Sep 25, 2023Legal
Fresh From the Bench: Latest Precedential Patent Cases


Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, Inc., Appeal Nos. 2021-2299, -2338 (Fed. Cir. Sept. 15, 2023)

In a decade-old case that has raised a number of issues relating to design patents over two separate appeals, the Federal Circuit addressed a matter of first impression concerning the scope of prior art relevant to an infringement analysis. The Court also clarified the law on other design-patent issues. Ultimately, the panel, in a 34-page opinion by Judge Prost, remanded the case for a second retrial on the issue of design patent infringement, finding that the district court, during the first retrial, had erred in formulating its jury instructions following the first appeal.*

Columbia Sportswear’s D’093 design patent claims the ornamental design of a “heat reflective material.” The patent relates to Columbia’s use of materials with a metallic layer that reflects body heat in its Omni-Heat® line of outerwear products. The design at issue is a wavy-line pattern. In 2013, Seirus launched its HeatWave line of products in competition with Columbia’s Omni-Heat® products. HeatWave products had an internal lining that reflected body heat and used a wavy-line design broken up by Seirus’s logo. A comparison of the two designs is shown below:


* In full disclosure, this week’s Case of the Week was tried at the district court and argued in part at the Federal Circuit by the co-editor of Fresh From the Bench, Nika Aldrich.


Netflix, Inc. v. DivX, LLC, Appeal No. 2022-1138 (Fed. Cir. Sept. 11, 2023)

In another opinion concerning the “scope of relevant prior art” analysis—this time in the context of utility patents—the Federal Circuit vacated an inter partes review decision of the Patent Trial and Appeal Board finding that petitioner Netflix had failed to show that claims of DivX’s U.S. Patent No. 8,472,792 were obvious over the prior art. The ’792 patent is directed to methods of facilitating certain playback functionality in streaming media, and at issue on appeal was whether a prior art patent (Kaku) directed to compression methods for digital cameras and other video devices was analogous art. The Court found that the Board abused its discretion by finding that Netflix had “failed to identify the field of endeavor of either the ’792 patent or Kaku,” such that it “cannot demonstrate that Kaku and the claimed invention are in the same field.” Netflix had argued throughout its briefing that both the ’792 patent and Kaku were generally directed to issues concerning “AVI files” and “encoding and decoding multimedia files.” The Federal Circuit held that contrary to the Board’s analysis, Netflix was not required to use the “magic words” “field of endeavor” to advance its analogous art arguments. Accordingly, the Court vacated the Board’s decision and remanded for consideration of the question “based on the arguments fairly presented by the parties.”

The opinion can be found here.

Apple Inc. v. Corephotonics, Ltd., Appeal Nos. 2022-1350, -1351 (Fed. Cir. Sept. 11, 2023)

In this case, the Federal Circuit vacated and remanded two inter partes review decisions which had found that petitioner Apple failed to show that claims of Corephotonics’ U.S. Patent No. 10,225,479 were unpatentable as obvious. The Court found that the Patent Trial and Appeal Board’s claim construction in one case was erroneous, and that its decision in the second case was based on a ground not raised by any party in violation of the Administrative Procedure Act.

The ’479 patent concerned a camera that creates portrait photographs. Among other things, the patent specified two cameras (one wide and one tele) that fuse images together to create a background that is very blurry behind the subject of the photograph. The patent claims a camera controller that outputs “the fused image with a point of view (POV) of the Wide camera by mapping Tele image pixels to matching pixels within the Wide image,” among other limitations relating to camera parameters, such as track length, focal length, and pixel size.



Nika Aldrich, IP Litigation Group Leader, Schwabe, Williamson & Wyatt, P.C.J

Jason A. Wrubleski, Shareholder


Alex Bish, Associate

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