We do not usually report on district court cases, but the Columbia Sportswear v. Seirus design patent case handled by our firm is particularly interesting, given the award of all of defendant’s profits, and the district court’s recent grant of a TRO preventing Seirus from filing for ex parte reexamination of the design patent. In BASF v. Johnson Matthey, the Circuit rules that claims reciting parameters in functional terms that are supported in the specification are sufficiently definite under Nautilus. The Circuit reverses and remands an award of lost profits and permanent injunction in Presidio v. ATC, a decision also dealing with indefiniteness, intervening rights and enhanced damages.

Thanks to my newest colleague, Cristin Wagner, for her help with this week’s report. Cristin is a patent litigator who has recently joined our Portland office.

Pete Heuser

Columbia Sportswear v. Seirus (S.D. Cal.)

In a trial concluded in September, a San Diego jury awarded our client Columbia Sportswear over $3 million, amounting to all of the profits the defendant, Seirus, made on its gloves that infringed Columbia’s design patent. The design patent is directed to a pattern for heat-reflective material used on outdoor clothing. The case is significant in that it is the first design patent case to go to trial since the Supreme Court’s ruling in Apple v. Samsung. In that case, the Supreme Court reversed long-standing precedent that one who sells an article of manufacture that bears a patented design is liable to the extent of all of the profits made from the sale of that article. The Supreme Court ruled that when a product has multiple component parts, and the design is applied only to a component, patentees are not necessarily entitled to the total profits of the product as sold, but may be liable only for the profits attributable to the design-bearing component.

In the present case, Seirus argued that only one component of its gloves—the lining fabric—infringed the design patent, and that profits should be based on that component, and not the total sales from the gloves. Our litigators, led by Nika Aldrich, argued several different theories of recovery to the jury, and the jury elected to award Seirus’s entire profits from the sales of the gloves to Columbia.

The case has taken an interesting turn in the past week, when Seirus informed Columbia it was going to seek an ex parte reexamination of the design patent. Columbia immediately filed for a TRO because Seirus had previously agreed in a Stipulated Judgment that the patent was valid. For that reason, this case is arguably different from other recent cases in which parties challenged the validity of patents at the Patent Office after the entry of judgment of no invalidity following a jury trial.  The district court granted the temporary restraining order the same day, ruling:

Columbia has demonstrated that it is likely to succeed on the merits. The parties’ consent judgment on the Design Patent’s validity is binding and likely precludes Seirus from initiating proceedings with the PTO. See Flex-Foot, Inc. v. CRP, Inc., 238 F.3d 1362 (Fed. Cir. 2001) (recognizing that the parties’ stipulation of validity gave rise to res judicata, barring subsequent challenges to patent validity).

The district court has indicated it will be issuing a scheduling order “regarding the issuance of a preliminary injunction.”

BASF Corp. v. Johnson Matthey Inc., Fed. Cir. Case 2016-1770 (November 20, 2017)

The Circuit reverses a determination of indefiniteness of a patent directed to catalytic converters for diesel engines, ruling that “effective to catalyze” and “effective for catalyzing” are sufficiently definite in functional terms to enable one with ordinary skill to determine the scope of the claims.

BASF sued Johnson Matthey for infringement of its patent directed to systems for performing catalytic conversion of nitrogen oxides (NOx) in an exhaust gas stream. As relevant here, the patent claims a partly-dual-layer arrangement of coatings on a substrate over which exhaust gas passes—a coat containing “a material composition B effective to catalyze selective catalytic reduction (SCR) of NOx”; and beneath part of that coat, a partial-substrate undercoat containing “a material composition A effective for catalyzing NH3 oxidation.” The district court held that the italicized phrases were indefinite.

When referring to compositions A and B, the specification includes various examples of how catalyst layers are prepared and how they perform under practical engine conditions in comparison to the prior art. Rather than explicitly defining the material compositions, the claims utilize functional language, specifically “effective,” to purportedly define them.  In other words, the claims recite a performance property the composition must display, rather than its actual composition. 

Under Nautilus, the question presented here is this: would the “composition . . . effective to catalyze” language, understood in light of the rest of the patent and the knowledge of the ordinary skilled artisan, have given a person of ordinary skill in the art a reasonably certain understanding of what compositions