) that Fottinger does not say that a garment might only have an outer

fabric without any other layers and speculates that its reference to an “outer” fabric

implies there are other layers underneath. But the jury could reasonably reject that

argument using its common sense. Plenty of coats have only one, outer layer. A

50
skilled artisan reading Fottinger would do so with that knowledge. Seirus’s expert

likewise testified that clothing with an “outer fabric” doesn’t always have additional

layers underneath. (Appx3322.) So substantial evidence supports the jury’s finding

that a skilled artisan would read Fottinger’s disclosure of placing the coated areas on

the “inside” of the “outer fabric” to include a disclosure of placing them on the

innermost surface of the innermost layer. (Appx3254-3255; Appx3380-3381.)

B. The Jury’s Obviousness Finding is Well-Supported.

The jury’s obviousness finding was also correct. Obviousness is a question of

law based on underlying facts. Apple Inc. v. Samsung Elecs. Co., Ltd., 839 F.3d 1034,

1047 (Fed. Cir. 2016) (en banc). Where, as here, a court is faced with a “black box

jury verdict,” it must “presume the jury resolved underlying factual disputes in favor

of the verdict winner and leave those presumed findings undisturbed if supported by

substantial evidence.” Id. Those findings include (1) the scope and content of the

prior art, (2) the differences between the prior art and the claims at issue, (3) the level

of ordinary skill, and (4) any evidence concerning secondary considerations. Id.

They also include motivation to combine. Id. at 1051. The Court then examines

obviousness de novo in light of those underlying facts. Id.

Columbia’s challenge is limited to three points. It first says (at 54–55) there

was no “prima facie” case of obviousness because the prior art supposedly didn’t

disclose all the claim elements. It next complains (at 56–59) that the jury’s

obviousness finding can’t be upheld without expert testimony, and then criticizes

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Seirus’s expert. It finally challenges (at 59–63) the existence of a motivation to

combine. But the first and third points are factual issues that the jury properly

resolved against Columbia. And Columbia is wrong on the second point—Seirus’s

expert provided ample testimony given the simple technology. The jury’s verdict

should be upheld.

The Jury Properly Found a “Prima Facie” Obviousness Case

Because the Prior Art Disclosed All Limitations.
Columbia’s first challenge can be quickly dispensed with. As demonstrated

above, Fottinger itself disclosed every limitation, and, in particular, disclosed (1)

positioning heat-directing elements on the innermost surface of a garment’s

innermost layer, and (2) making the heat-directing elements “discrete” and

“independently coupled” to the base material. Fottinger also disclosed that its heat-

directing elements had sufficient coverage to meet the 30-70% coverage limitation.

What’s more, Seirus showed these elements were ubiquitous in the prior art.

Multiple references (Vaughn, Halley, Blauer, and Worley) suggested that the skilled

artisan cover 30–70% of the base material with heat-directing elements. Despite the

district court’s comments at summary judgment, Seirus’s expert was permitted to

testify, and the jury presumptively found, that the covered areas in each of those

references were heat-directing elements, because they reflect heat according to

Planck’s law. (Appx3371–3372, Appx3376–3380.) Moreover, the coated areas in the

secondary references were “discrete” and “independently coupled” to the base

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material and on the innermost surface of the innermost layer. (Appx4150 at [17],

[19], and [20]; Appx4165; Appx4171; Appx4188 at Abstract; Appx4193 at 1:57-61,

2:59-62; Appx4159 at Figures 3-7; Appx4161 at 3:42-45, 3:63-67.) And, regardless of

whether the references disclosed heat-directing elements, they were all concerned

with identifying a coverage range that allowed sufficient breathability (i.e., air and

moisture permeability), which was one of the same issues addressed by Fottinger.

(Appx4135 at 1:61-65; Appx3266–3267.) As a result, the skilled artisan would

recognize that the secondary references suggested modifying Fottinger’s heat-

directing elements to have an increased coverage range—and, indeed, both Halley

and Vaughn suggested 30–70% coverage specifically—while maintaining adequate

breathability. (Appx4152 at ¶ 45; Appx3270–3271; Appx3266; Appx3714;

Appx4171.)

The prior art thus plainly disclosed every claim element, and, as discussed

further below, there was ample motivation to combine. The jury’s factual findings

on these issues were well-supported, and Columbia’s challenge to the “prima facie”

obvious case fails.

Seirus’s Expert Used the Correct Legal Standard, But the

Jury’s Verdict Was Proper Even Without His Testimony.
Seirus’s expert testimony amply supported the verdict, and Columbia’s

challenges are without merit. Columbia first complains (at 57–58) that Seirus’s

expert should be ignored because he supposedly used “hindsight.” That is wrong.

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Seirus’s expert repeatedly testified he was conducting the analysis at the time of the

invention, which shows he wasn’t using hindsight. (See, e.g., Appx3262 (“That is, at

the time of the alleged invention, you would look at it and say, oh, that’s

obvious.” (emphasis added)); Appx3266 (same); Appx3342 (“Q. The ultimate

question that we’re trying to answer here is, would it have been obvious to a person

of ordinary skill in the art at the time of Mr. Blackford’s invention in 2008, would

it have been obvious to come up with Mr. Blackford’s invention? Do you

understand that to be kind of the ultimate question here? A. I understand.”

(emphasis added)); Appx3344 (“Q. But this is the concern that we have in the law is

that looking back ten years later, the natural inclination of people is to say, ‘Yeah,

that would have been obvious back then’ because its easy to look at the invention as

sort of the roadmap or the blueprint for the ultimate solution, correct? A. That is

correct.” (emphasis added)).)

Columbia ignores that testimony and focuses (at 57) on the expert’s statement

that “[t]o me obvious would be Mr. Blackford would show somebody his invention,

and that person would say, ‘Yeah, that’s obvious. There’s nothing new there.’”

(Appx3343.) But that does not show improper use of hindsight. It is consistent with

the expert’s testimony elsewhere that he assessed obviousness at the time of

invention. And, as Seirus’s expert later explained, it simply reflects the fact that one

can’t conduct an obviousness analysis without looking at what is claimed to

determine if it would have been obvious. (Appx3386–3387 (“Q. And certainly you

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can’t develop an opinion of obviousness in the abstract with no patent. You were

simply – is it true that you were using the claims of the patent as the start of your

analysis? A. I would have to, yes.”).

Columbia then wrongly asserts (at 58–59) that Seirus’s expert “failed to

consider any objective indicia” when analyzing non-obviousness. That is untrue.

Seirus’s expert repeatedly testified that he did “consider” the objective indicia.

(Appx3350–3351 (“Q. So you didn’t consider it. Is that right? A. That is not

true.”); Appx3353 (“Q. You did not look at or consider any evidence of whether the

products were commercially successful, correct? A. As I said, I considered it, and I

found it irrelevant.”).) He also agreed that the law requires considering each of the

objective indicia to guard against hindsight. (Appx3343–3347.)

Columbia ignores all this and harps on Seirus’s expert testimony that the

objective indicia Columbia had identified were “not relevant.” (Appx3347.) But he

made very clear that this was different from saying he didn’t consider them at all and

repeatedly offered to explain why he thought they were irrelevant. (Appx3347 (“If

you would like me to tell you why they are not relevant, I’d be happy to do so.”);

Appx3355 (“I said considered, and I will tell you why they are irrelevant….”).)

Columbia didn’t want to hear the explanation and kept cutting him off. (Appx3350–

3356.) The expert nevertheless explained that many of the factors were “irrelevant,”

because they simply weren’t present. (See, e.g., Appx3351 (“A long felt need? Not

necessarily so. Failed attempts by others? Not necessarily so. Copying by others?

55
Not necessarily so. Unexpected results? Definitely not.”); Appx3355 (“whether the

patentee proceeded contrary to accepted wisdom? Answer no. Irrelevant.”).) Had

Columbia let him continue, the expert also would have explained the lack of nexus

between the alleged factors and the claims. Given the fact that the objective indicia

were both non-existent and lacked a nexus, the expert was right to consider them but

conclude they were irrelevant here.

Columbia’s complaints about the expert’s treatment of the objective indicia

are particularly unpersuasive, because it does not even challenge the jury’s presumed

factual findings against it on them. The jury’s obviousness verdict reflects its implicit

findings that (1) none of the objective indicia are present, (2) any objective indicia

lack a nexus to the claimed invention, and (3) any objective indicia were outweighed

by the other strong evidence of obviousness. The jury’s findings on these points

were well-supported given the closeness of the prior art and dearth of evidence

presented by Columbia. And Columbia’s failure to contest them on the merits

confirms that its attacks on Seirus’s expert are without merit.

Columbia’s attacks are also futile because the jury did not even need Seirus’s

expert testimony to find obviousness. “KSR and our later cases establish that the

legal determination of obviousness may include recourse to logic, judgment, and

common sense, in lieu of expert testimony” particularly when, as here, the

technology and references are “easily understandable.” Wyers v. Master Lock Co., 616

F.3d 1231, 1239 (Fed. Cir. 2010); see also Perfect Web Techs., Inc. v. InfoUSA, Inc., 587

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F.3d 1324, 1329 (Fed. Cir. 2009) (explaining the obviousness analysis “may include

recourse to logic, judgment, and common sense available to the person of ordinary

skill that do not necessarily require explication in any reference or expert opinion”);

Union Carbide Corp. v. Am. Can Co., 724 F.2d 1567, 1573 (Fed. Cir. 1984) (“an

invention may be held to have been ... obvious ... without a specific finding of a

particular level of skill or the reception of expert testimony”).

Here, the technology was simple and the prior art plainly disclosed all the

elements. Columbia’s expert acknowledged the relevant principles were well-known

and the inventor was “not a scientist.” (Appx3731; Appx3699; Appx3715–3718.)

Moreover, the jury was properly instructed on the relevant legal standard, including

that (1) obviousness is assessed “at the time the claimed invention was made,” (2)

“you must be careful not to determine obviousness using the benefit of hindsight,”

because “many true inventions may seem obvious after the fact,” (3) a juror should

“put yourself in the position of a person of ordinary skill in the field at the time the

claimed invention was made and you should not consider what is known today or

what is learned from the teaching of the patent,” and (4) one must consider any

secondary indicia and determine if they have the required nexus to the claims.

(Appx4076–4080.) The jury could thus reasonably find obviousness by following

those instructions (which it is presumed to have done), based on the prior art and

Columbia’s expert admissions, without further expert testimony from Seirus.

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 There Were Ample Reasons to Combine the Prior Art
to Arrive at the Claims.
Columbia is also wrong to attack the jury’s presumed factual finding that the

skilled artisan had sufficient reason to arrive at the claims. As an initial matter, this

Court doesn’t require a specific reason to combine where, as here, the prior art range

overlaps the claimed range. “In cases involving overlapping ranges, we and our

predecessor court have consistently held that even a slight overlap in range establishes

a prima facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).

“The normal desire of scientists or artisans to improve upon what is already generally

known provides the motivation to determine where in a disclosed set of percentage

ranges is the optimum combination of percentages.” Id. at 1330. Here, Fottinger

already disclosed a range (5–40%) that overlaps with a quarter of the claimed range,

while the other prior art disclosed the exact claimed range (30–70%). Columbia’s

expert admitted that skilled artisans knew they’d want to be “somewhere in the

middle,” i.e., 50%, that skilled artisans knew there was a “trade-off” between heat-

direction and breathability, and knew the range was a “continuum.” (Appx3715–

3716; Appx3731.) That alone shows there was ample reason to select a point within

the claimed range, rendering the claims obvious.

Nevertheless, Seirus presented more specific evidence regarding the reason to

combine. Seirus’s expert explained that all the secondary references were pertinent,

because (1) they did disclose heat-directing elements, just like Fottinger, and (2) even

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if they didn’t, they illustrate that a skilled artisan could retain adequate breathability

while specifically using 30–70% coverage. (Appx3377–3380.) He also explained that

they illustrated the trade-off between heat reflecting and breathability: “if you put

more elements on the surface, you’re going to get an enhancement in your heat

reflection, you’re going to become stiffer, you’re going to have less moisture

permeability, you’re going to have a rougher coarser handle.” (Appx3270; Appx4160

at 1:11-12, 18–20; Appx4171.) Fottinger disclosed the same thing—that “coverage

impacts the permeability and the moisture vapor transfer” of a fabric. (Appx3274;

Appx4135 at 1:61–65.) The skilled artisan would thus know to find a “balance

between various properties” and understand that she should not just “stick to one

number,” but that “sometimes you go this way, sometimes you go that way.”

(Appx3269–3270.) As a result, the prior art would teach that the skilled artisan could

select any point “in the range of 5 to 80 percent, and it’s been shown in the patent

literature that it works.” (Appx3267.) The skilled artisan would thus select the

appropriate point—including any point in the claimed 30–70% range—based on the

desired balance between heat direction and breathability.

The jury properly rejected Columbia’s attacks on this evidence. Columbia first

quotes parts of Seirus’s expert testimony (at 59–60), but it ignores the other parts

where he elaborated on the motivation, along with the admissions of its own expert.

Regardless, Columbia’s cited testimony does not help its cause, because it is consistent

59
with the rule that a prior art disclosure of a partially or completely overlapping range

itself provides the required motivation. Peterson, 315 F.3d at 1329–30.

Columbia next focuses (at 60–61) on Fottinger’s range of 5–40%, stresses that

Fottinger expressed doubt about coverage over 40%, and notes Fottinger’s preference

for a range of 10–20%. But the jury properly weighed these facts against the other

evidence of obviousness just discussed and found against Columbia. In particular, the

overlap between Fottinger’s range and the claims is alone enough to establish

obviousness based on Fottinger alone, without even considering the other prior art.

Petersen, 315 F.3d at 1329–30. Fottinger’s doubts about exceeding 40% were

irrelevant, because a skilled artisan would still arrive at a point within the claimed

range (30–70%) without exceeding 40%. Moreover, subsequent prior art showed the

skilled artisan could go higher than 40% without sacrificing breathability, because the

relationship between the two was non-linear. (Appx5586-5596; Appx5597-5614;

Appx3261-3262.) So the jury reasonably found that a skilled artisan looking at all the

prior art would know that 40% was not a limit, and that she could select a higher

coverage point within the claimed range to improve heat-direction while maintaining

breathability. The secondary references all likewise showed that a range of 30–70%

would still yield acceptable breathability. Finally, Fottinger’s preference for 10–20%

doesn’t teach away from higher percentages, especially because Fottinger itself teaches

going up to 40%.

60
 Columbia’s other points (at 62–63) all conflict with the jury’s well-supported

findings. The jury reasonably found that each of the secondary references disclosed

heat-directing given Seirus’s expert testimony, (Appx3376–3380), so Columbia’s

patent wasn’t the “only reference” to teach 30–70% coverage. Regardless, the

secondary references still taught that 30–70% coverage resulted in acceptable

breathability, supplanting Fottinger’s earlier suggestion not to exceed 40%. And

Seirus’s expert didn’t use Columbia’s patent as a “roadmap” for anything. Both

experts agreed that skilled artisans had known for decades about the trade-off

between heat-direction and breathability, with Columbia’s expert even admitting they

knew they’d want to be “somewhere in the middle,” i.e., around 50%. (Appx3715–

3716; Appx 3731.) Columbia’s patent thus added nothing to what skilled artisans

already knew—it simply claimed a range that encompassed obvious subject matter.

C. Columbia Is Not Entitled To a New Trial

There Was No Error in the Anticipation Jury Instructions.
The district court was within its discretion to decline to give Columbia’s

requested instructions. “This Court reviews jury instructions in their entirety and only

orders a new trial when errors in the instructions as a whole clearly mislead the jury.”

DSU Med. Corp. v. JMS Co., 471 F.3d 1293, 1304 (Fed. Cir. 2006). “So long as the

instructions accurately reflect the law, the trial judge is given wide discretion as to the

style and wording employed in the instructions.” Bateman v. Mnemonics, Inc., 79 F.3d

1532, 1543 (11th Cir. 1996). “Because the district court has substantial latitude in

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tailoring jury instructions, we review the formulation of those instructions for abuse

of discretion.” Gilbrook v. City of Westminster, 177 F.3d 839, 860 (9th Cir. 1999); i4i Ltd.

P'ship v. Microsoft Corp., 598 F.3d 831, 841 (Fed. Cir. 2010) (same). Here, the jury was

properly instructed, and nothing about the instructions—either individually or “as a

whole” misled the jury.

Columbia does not point to any error in the instructions actually given.

Instead, Columbia complains (at 63–64) that the court did not provide the additional

instructions Columbia requested regarding overlapping ranges. But the court didn’t

abuse its discretion when declining to give those instructions.

For Columbia’s first requested instruction, the court rightly observed the

proposal was bogged down with alleged facts about the various ranges rather than

simply stating the law. (Appx1565–1568; Appx3898.) Columbia even sought to

include the fact that Fottinger’s “coating includes 8% by weight of aluminum

powder,” (Appx1565–1566), to buttress its erroneous argument that the powder

rather than the coating was the claimed “heat-directing element.” The court was right

to rebuff proposed instructions with this level of detail and to tell Columbia to focus

on the law. Yet Columbia ignored this request and never proposed an alternative

instruction with the same legal concepts but without the factual detail. That was

reason alone for the court to leave the instructions as is.

Columbia’s first instruction was also erroneous because it misstated the law.

The instruction said the claimed range would be “critical” if “functionality is reduced

62
when coverage is greater or lesser than the claimed range.” (Appx1567.) But this

Court has treated a range as “critical” only where there was evidence the phenomenon

at issue would not work at certain points in the prior art range. Atofina, 441 F.3d at

999; ClearValue, 668 F.3d at 1344–45. Columbia’s instruction is wrong to suggest that

any difference in functionality, however slight, avoids anticipation.

The court was also within its discretion when rejecting Columbia’s second, late-

proposed instruction. (Appx1667, Appx3898.) This instruction added nothing to

what the instructions as given said—it stated that the skilled artisan must “understand

the range in the prior art to disclose the range in the patent.” (Appx1667.) But the

instructions as given required that “each and every limitation of the claim must be

present within a single item of prior art.” (Appx4241.) The court was thus right to

find they “adequately address this issue,” (Appx3898), without Columbia’s eleventh-

hour proposal.

Columbia identifies no case granting a new trial based on instructions not given

where the instructions actually provided are correct. Columbia cites Montgomery Ward

& Co. v. Duncan, 311 U.S. 243 (1940), for the proposition that “[f]ailure to instruct the

jury on important contested issue mandates a new trial,” but that is not what the court

said. The court was called “upon to determine the appropriate procedure under Rule

50(b)” regarding JMOL, and, in particular, whether “under Rule 50(b) the District

Court's grant of the motion for judgment effected an automatic denial of the

alternative motion for a new trial.” Id. at 244, 249–50. The court held that it did not.

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Id. The court simply required independent consideration of a new trial motion—

which the district court here did—not any particular level of detail in jury instructions.

Finally, the district court was within its discretion in denying a new trial,

because Columbia cannot establish prejudice from the refusal to give its proposed

instructions. The evidence that Fottinger anticipated, discussed above, was

overwhelming. Moreover, the disputed instructions relate only to anticipation, and

the jury independently invalidated the patents as obvious, so that verdict should stand

regardless of the anticipation instructions. Columbia complains (at 65) about an

isolated remark by Seirus’s expert. But, on the facts of this case, he was correct to say

that Fottinger’s disclosure of part of the claimed range was sufficient, (Appx3258),

given his further testimony that the range was not “critical” and that things worked

the same across the entire range. (Appx3259-3262.) Regardless, there is no basis for

a new trial given the jury’s independent finding of obviousness.

The District Court Was Within its Discretion to Find an

Expert’s Innocent Mistake Did Not Warrant a New Trial.
The district court was also correct to determine that an innocent mistake by

Seirus’s expert does not warrant a new trial. The expert admittedly erred in

interpreting Fottinger’s disclosure of a 25 mesh with half-millimeter spots to suggest

an embodiment with 36% coverage. (Appx3256.) But on cross examination,

Columbia prompted the expert to admit that when considering a different area, the

embodiment had less than 25% coverage. (Appx3327–3334.) Seirus did not attempt

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to rely on this theory thereafter—it neither asked any further questions about it on re-

direct nor mentioned it in closing. The whole incident was a minor blip in a 9-day

trial. The jury considered the issue and found invalidity anyway, crediting the other,

independent evidence. The district court was correct to leave that determination in

place. See Comark Commc’ns. v. Harris Corp., 156 F.3d 1182, 1192 (Fed. Cir. 1998) (“It

is not the province of an appellate court to second guess the jury’s credibility

determinations or to reevaluate the weight to be given the evidence”); Brooktree Corp. v.

Advanced Micro Devices, Inc., 977 F.2d 1555, 1569 (Fed.Cir.1992) (“Issues of credibility

of witnesses are for the jury, and are not amenable to appellate review.”).

Columbia does not cite any district court that granted a Rule 59 motion in such

circumstances, much less an appellate court holding it would be an abuse of discretion

to deny one. Instead, Columbia cites decisions under Rule 60(b) relating to

purposefully false testimony that was exposed only after trial. But those cases are

much different—there, the jury had no idea the evidence was false and thus could not

consider this fact when evaluating witness credibility and weighing the evidence. For

example, in Rembrandt Vision Techs., L.P. v. Johnson & Johnson Vision Care, Inc., 818 F.3d

1320, 1323 (Fed. Cir. 2016), the false testimony was discovered only “[a]fter trial,” so

“the jury never heard that [the expert] had presented false testimony.” Id. at 1323,

1325. Similarly, in Fraige v. Am.-Nat’l Watermattress Corp., 996 F.2d 295, 296 (Fed. Cir.

1993), the court determined that evidence was false only after trial, and in fact

“exclude[d] all evidence as to the false and forged documentation during trial.” Here,

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unlike in Rembradt and Fraige, the jury heard about the error in real-time, yet still

decided against Columbia.

This case is also different from the Rule 60(b) cases because it involves an

innocent error, not purposeful misconduct. Relief under Rule 60(b)(3) requires a

showing of “fraud” or affirmative “misrepresentation.” Fraige involved “forged

documents,” 996 F.2d at 295, while Rembrant dealt with an expert who lied about

personally conducting testing while withholding other tests. See 818 F.3d at 1323.

New trials were granted not simply because of errant testimony, but to rectify an

intentional fraud. There was nothing of the sort here.

The Court should reject Columbia’s allegations (at 68–71) of bad faith. Seirus

candidly told the district court the expert’s report did not mention Fottinger’s “25

mesh” language. (Appx3202.) And, in response to the court’s question about

whether the expert would argue the “25 mesh” passage disclosed a specific percentage

coverage, Seirus argued the expert “can do the math,” (Appx3202–3203), making

clear that it intended to have him do it. Contrary to Columbia’s suggestions, Seirus

did not say that the calculation was “fully disclosed”—its point was that both parties’

experts had discussed this single embodiment during discovery, so it was well known

to both experts. (Appx3203.) The district court allowed the testimony with full

knowledge of the situation, finding Columbia’s complaints went to its “weight.”

(Appx3204–3205.) Seirus didn’t hide anything: it did not “know” the embodiment as

a whole showed less than 36% coverage—it would have been foolish to elicit such

66
testimony knowing it was vulnerable. The expert’s error was not a problem with

“high school” math that was known in advance but with interpreting whether and

how the dot pattern repeated. That interpretation error was not something either

Seirus or the expert recognized before Columbia identified it on cross-examination.

And, ultimately, the court was right that the issue was one of weight. Columbia’s

cross-examination showed the interpretation was not entitled to any weight (so it can

hardly argue prejudice), and the jury considered that in assessing credibility.

The district judge was the best-situated to consider all this—both the overall

effect of the testimony and Columbia’s claims of bad faith. The judge was well within

his discretion to deny a new trial. Indeed, the other, independent evidence showing

that Fottinger disclosed the claimed range and, alternatively, rendered it obvious either

alone or with the other prior art made any error on this issue harmless.

III. The District Court’s Venue Decision Was Correct.

The district court correctly transferred the case to the Southern District of

California. Columbia does not dispute that venue is improper in Oregon under TC

Heartland LLC v. Kraft Foods Group Brands LLC, 113 S. Ct. 1514 (2017). And the

district court held that both rule-based and non-rule-based waiver of Seirus’s venue

objection were excused because TC Heartland was an intervening change in the law.

(Appx1646–1648.) This Court subsequently confirmed that TC Heartland is an

intervening change that excuses rule-based waiver but remanded for the district court

there to consider non-rule-based waiver, which it had not yet done. In re Micron Tech.,

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Inc., 875 F.3d 1091, 1096–1102 (Fed. Cir. 2017). Columbia argues (at 73–74) that this

means an intervening change in the law can never excuse non-rule-based waiver. But

this is wrong—the district court here didn’t abuse its discretion in finding the change

in law excused non-rule-based waiver too.

Micron did not hold that a change in law can never excuse non-rule-based

waiver. It simply observed that non-rule-based waiver is a separate doctrine,

governed by a separate discretionary framework, and remanded where the district

court “did not consider” the issue. Id. at 1102. Here, by contrast, the district court

considered non-rule-based waiver, (Appx1639–1641), and found the changed law

excused it. (Appx1646–1648.) The court explained that Seirus “could not have

reasonably been expected to make an argument contrary to twenty-seven years of

binding precedent, and to ultimately convince the Supreme Court where it had already

denied certiorari on the same issue.” (Appx1646.)

The court acted within its discretion in applying that rationale to excuse both

rule- and non-rule-based waiver. After all, Columbia did not argue to it that an

intervening legal change should be treated differently in a non-rule-based waiver

analysis, (Appx5466-5470), so the district court understandably treated them together.

(That failure also means Columbia has forfeited the issue in this Court.) Moreover,

the district judge balanced any non-rule-based concerns about case management by

excusing waiver yet keeping the case on schedule by himself traveling to preside by

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designation in the Southern District. (Appx4359-4361.) Its transfer decision should

be upheld.

CONCLUSION

For the reasons above, this Court should reverse or vacate the judgment on the

design patent, affirm the judgment on the utility patent, and uphold the venue ruling.

Dated: August 9, 2018 Respectfully submitted,

/s/ Craig E. Countryman

Craig E. Countryman
Fish & Richardson P.C.
12390 El Camino Real
San Diego, CA 92130
(858) 678-5070
countryman@fr.com

Attorneys for Cross-Appellant

Seirus Innovative Accessories, Inc.

69
 

ADDENDUM
 Case 3:17-cv-01781-HZ Document 403 Filed 11/22/17 PageID.18244 Page 1 of 3

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13 IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF CALIFORNIA
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15 COLUMBIA SPORTSWEAR NORTH Case No. 3:17-cv-01781
AMERICA, INC., an Oregon
16 corporation, JUDGMENT
17
Plaintiff, Judge: Marco A. Hernandez
18 Courtroom:
v. Date:
19
Time:
20 SEIRUS INNOVATIVE
ACCESSORIES, INC., a Utah
21 corporation Date Action Filed: January 12, 2015
Trial Date: September 18, 2017
22 Defendants.
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JUDGMENT
Case No. Case No. 3:17-cv-01781

Appx1
 Case 3:17-cv-01781-HZ Document 403 Filed 11/22/17 PageID.18245 Page 2 of 3

1 This action came before the Court for trial before a duly impaneled and sworn
2 jury, and the Court presided over the jury trial from September 18-29, 2017. The
3 parties to this action are plaintiff Columbia Sportswear North America, Inc.
4 (“Columbia”) and defendant Seirus Innovative Accessories, Inc. (“Seirus”). On
5 September 29, 2017, the jury returned a verdict. The verdict was accepted by the
6 Court and filed by the Clerk.
7 Therefore, pursuant to Fed. R. Civ. P. 58, and prior to rulings on post-trial
8 motions pursuant to Fed. R. Civ. P. 50 and 59, judgment is entered in this matter as
9 follows:
10 1. IT IS ORDERED AND ADJUDGED that judgment is hereby entered
11 in favor of Columbia and against Seirus that Seirus’ total profit from sales of the
12 relevant article of manufacture that Columbia is entitled to receive for Seirus’
13 infringement of the U.S. Patent No. D657,093 (“Design Patent”) is $3,018,174.00.
14 2. IT IS FURTHER ORDERED AND ADJUDGED that judgement is
15 hereby entered in favor of Seirus and against Columbia that Seirus did not willfully
16 infringe the Design Patent.
17 3. IT IS FURTHER ORDERED AND ADJUDGED that judgment is
18 hereby entered in favor of Seirus and against Columbia that Seirus proved by clear
19 and convincing evidence that Claim 2 of Columbia’s U.S. Patent No. 8,453,270
20 (“Utility Patent”) is invalid as anticipated by Fottinger.
21 4. IT IS FURTHER ORDERED AND ADJUDGED that judgment is
22 hereby entered in favor of Seirus and against Columbia that Seirus proved by clear
23 and convincing evidence that Claim 23 of Columbia’s Utility Patent is invalid as
24 anticipated by Fottinger.
25 5. IT IS FURTHER ORDERED AND ADJUDGED that judgment is
26 hereby entered in favor of Seirus and against Columbia that Seirus proved by clear
27 and convincing evidence that Claim 2 of Columbia’s Utility Patent is invalid as
28 obvious.
1
JUDGMENT
Case No. Case No. 3:17-cv-01781

Appx2
 Case 3:17-cv-01781-HZ Document 403 Filed 11/22/17 PageID.18246 Page 3 of 3

1 6. IT IS FURTHER ORDERED AND ADJUDGED that judgment is

2 hereby entered in favor of Seirus and against Columbia that Seirus proved by clear
3 and convincing evidence that Claim 23 of Columbia’s Utility Patent is invalid as
4 obvious.
5
6
7
Dated:
8 HONORABLE MARCO A. HERNANDEZ
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

2
JUDGMENT
Case No. Case No. 3:17-cv-01781

Appx3
Case 3:17-cv-01781-HZ Document 377 Filed 09/29/17 PageID.16557 Page 1 of 3

SEP 2.9 2017

IN THE UNITED STATES DISTRICT COURT

FOR THE SOUTHERN DISTRICT OF CALIFORNIA

COLUMBIA SPORTSWEAR NORTH No. 3:17-cv-01781-HZ

AMERICA, INC ., an Oregon Corporation, JURY VERDICT FORM

Plaintiff,

v.

SEIRUS INNOVATIVE ACCESSORIES,

INC., a Utah corporation,

Defendant.

II

II

II

JURY VERDICT FORM - I

Appx4
Case 3:17-cv-01781-HZ Document 377 Filed 09/29/17 PageID.16558 Page 2 of 3

We the jury, unanimously agree to the answers to the following questions and return

them under the instructions of this Court as our verdict in this case.

U.S. PATENT NO. D657,093 ("DESIGN PATENT")

What is Seirus's total profit from sales of the relevant article of manufacture that

Columbia is entitled to receive for Seirus's infringement of the Design Patent?

What is the total dollar amount of a reasonable royalty adequate to compensate Columbia

for Seirus's infringement of the Design Patent?

Has Columbia proven by a preponderance of the evidence that Seirus willfully infringed

the Design Patent?

YES_ _ (WILLFUL) NO ){ (NOT WILLFUL)

U.S. PATENT NO. 8,453,270 ("UTILITY PATENT")

Has Columbia proven by a preponderance of the evidence that Seirus has infringed

claims 2 or 23 of the Utility Patent?

Claim2: YES NO

Claim 23: YES NO

Has Seirus proven by clear and convincing evidence that Columbia's asserted Utility

Patent claims are invalid as anticipated by Fottinger?

JURY VERDICT FORM - 2

Appx5
Case 3:17-cv-01781-HZ Document 377 Filed 09/29/17 PageID.16559 Page 3 of 3

Claim2: YES __X_ (INVALID) NO_ _ (VALID)

Claim 23: YES ')(' (INVALID) NO_ _ (VALID)

Has Seirus proven by clear and convincing evidence that Columbia's asserted Utility

Patent claims are invalid as obvious?

Claim2: YES_!{_ (INVALID) NO_ _ (VALID)

Claim 23: YES _X_ (INVALID) NO_ _ (VALID)

If you find that any of the Utility Patent's asserted claims are valid and infringed, what is

the total dollar amount of a reasonable royalty adequate to compensate Columbia for Seirus' s

infringement of the Utility Patent?

If you find that any of the Utility Patent's asserted claims are valid and infringed, has

Columbia proven by a preponderance of the evidence that Seirus's infringement of any claim

was willful?

YES _ _ (WILLFUL) NO_ _ (NOT WILLFUL)

Have the presiding juror sign and date this form.

Signed: fJ" 1koW Date:!ef+/:;_9 }'J.oJ7

PRESIDING JUROR

JURY VERDICT FORM-3

Appx6
 Case 3:17-cv-01781-HZ Document 455 Filed 03/13/18 PageID.24501 Page 1 of 3

IN THE UNITED STATES DISTRICT COURT

FOR THE SOUTHERN DISTRICT OF CALIFORNIA

COLUMBIA SPORTSWEAR NORTH No. 3:17-cv-01781-HZ

AMERICA, INC., an Oregon Corporation, OPINION & ORDER

Plaintiff,

v.

SEIRUS INNOVATIVE ACCESSORIES,

INC., a Utah corporation,

Defendant.

//

//

1- OPINION & ORDER

Appx7
Case 3:17-cv-01781-HZ Document 455 Filed 03/13/18 PageID.24502 Page 2 of 3

David R. Boyajian
David W. Axelrod
Brenna K. Legaard
Nicholas F. Aldrich, Jr
Schwabe, Williamson & Wyatt, P.C.

Attorneys for Plaintiff

Christopher S. Marchese
Seth M. Sproul
Michael A. Amon
Garrett K. Sakimae
Tucker N. Terhufen
Oliver J. Richards
Fish & Richardson P.C.
12390 El Camino Real
San Diego, CA 92130

Attorneys for Defendant

HERNÁNDEZ, District Judge:

Before the Court are the parties’ renewed motions for judgment as a matter of law

(“JMOL”) and motions for a new trial [420 & 422] under Rules 50 and 59 of the Federal Rules

of Civil Procedure. Under Rule 50, a party may file a JMOL if it “has been fully heard on an

issue during a jury trial and the court finds that a reasonable jury would not have a legally

sufficient evidentiary basis for the party on that issue[.]” Fed. R. Civ. P. 50(a)(1). If the court

denies a JMOL, then a party may renew the motion after trial. Fed. R. Civ. P. 50(b). The court

may: “(1) allow judgment on the verdict, if the jury returned a verdict; (2) order a new trial; or

(3) direct the entry of judgment as a matter of law.” Id. Pursuant to Rule 59, the court may rule

on a motion for a new trial “after a jury trial, for any reason for which a new trial has heretofore

been granted in an action at law in federal court[.]” Fed. R. Civ. P. 59(a)(1).

2- OPINION & ORDER

Appx8
Case 3:17-cv-01781-HZ Document 455 Filed 03/13/18 PageID.24503 Page 3 of 3

For the reasons stated at trial, the Court denies the parties’ renewed JMOLs and motions

for a new trial. Regarding Columbia’s motion, there were legally sufficient bases for the jury’s

verdicts of invalidity, the jury instructions on anticipation and obviousness were legally

sufficient, and Dr. Block’s testimony was properly admitted into evidence. With respect to

Seirus’s motion, the Court remains convinced that, regarding the issue of the relevant article of

manufacture under 35 U.S.C. § 289, the jury instructions and jury verdict were legally sufficient

and that the Court correctly determined the proper legal test. Accordingly, the parties’ motions

are DENIED.

Dated this day of ______________________, 2018.

MARCO A. HERNÁNDEZ
United States District Judge

3- OPINION & ORDER

Appx9
 111111 1111111111111111111111111111111111111111111111111111111111111
USOOD657093S

c12) United States Design Patent (JO) Patent No.: US D657,093 S

Snyder (45) Date of Patent: ** Apr. 3, 2012

(54) BEAT REFLECTIVE MATERIAL Primary Examiner - Susan Bennett Hattan

Assistant Examiner - Barbara B Lohr
(75) Inventor: Zach Snyder, Portland, OR (US)
(74) Attorney, Agent, or Firm - Schwabe, WiiJiamson &
Wyatt, P.C.
(73) Assignee: C olum bia Sportswear North America,
(nc., Portland, OR (US)
(57) CLAIM
14 Years The ornamental design of a heat reflective material, as shown
and described.
(21) Appl. No.: 29/346,786

(22) Filed: Nov. 5, 2009 DESCRIPTION

(51) LOC (9) Cl. .. .. ...... ........ ................. .... .. .. .. .. .. . 29-03
(52) U.S. Cl. ................................................... D29/101.1 FIG. 1 is an elevational view of a heat reflective material;
(58) Field of C lassification Search ..................... D5/47, FIG. 2 is an enlarged elevational view thereof, taken from any
D5/54, 55, 56, 57; D6/ 582; D32/40; 442/327, area in the design;
442/394: 02911 00. 101.2, 101.3, 101.4, FIG. 3 is a cross-sectional side elevational view thereof. taken
D29/101.5; 428/196, 131 ; 451/523, 533, in the direction of line 3-3 in FIG. 1;
451 / 537, 539: DS/90 FIG. 4 is a top perspective view of the heat reflective material
See application file for complete search history. as used in a sleeping bag;
FIG. 5 is a front perspective view of the heat reflective mate-
(56) References Cited rial as used in footwear.
FIG. 6 is a front perspective view of the heat reflective mate-
U.S. PATENT DOCUMENTS rial as used in legwear;
01 19,35 1 S • 3/ 1940 Tabin .......................... ..... 05/56
FIG. 7 is a rear perspective view of the heat retlective material
0 130,877 s • 12/1941 lips ................................. 05/47 as used in a sock;
0 154,151 S • 611949 Ryan .............................. D6/582 FIG. 8 is a rear perspective view of the heat reflective material
7,226,879 B2 • 612007 Tilton et al. ................... 442/327 as used in handwear;
0551,407 s • 9/2007 Caruso et al. .................. 0 32/40 FIG. 9 is a front perspective view of the heat reflective mate-
0573,354 s • 712008 Nam ........................... ..... 05162
0583,568 s • 1212008 Sordi ....... ...... ...... ............ 05128 rial as used in outerwear; and,
0631,262 s • 1/20 11 Evans .............................. 05/56 FIG. 10 is a rear perspective view of the heat reflective mate-
0 638,224 s • 5/20 1 1 Ko cl al. ..................... ..... D5/56 rial as used in footwear.
The broken lines in the drawings depict environmental sub-
FOREIG N PATENT DOCUMENTS
ject matter only and form no part of the claimed design.
JP 63 -125525 8/ 1988
"' cited by examiner 1 C laim, 3 Drawing Sheets

3 3
• •

PLAINTIFF'S
exhibitsticker.com

EXHIBIT

1
USDC 3:17-cv-01781-HZ

Appx10
U.S. Patent Apr. 3, 2012 Sheet 1 of 3 US D657,093 S

FIG. 1 FIG. 2

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Appx11
U.S. Patent Apr. 3, 2012 Sheet 2 of3 US D657,093 S

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Appx12
U.S. Patent Apr. 3, 2012 Sheet 3 of3 US D657,093 S

FIG. 9
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Appx13
 Case 3:15-cv-00064-HZ Document 105 Filed 08/10/16 Page 1 of 17

IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF OREGON

COLUMBIA SPORTSWEAR NORTH

AMERICA, INC., an Oregon corporation,
No. 3:15-cv-00064-HZ
Plaintiff,
OPINION & ORDER
v.

SEIRUS INNOVATIVE ACCESSORIES,

a Utah corporation,

Defendant.

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

OPINION & ORDER - 1

Appx181
 Case 3:15-cv-00064-HZ Document 105 Filed 08/10/16 Page 2 of 17

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

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

OPINION & ORDER - 2

Appx182
 Case 3:15-cv-00064-HZ Document 105 Filed 08/10/16 Page 3 of 17

product infringes its Omni-Heat patents, including design patent D’093. Columbia’s patented

design and Seirus’s HeatWave design are depicted below:

Columbia’s D’093 design Seirus’s HeatWave

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 (1986)

(quoting FED. R. CIV. P. 56(c)).

OPINION & ORDER - 3

Appx183
 Case 3:15-cv-00064-HZ Document 105 Filed 08/10/16 Page 4 of 17

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).

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

OPINION & ORDER - 4

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 Case 3:15-cv-00064-HZ Document 105 Filed 08/10/16 Page 5 of 17

(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 (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. Reebok 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 at 1117,

1918 (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.”).

OPINION & ORDER - 5

Appx185
 Case 3:15-cv-00064-HZ Document 105 Filed 08/10/16 Page 6 of 17

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

OPINION & ORDER - 6

Appx186
 Case 3:15-cv-00064-HZ Document 105 Filed 08/10/16 Page 7 of 17

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 displays. Spotless Enterprises, Inc. v. A & E Products Grp.

L.P., 294 F. Supp. 2d 322, 347 (E.D.N.Y. 2003). Here, by contrast, it is the retail customer who

buys and uses Seirus’s products lined with the HeatWave fabric to keep their hands, feet, or head

warm during outdoor activities. Thus, the ordinary observer in this case is the end buyer and user

of Seirus’s gloves and other products.

Finally, Seirus argues that its products are “specialty products” and thus the “appropriate

ordinary observer is more discriminating about design differences.” Def. Resp. at 16 (citing

Arc’teryx Equip., Inc. v. Westcomb Outerwear, Inc., No. 2:07-CV-59 TS, 2008 WL 4838141, at

*2 (D. Utah Nov. 4, 2008)). The plaintiff in Arc’teryx asserted that a competing design for a

“curvilinear zipper” infringed its design patent. Id. at *1. “The parties agree[d] that the ‘ordinary

observer’ . . . [was] an outdoor clothing customer who is more discerning that an average retail

shopper.” Id. at *2. The Court then found that the defendant’s zipper design was noninfringing

because the ordinary observer would clearly see that the accused zipper had three sections, not

two like the patented design. Id. at *3. Further, the accused zipper was much longer and was

OPINION & ORDER - 7

Appx187
 Case 3:15-cv-00064-HZ Document 105 Filed 08/10/16 Page 8 of 17

placed in a different section of the coat than the patented design. Id. When compared to the prior

art, the court found the accused zipper was closer to another patent than the plaintiff’s asserted

patent. Id. Thus, “based on the differences” between the two items, “no reasonable jury could

find than an ordinary observer, familiar with the prior art, would be deceived into confusing” the

two designs. Id.

But here, even the most discerning customer would be hard pressed to notice the

differences between Seirus’s HeatWave design and Columbia’s patented design:

Columbia’s D’093 design Seirus’s HeatWave

The overall visual impression of these two designs is strikingly similar, as both use a

nearly identical wave pattern with contrasting colors, and the waves have approximately the

same wave length and amplitude. A customer shopping for outdoor gear with a heat-reflective

element could easily be confused into thinking that the Seirus product was actually a Columbia

product, or that the Seirus product was somehow affiliated with Columbia’s patented design. As

explored in more detail below, Seirus argues that its design is distinguishable because it

incorporates the Seirus logo and its wave pattern is slightly irregular and vertically oriented. But

those minor differences, to the extent they are relevant at all, do not change the conclusion that

the effect of the whole Seirus design is substantially the same as Columbia’s patented design.

Payless Shoesource, Inc. v. Reebok Int’l Ltd., 998 F.2d 985, 990–91 (Fed. Cir. 1993) (citing L.A.

OPINION & ORDER - 8

Appx188
 Case 3:15-cv-00064-HZ Document 105 Filed 08/10/16 Page 9 of 17

Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d at 1117, 1918 (Fed. Cir. 1993) (“The ultimate

question [of design patent infringement] requires determining whether the effect of the whole

design is substantially the same. Moreover, . . . minor differences between a patented design and

an accused article’s design cannot, and shall not, prevent a finding of infringement.”) (citations

and quotation marks omitted).

III. Substantially Dissimilarity

“In some instances, the claimed design and the accused design will be sufficiently distinct

that it will be clear without more that the patentee has not met its burden of proving the two

designs would appear ‘substantially the same’ to the ordinary observer, as required by Gorham.”

Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 678 (Fed. Cir. 2008). Seirus asserts that

“[t]his is one of those instances,” Def. Resp. at 18, and points to the following “substantial and

significant differences” between the two designs:

 “[T]he waves appearing in the accused design are decidedly interrupted”

by the repeated use of its logo. Def. Resp. at 9 (double emphasis in
original).
 “[T]he wavy lines are at all times orthogonal1 to the ‘Seirus’ surface
ornamentation, giving them a vertical appearance in comparisons to the
‘Seirus’ design.”
 “[T]he lines in the accused wave pattern are neither uniformly-spaced nor
uniformly-sized.”

Def. Resp. at 9–10. None of these purported “substantial and significant” distinguishing features

stands up to scrutiny.

a. Logo

Seirus’s first claimed distinguishing feature is that its logo, or as Seirus artfully describes

it, the Seirus “surface ornamentation,” is an “innate and integral” part of the wavy-lined design

1
“Orthogonal” means “at a right angle.”

OPINION & ORDER - 9

Appx189
 Case 3:15-cv-00064-HZ Document 105 Filed 08/10/16 Page 10 of 17

of its “HeatWave” fabric. Def. Resp. at 9. It is, however, well-settled that a defendant cannot

avoid infringement by merely affixing its logo to an otherwise infringing design. L.A. Gear, 988

F.2d at 1126 (“Design patent infringement . . . does not . . . allow of avoidance of infringement

by labelling.”); Cornucopia Products, LLC v. Dyson, Inc., No. CV 12-00234-PHX-NVW, 2012

WL 3094955, at *4 (D. Ariz. July 27, 2012) (explaining that, in applying the ordinary observer

test, “labeling usually may not be considered. The company logo undoubtedly helps ordinary

observers distinguish products, but design patent protection would essentially collapse if putting

one’s own logo on an otherwise identical product could defeat the ordinary observer test.”);

Torspo Hockey Int’l Inc. v. Kor Hockey Ltd., 491 F. Supp. 2d 871, 881 (D. Minn. 2007) (“[T]he

presence of a logo cannot defeat a design-infringement claim[.]”); Rockport Co., Inc. v. Deer

Stags, Inc., 65 F. Supp. 2d 189, 195 (S.D.N.Y. 1999) (defendant’s mark was “irrelevant” to

question of design patent infringement). Therefore the Court does not consider Seirus’s “surface

ornamentation,” i.e. the Seirus logo, in the infringement analysis.

Seirus asserts that “courts can consider logos . . . when applying the ordinary observer

test.” Def. Resp. at 21 (citing Apple Inc. v. Samsung Elecs. Co., No. 11-CV-01846-LHK, 2011

WL 7036077, at *16 (N.D. Cal. Dec. 2, 2011)). But that argument ignores a key distinguishing

fact in the Apple analysis, as Judge Koh stated:

Typically, the use of a mark will not avoid infringement of an otherwise

infringing product. See L.A. Gear, 988 F.2d at 1126 (“Design patent infringement
... does not ... allow avoidance of infringement by labeling”). Nonetheless, a
logo’s placement can be considered when logo placement and appearance are
part of the style claimed in the patented designs.

Id. (emphasis added). Here, Columbia’s patents do not claim logo placement as part of the

claimed design. Thus, that passage from Apple simply does not come into play.

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Finally, Seirus’s reliance on the Warsaw case to support its argument regarding the

“significance of surface ornamentation” is similarly inapt. Def. Resp. at 19 (citing Warsaw

Orthopedic, Inc. v. NuVasive, Inc., No. 12-cv-2738-CAB (MDD), slip op. at 11 (S.D. Cal. Oct.

20, 2015). In that case, the added “ornamentations” were not a logo, but numerical markings on a

medical device that served a functional purpose (specifically, measuring the diameter of a

dilation). See id. Seirus’s logo here on its “HeatWave” fabric, by contrast, does not serve any

purpose other than to identify the source of the products, according to deposition testimony from

Seirus’s President:

Q: And you wanted customers to identify this fabric with Seirus’s brand; is
that right?

A: Of course.

Q: And so that’s why you put the logo in this fabric as you were – the fabric
design as you were developing it; is that right?

A: That’s correct.

Aldrich Decl. Ex. A, ECF 93, at 155:12–18. Moreover, Columbia provided a number of

examples of Seirus marketing materials where the Seirus logo does not appear on the fabric. See

Pl. Reply at 7–10. Seirus’s President explained that “it is not necessary to put [the logo] in back

drop iterations of the wave if it’s very clear in the document that this product is sourced by

Seirus.” Id. at 205:10–14. It is evident, then, that Seirus’s logo is a source identifier and not some

functional marking that might bring the present case more in line with Warsaw.

b. Vertical Orientation

Another “distinguishing feature” Seirus claims is that its “wavy lines are at all times

orthogonal to the ‘Seirus’ surface ornamentation, giving them a vertical appearance . . . .” Def.

Resp. at 9. But the scope of the ’093 patent is not limited to a particular orientation; the figures

used in the patent show that the fabric is used in multiple orientations, including on the

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horizontal and diagonal. See D’093 patent, figs. 7–9. Secondly, Columbia also produced pictures

of Seirus products where the wavy lines fabric is horizontally oriented, and Seirus’s President

admitted in his deposition that the orientation of the lines in the HeatWave pattern depends on

how the product is held:

Q: If the lines—if the wavy lines move in the direction of the wrist to the
fingertip, is that horizontal?
...
A: If you hold the product so that they are horizontal it would be.

Aldrich Decl. Ex. A at 180:11–16; see also Pl. Reply at 16–17.

Finally, Judge Koh rejected a similar argument in another Apple v. Samsung decision.

Samsung argued that the Apple’s D’889 patent for the iPad was invalid in part because

“drawings showing the design oriented in different directions make it impossible to know which

way the design is supposed to be oriented . . . .” Apple, Inc. v. Samsung Elecs. Co., 932 F. Supp.

2d 1076, 1085 (N.D. Cal. 2013). “[C]ontrary to Samsung’s assertion,” Judge Koh wrote, “there

is simply no requirement that a claimed design must have a particular preferred orientation;

indeed, Samsung cites no law even suggesting that there is.” Id. at 1086. “The fact that the D’889

Patent shows a design in different orientations merely shows that the particular orientation—

landscape or portrait, head-on or perspective—is not part of what is claimed.” Id. at 1086.

Similarly here, there is nothing in the D’093 patent requiring the design to be oriented

any particular way. As a practical matter, this makes sense because the fabric is intended to line

body gear; the direction of the wavy lines changes as the fabric is fitted into jacket sleeves or

fingers of gloves. Therefore, the Court does not consider the particular orientation of the wavy

lines as a distinguishing feature.

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c. Difference in Line Width

Finally, Seirus asserts that its wavy-line design for the HeatWave fabric is distinguishable

from Columbia’s patented design because the lines in the accused design “are neither uniformly-

spaced nor uniformly sized.” Def. Resp. at 9–10. But again, those limitations are not claimed in

the patent, and thus are not relevant to the analysis. Unique Functional Products, Inc. v.

Mastercraft Boat Co., 82 F. App’x 683, 690 (Fed. Cir. 2003) (“[T]he ’777 patent is not limited to

any particular size or color. We conclude, therefore, that the court erred by taking those features

into consideration in its infringement analysis[.]”); Hutzler Mfg. Co. v. Bradshaw Int’l, Inc., No.

11 CIV. 7211 PGG, 2012 WL 3031150, at *12 (S.D.N.Y. July 25, 2012) (“Where—as here—the

design patent is not limited to a particular size, color, or construction material, such factors

should not be taken into consideration in performing an infringement analysis.”). Moreover, even

considering the slight variation in wave width or spacing, the differences between the Seirus

design and the Columbia design are so minor as to be nearly imperceptible, and do not change

the overall visual impression that the Seirus design is the same as Columbia’s patented one.

Crocs, 598 F.3d at 1303 (“Minor differences between a patented design and an accused article’s

design cannot, and shall not, prevent a finding of infringement.”).

IV. Prior Art Comparisons

“[T]he ordinary observer is deemed to view the differences between the patented design

and the accused product in the context of the prior art.” Egyptian Goddess, 543 F.3d at 676.

“When the differences between the claimed and accused design are viewed in light of the prior

art, the attention of the hypothetical ordinary observer will be drawn to those aspects of the

claimed design that differ from the prior art.” Id. “And when the claimed design is close to the

prior art designs, small differences between the accused design and the claimed design are likely

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to be important to the eye of the hypothetical ordinary observer.” Id; see also Arc’teryx, 2008

WL 4838141 at *3 (comparing and contrasting claimed design and accused design to prior art).

“[I]f the accused infringer elects to rely on the comparison prior art as part of its defense

against the claim of infringement, the burden of production of that prior art is on the accused

infringer.” Egyptian Goddess, 543 F.3d at 678. “The accused infringer is the party with the

motivation to point out close prior art, and in particular to call to the court’s attention the prior

art that an ordinary observer is most likely to regard as highlighting the differences between the

claimed and accused design.” Id.

Seirus presents a small collection of prior art that reflects “wavy line” designs. Def. Resp.

at 25–29. But Seirus’s prior art consists almost entirely of utility patents which disclose

functional, not aesthetic features, such as skid-resistant footwear, or latex glove grips.

Columbia’s D’093 patent protects the “ornamental design of a heat reflective material, as

shown and described,” meaning the utility patents are of little, if any relevance. See 35 U.S.C. §

171 (protecting “any new, original and ornamental design for an article of manufacture . . . .”).

Moreover, the vast majority of Seirus’s prior art covers products far afield from

Columbia’s “heat management materials,” which, again, significantly limits the relevance of the

prior art in this case. Courts examining design patents in relation to prior art cabin their analysis

to prior art specific to the class of articles identified in the design patent at issue. See, e.g.,

Egyptian Goddess, 543 F.3d at 680 (comparing claimed and accused nail buffer designs with

“[t]he two closest prior art nail buffers”); Arminak, 501 F.3d at 1324–25 (comparing claimed and

accused designs for spray bottle trigger shrouds against prior spray bottle trigger shroud

designs); Cornucopia Products, 2012 WL 3094955 at *4 (explaining that “the ordinary observer

is assumed to be familiar with the prior art—i.e., all relevant preexisting designs for similar

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products,” and then comparing claimed and accused fan design against prior fan designs);

Arc’teryx, 2008 WL 4838141 at *3 (comparing claimed and accused designs for jacket zippers

against prior designs for jacket zippers). Accordingly, Seirus’s prior art that discloses shoe treads

(Ostberg ‘131 and Di ‘716), textured grips for gloves (Smalls ‘121), a utility for creating stronger

fabrics (Respess ‘792), and other industrial utility patents (Boorn ‘690, Pratte ‘191) is not

relevant to a comparison between Columbia’s and Seirus’s designs for heat reflective material.

The only prior art that even approaches relevance to Columbia’s design patent are a pair

of utility patents issued regarding a “waterproof breathable lining and outwear constructed

therefrom,” U.S. Patent No. 5,514,459, and a “breathable shell for outerwear.” U.S. Patent No.

5,626,949. One of the figures in the patent, depicted below, does resemble the wavy design of

Columbia’s patent:

‘949 patent, Murphey Decl. Ex. E. That figure depicts one of several example arrangements of a

“relatively high-tensile-strength, highly flexible elastomer, such as an acrylic urethane,” which is

applied directly to the inner face of a weather-impermeable fabric to provide “[d]imensional

stability” and “vapor transmission.” ‘949 patent, col. 2, ll. 17–20; col. 3, ll. 42–45. But again,

neither of these patents is a design patent, and neither one makes a claim to this particular pattern

or, for that matter, any aesthetic features.

Even if the Court were to consider these patents as relevant prior art, the contrasting

waves of Seirus’s design are still substantially closer to the contrasting wave design disclosed in

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the D’093 patent than either Seirus’s or Columbia’s design is to the pattern disclosed in figure 5

of the ‘949 patent, as can clearly be seen by comparing the three designs here:

Columbia’s D’093 patent Seirus’s HeatWave ’949 patent

The waves in the ’949 are not contrasting colors, and the waves in the Columbia and

Seirus designs are very close to the same wavelength and amplitude. The overall visual effect of

the Columbia and Seirus designs are nearly identical, and if the logo was removed from the

Seirus design, an ordinary observer would have great difficulty distinguishing between the Seirus

and Columbia designs. L.A. Gear, 988 F.2d at 1126 (“Design patent infringement . . . does not

. . . allow of avoidance of infringement by labelling.”). Thus, Seirus’s HeatWave design

infringes Columbia’s D’093 patent.

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CONCLUSION

An ordinary observer familiar with the prior art would be likely to confuse Seirus’s

design with Columbia’s patented design. Therefore, Columbia’s motion [75] for partial summary

judgment of infringement of U.S. Design Patent No. D657,093 is granted.

IT IS SO ORDERED

Dated this day of _______________________, 2016.

MARCO A. HERNÁNDEZ
United States District Judge

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 CERTIFICATE OF SERVICE AND FILING

I certify that I electronically filed the foregoing document using the Court’s

CM/ECF filing system on August 9, 2018. Counsel was served via CM/ECF on

August 9, 2018.

/s/ Craig E. Countryman

Craig E. Countryman
Fish & Richardson P.C.
12390 El Camino Real
San Diego, CA 92130
(858) 678-5070
countryman@fr.com
 CERTIFICATE OF COMPLIANCE

I certify that Cross-Appellant’s Opening Brief complies with the type-volume

limitation set forth in Fed. Cir. R. 28.1(b)(2)(A). The relevant portions of the brief,

including all footnotes, contain 16,484 words, as determined by Microsoft Word.

Dated: August 9, 2018 /s/ Craig E. Countryman

Craig E. Countryman
Fish & Richardson P.C.
12390 El Camino Real
San Diego, CA 92130
(858) 678-5070
countryman@fr.com