Intellectual property litigants may be increasingly addressing design patents. Design patent litigation may be getting lengthier, and this may result in the filing of more design patent cases.

The Federal Circuit Court of Appeals complicated the law governing the analysis of design infringement in the fashion industry. Columbia Sportswear N. Am. v. Seirus Innovative Access., Inc., No. 2018-1329, 2019 U.S. App. LEXIS 33795 (Fed. Cir. Nov. 13, 2019). As a result, litigants can expect to see fewer cases resolved at summary judgment. They will have to wait for the fact finder to make a holistic assessment and comparison of the designs. The Federal Circuit's guidance holds that the jury must make the factual determination of the comparison of the designs by employing the "Ordinary Observer Test." Gorham Co. v. White, 81 U.S. 511, 528 (1871). This test asks if the ordinary observer would find the two designs substantially the same such that the purchaser might buy one thinking it is the other. Id. This adds to an already complicated landscape for litigants within the fabric-design space and within the design patent arena as a whole.

Here, Columbia alleged infringement of its design patent on the lining of its winter wear. Id. at *2-3. Defendant Seirus employs a virtually identical wave design on its "HeatWave" products but places its logo in numerous points within the design. Id. at *4-5, *20. The District Court ruled that Seirus infringed Columbia's design patent as a matter of law on summary judgment. The Federal Circuit reversed. Despite the incredible similarity between the designs, the court held that determining design patent infringement is a fact-intensive inquiry for the jury—not the court—to decide after evaluating the designs "as a whole." Id. at *22-25.

The chief—and arguably only—difference between the designs is the repeated use of Seirus's logo on the design. Id. at *20-22. This was not the first time the Federal Circuit has addressed the role logos play in determining design patent infringement. It previously held that simply incorporating a logo into a design does not defeat a claim of infringement. Id. at *23-24 (citing L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1126 (Fed. Cir. 1993)). The Federal Circuit reaffirmed this, but explained that, "L.A. Gear does not prohibit the fact finder from considering an ornamental logo, its placement, and its appearance as one among other potential differences between a patented design and an accused one." Id. at *24.

The opinion will likely make design patent infringement cases more difficult to dispose of at the summary judgment stage. Because the court held that deciding infringement as a matter of law was impermissible here—where, as the district court noted, any differences between the parties' designs were, "so minor as to be nearly imperceptible," it seems any use of a defendant's logo on an otherwise infringing design can prolong litigation beyond summary judgment. See id. at *20-21. Thus, despite the court's discussion of L.A. Gear, it is difficult to reconcile the two opinions.

In sum, litigants can expect longer, more costly litigation with less-predictable outcomes. No doubt, this may cause an undesirable effect for parties on both sides of design patents.

A 2012 Ninth Circuit opinion, L.A. Printex Indus. v. Aeropostale, similarly limited use of summary judgment in cases involving claims of copyright infringement of fabric designs. There, the court held that fabric designs are entitled to broad copyright protection due to the countless ways one may combine the ranging elements of a fabric design. 676 F.3d 841, 851 (9th Cir. 2012). As a result, a "subjective evaluation of the expressive similarity in two fabric designs . . . is best suited for the trier of fact. . . . [Thus,] [t]he issue of substantial similarity must go to the jury." Id. at 852.

In light of these two opinions, those within the fashion industry can expect to see lengthier cases and greater litigation expenses. But, the Federal Circuit's rationale may reach beyond fashion into other industries. The court may have indicated that it was not overruling L.A. Gear, but it's hard to see how this could be given the stark contrast between the cases' instruction for evaluating logos.

The technology industry is not immune. Tech companies increasingly look to design patents to protect their products.1 Design patents are used to protect the designs of user interfaces, "experiences," and "wearables" like smart watches,2 and companies are willing to pursue design patent fights to the greatest extent possible.

In light of Columbia Sportswear's holding that a difference as imperceptible as a difference in logos should preclude judgment as a matter of law, whatever the scopes of the design patents at issue may be, litigants will seemingly be forced to wait until a fact finder can evaluate the designs. In a space where litigants have already illustrated a willingness to engage in expensive, protracted litigation, the decision seems set to further the trend.