COLUMBIA SPORTSWEAR NORTH AMERICA, INC., AN OREGON CORPORATION, Plaintiff-Appellant
SEIRUS INNOVATIVE ACCESSORIES, INC., A UTAH CORPORATION, Defendant-Cross-Appellant
Appeals from the United States District Court for the
Southern District of California in No. 3:17-cv-01781-HZ,
Judge Marco A. Hernandez.
Nicholas (Nika) Fremont Aldrich, Jr., Schwabe, Williamson
& Wyatt, Portland, OR, argued for plaintiff-appellant.
Also represented by David W. Axelrod, Sara Kobak.
McCarthy Sproul, Fish & Richardson, PC, San Diego, CA,
argued for defendant-cross-appellant. Also represented by
Christopher Marchese, Oliver Richards, Tucker N. Terhufen.
Lourie, Moore, and Stoll, Circuit Judges.
Lourie, Circuit Judge.
Sportswear North America, Inc. ("Columbia") appeals
from the U.S. District Court for the Southern District of
California's judgment after a jury trial that claims 2
and 23 of U.S. Patent 8, 453, 270 ("the '270
patent") are invalid as anticipated and obvious.
See Judgment, Columbia Sportswear N. Am. v.
Seirus Innovative Accessories, Inc., No. 3:17-cv-01781
(S.D. Cal. Nov. 22, 2017), ECF No. 403. Seirus Innovative
Accessories, Inc. ("Seirus") cross-appeals from the
U.S. District Court for the District of Oregon's grant of
summary judgment that it infringes U.S. Patent D657, 093
("the '093 patent") and from its entry of the
jury's damages award. Columbia Sportswear N. Am.,
Inc. v. Seirus Innovative Accessories, 202 F.Supp.3d
1186 (D. Or. 2016) ("Summary Judgment
Decision"). Because we conclude that the court did
not err in holding claims 2 and 23 of the '270 patent
invalid but that it did err in granting summary judgment of
infringement for the '093 patent, we affirm-in-part,
reverse-in-part, and remand for further proceedings.
issue in these proceedings are two patents: the '270
patent and the '093 patent. The '270 patent is a
utility patent directed to materials that use a pattern of
heat-directing elements coupled to a base fabric to manage
heat through reflection or conductivity. '270 patent col.
1 ll. 22- 27. Figures in the patent depict the material's
use in cold-weather and camping gear, including jackets,
boots, gloves, hats, pants, sleeping bags, and tents.
Id. figures 4-15. At issue here are claims 2 and 23.
Claim 2 depends from claim 1, which recites:
1. A heat management material adapted for use with body gear,
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 and wherein the placement and spacing
of the heat-directing elements permits the base material to
retain partial performance of the transfer property.
Id. col. 8 ll. 8-22. Claim 2 further requires that
"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." Id. col. 8 ll. 23-26.
'093 patent is a design patent drawn to the
"ornamental design of a heat reflective material."
As with all design patents, what is claimed is "the
ornamental design . . . as shown and described." 37
C.F.R. § 1.153(a). Figure 1 depicts the claimed
remaining figures in the patent depict the design as applied
to sleeping bags, boots, pants, gloves, and jackets. '093
patent figures 4-10.
January 12, 2015, Columbia filed suit in the District of
Oregon accusing Seirus of infringing both patents. Seirus
first filed a motion to dismiss for improper venue under
Fed.R.Civ.P. 12(b)(3). Relying on VE Holding Corp. v.
Johnson Gas Appliance Co., 917 F.2d 1574 (Fed. Cir.
1990), Seirus argued that it was not subject to personal
jurisdiction in Oregon, so it did not reside in the district
for purposes of 28 U.S.C. § 1400(b). Defendant Seirus
Innovation Accessories, Inc.'s Memorandum in Support of
Motion to Dismiss, or, Alternatively, Transfer Venue to the
Southern District of California, Columbia Sportswear N.
Am. v. Seirus Innovative Accessories, Inc., No.
3:17-cv-01781 (Feb. 27, 2015), ECF No. 16. Seirus moved in
the alternative to transfer the case to the Southern District
of California for convenience. The court declined to dismiss
or transfer the case because it found itself to have personal
jurisdiction over Seirus and found the convenience transfer
factors to be balanced. See Columbia Sportswear N. Am.,
Inc. v. Seirus Innovative Accessories, No.
3:15-CV-00064-HZ, 2015 WL 3986148, at *1 (D. Or. June 29,
district court also granted summary judgment that
Seirus's HeatWave products infringe the '093 patent.
See Summary Judgment Decision, 202 F.Supp.3d 1186.
The court first held that the "ordinary observer"
for the design patent infringement analysis would be the end
buyer and user of Seirus's gloves and products.
Id. at 1192. Viewing the designs side-by-side, the
court then reasoned that "even the most discerning
customer would be hard pressed to notice the differences
between Seirus's HeatWave design and Columbia's
patented design," characterizing the difference in wave
pattern, orientation, and the presence of Seirus's logo
as "minor differences." Id. at 1192-93.
years after its first venue motion, Seirus moved again under
Rule 12(b)(3) to dismiss the case for lack of jurisdiction or
to transfer it to the Southern District of California. This
time, Seirus's argument relied on the Supreme Court's
intervening decision in TC Heartland LLC v. Kraft Foods
Grp. Brands LLC, 137 S.Ct. 1514 (2017), which overruled
VE Holding. Although it found Seirus had waived its
venue challenge, the district court found TC
Heartland to be "an intervening change in the law
excusing [Seirus]'s waiver" and transferred the case
to the Southern District of California. Columbia
Sportswear N. Am., Inc. v. Seirus Innovative Accessories,
Inc., 265 F.Supp.3d 1196, 1208 (D. Or. 2017)
court, infringement and invalidity of the '270 patent
were tried to a jury, and the jury determined that claims 2
and 23 were invalid as both anticipated and obvious.
See Jury Verdict Form, Columbia Sportswear N.
Am. v. Seirus Innovative Accessories, Inc., No.
3:17-cv-01781 (Sept. 29, 2017), ECF No. 377, J.A. 4-6. The
jury did not reach the issue of infringement of the '270
patent. The jury also considered damages and willfulness for
infringement of the '093 patent, awarding Columbia $3,
018, 174 in damages but finding that the infringement was not
parties filed post-trial motions for judgment as a matter of
law and for a new trial, but the court summarily denied them
in a two-page opinion. J.A. 7-9. Both parties filed notices
of appeal. We have jurisdiction under 28 U.S.C. §
appeal, Columbia argues that the district court should have
granted its motion for judgment as a matter of law that the
invention of the '270 patent was not anticipated and
would not have been obvious at the time of the invention.
Columbia also asks us to grant it a new trial on validity
issues for the '270 patent. If the case is remanded for
any reason, Columbia requests that we reverse the district
court's decision, rendered after TC Heartland,
to transfer the case to the Southern District of
California. In the cross-appeal, Seirus requests
that we reverse the ...