Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories

Filing 106

OPINION & ORDER: The Court construes the contested terms as stated. See 18-page opinion & order attached. Signed on 8/10/2016 by Judge Marco A. Hernandez. (mr)

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

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”), alleges that Defendant
Seirus Innovative Accessories, Inc. (“Seirus”), has infringed three of Columbia’s patents related
to a heat reflective lining for outdoor sporting gear, U.S. Patent Nos. 8,424,119 (the ’119 Patent),
8,453,270 (the ’270 Patent), and D657,093 (the ’D093 patent). On January 15, 2016, the parties
submitted a Joint Claim Construction chart identifying a number of disputed terms or phrases.
The parties then simultaneously filed opening claim construction briefs and responsive
memoranda. The Court held oral argument on May 27, 2016. Based on the parties’ evidence,
memoranda, and oral argument, the Court construes the disputed terms below.
OPINION & ORDER - 2

CLAIM CONSTRUCTION STANDARDS
Patent infringement analysis involves two steps. First, the court construes the asserted
patent claims. Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995) (en
banc). Second, the factfinder determines whether the accused product or method infringes the
asserted claim as construed. Id. The first step, claim construction, is a matter of law “exclusively
within the province of the court.” Markman v. Westview Instruments, Inc., 517 U.S. 370, 372
(1996); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). “It is a
bedrock principle of patent law that the claims of a patent define the invention to which the
patentee is entitled the right to exclude.” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir.
2005) (en banc) (quotation omitted). Patent claims must precisely define the relevant invention to
put both the public and competitors on notice of the claimed invention. See id.
To construe a patent claim, courts first look to the language of the claims in the patent
itself, the description in the patent’s specification, and the patent’s prosecution history, all of
which constitute a record “on which the public is entitled to rely.” Vitronics, 90 F.3d at 1583;
Dow Chem. Co. v. Sumitomo Chem. Co., 257 F.3d 1364, 1372 (Fed. Cir. 2001). In most cases,
the court should be able to resolve ambiguous claim terms by analyzing this intrinsic evidence.
See Phillips, 415 F.3d at 1313–14. The court considers extrinsic evidence only if the intrinsic
evidence is insufficient to resolve the ambiguity of a term. Vitronics, 90 F.3d at 1586.
“The actual words of the claim are the controlling focus.” Digital Biometrics, Inc. v.
Identix, Inc., 149 F.3d 1335, 1344 (Fed. Cir. 1998). “[T]he words of the a claim are generally
given their ordinary and customary meaning.” Phillips, 415 F.3d at 1312 (quotation omitted).
“[T]he ordinary and customary meaning of a claim term is the meaning that the term would have
to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the
OPINION & ORDER - 3

effective filing date of the patent application.” Id. at 1313. There is a “heavy presumption” that a
claim term carries its ordinary and customary meaning, and a party seeking to convince a court
that a term has some other meaning “must, at the very least,” point to statements in the written
description that “affect the patent’s scope.” Johnson Worldwide Assocs., Inc. v. Zebco Corp.,
175 F.3d 985, 989 (Fed. Cir. 1999) (quotation marks omitted). This may be accomplished if: (1)
“a different meaning is clearly and deliberately set forth in the intrinsic materials” of the patent
or (2) use of “the ordinary and accustomed meaning . . . would deprive the claim of clarity . . . .”
K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1363 (Fed. Cir. 1999). In making this assessment,
the court should use common sense and “the understanding of those of ordinary skill in the art”
of the patent at issue, unless the patent history supplies another meaning. Id. at 1365; Digital
Biometrics, 149 F.3d at 1344.
Beyond the plain language of the claims, the patent specification is always highly
relevant and often dispositive to the proper construction. Vitronics, 90 F.3d at 1582 (explaining
that the specification is “the single best guide to the meaning of a disputed term.”). The purpose
of the patent specification is to teach and enable those skilled in the art to make and use the
invention, along with the best method for doing so. Cyber Acoustics, LLC v. Belkin Int’l., Inc.,
No. 3:13–cv–01144–SI, 2014 WL 1225198 (D. Or. Mar. 24, 2014). The inventor can use the
specification to describe the invention in a number of ways, such as describing different
“embodiments” of the invention and by assigning particular meanings to specific claim language.
Metabolite Lab., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1360 (Fed. Cir. 2004);
Phillips, 415 F.3d at 1316. The embodiments serve as illustrative examples of the invention
claimed. Phillips, 415 F.3d at 1323 (“One of the best ways to teach a person of ordinary skill in
the art how to make and use the invention is to provide an example of how to practice the
OPINION & ORDER - 4

invention in a particular case.”). The inventor can also clarify that he or she intends the claim
language to carry a specific meaning different from its ordinary one. Id. In these cases, “the
inventor’s lexicography governs.” Id. at 1316.
Finally, the prosecution history, which contains the record of the proceedings before the
Patent and Trademark Office, informs the analysis into what a person skilled in the art would
understand the term to mean. Vitronics, 90 F.3d. at 1582–83. The prosecution history becomes
useful where it “provides evidence of how the PTO and the inventor understood the patent.”
Phillips, 415 F.3d at 1317. However, this evidence is less valuable because it represents an
“ongoing negotiation” between the inventor and the PTO. Id. The final result of that negotiation,
the patent itself, provides better evidence of the claim’s intended meanings at the time the patent
issued. Id.; see also Hangartner v. Intel Corp., No. 3:14-CV-00141-MO, 2014 WL 7228992, at
*2 (D. Or. Dec. 17, 2014).
DISCUSSION
I.

Background & Overview of Patents
Columbia’s patents asserted here relate to heat reflective fabrics used in body gear—

athletic or performance clothing a person might wear while, for example, skiing in the Cascade
Mountains, trail running, or even walking the dog. Prior to the invention, it was well-known that
high performance fabrics like polyester could be incorporated into body gear to increase
breathability and moisture wicking capabilities. It was also known that thin reflective material,
such as a mylar space blanket, could reflect body heat back to the wearer to increase warmth
without adding bulk. But merely lining a jacket made of high performance material with a sheet
of mylar is not desirable because the jacket would lose its breathability and moisture wicking

OPINION & ORDER - 5

capabilities, and the wearer would inevitably become clammy and uncomfortable. Moreover, the
mylar sheeting would not stretch or drape in the same way the fabric would.
The patented technology addresses those problems by affixing reflective elements to the
base fabric using only partial coverage in a certain ratio. Specifically, the inventor found that if
between 30 percent and 70 percent of the base fabric was exposed between the heat reflective
elements, the resulting fabric would effectively reflect heat while preserving the moisturewicking or other desired properties of the base fabric. This patented invention formed the basis
of Columbia’s “Omni Heat” line of products. The abstracts describe the invention as follows:
Embodiments of the present disclosure relate generally to body gear having
designed performance characteristics, and in particular to methods and
apparatuses that utilize an array of heat managing elements coupled to a base
material to direct body heat while also maintaining the desired transfer properties
of the base material. In some embodiments, the heat managing material elements
include heat management elements that reflect heat or conduct heat, and may be
directed towards the body of a user or away from the body of the user.
’119 patent, col. 1, ll. 25–31; ’270 patent, col. 1, ll. 25–31.
Seirus sells its own brand of outdoor gear with a breathable, heat reflective material it
calls “HeatWave.” Columbia alleges that Seirus’s HeatWave line of products infringes on three
of Columbia’s patents—the ’119 and ’270 patents (collectively the “utility patents”), and the
’D093 patent. The ’119 is a continuation application of the ’270 patent, so the patents share an
abstract, background, and specifications. Aldrich Decl. Exs. A and B, ECF 74-1. Both utility
patents are titled “Patterned Heat Management Material.” The ’D093 patent is a design patent
entitled “Heat Reflective Material” which claims “the ornamental design of a heat reflective
material” and depicts the following pattern:

OPINION & ORDER - 6

’D093 patent; Aldrich Decl. Ex. C, ECF 74-1.
Columbia asserts that Seirus infringes the following claims:




Claims 2, 16, and 23 of the ’119 patent;
Claims 2, and 23 of the ’270 patent;
Claim 1 of the ’D0093 patent.

Joint Claim Construction and Prehearing Statement at 2, ECF 67 (“Joint Statement”).1 Claim 1 of
the ’119 patent recites:
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;
one or more heat-directing elements, each coupled to a first side of a base
material, the one or more 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
surface area ratio of heat-directing elements to base material permits the base
material to retain partial performance of the transfer property.

Although Columbia originally asserted that Seirus infringed Claim 22 of both the ’119 and ’270 patents,
during the Markman briefing, Columbia amended its infringement contentions and withdrew claim 22 of
both patents. Pl. Resp. at 1, ECF 87.
1

OPINION & ORDER - 7

’119 patent, col. 8, ll. 10–22. Claim 2 of the ’119 patent, which depends from claim 1, adds that
the heat-directing elements are on the “innermost surface” of the “innermost layer of the body
gear”:
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 one or more heat-directing elements are positioned on the
innermost surface to direct heat towards the body of a body gear user.
’119 patent, col. 8, ll. 23–27.
Claim 15 and 16 of the ‘119 patent are method claims and recite:
15. A method of making a heat management body gear material, comprising:
coupling one or more heat-directing elements to a first side of a base material
having a transfer functionality that is adapted to allow, impede, and/or restrict
passage of a natural element through the base material, the one or more heatdirecting elements being positioned to direct heat in a desired direction,
wherein coupling the one or more heat-directing elements comprises coupling
one or more heat-directing elements of a size and spacing to cover from about
30% to about 70% of the base material;
pairing the heat management body gear material with a piece of body gear;
providing, with the material, body heat management and base material
functionality.
16. The method of claim 15, wherein the base material further provides insulating
properties, and wherein the one or more heat-directing elements reflect heat
toward a body of a user.
’119 patent, col. 8, ll. 66–67; col 9, ll. 1–16.
Claims 20 and 23 of the ’119 patent recite:
20. A heat management material adapted for use with body gear, comprising:
a base material having one or more properties of breathability, moisture vapor
permeability, air permeability, or moisture wicking;

OPINION & ORDER - 8

one or more heat-reflective elements, wherein each of the one or more heatreflective elements is coupled to a first side of the base material, the one or
more heat-reflective elements being positioned to reflect 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 surface area ratio of heat-directing
elements to base material preserves partial performance of the one or more
properties of the base material.
...
23. The heat-management material of claim 20, wherein portions of the base
material are exposed and not covered by the one or more heat-directing
elements.
’119 patent, col. 10, ll. 1–26.
The asserted claims from the ’270 patent are similar to those in the ’119 patent, except
the ’270 patent claims a “discontinuous array of discrete heat-directing elements”:
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 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.
’270 patent, col. 8, ll. 8–26.

OPINION & ORDER - 9

Claim 23 of the ’270 patent recites:
23. 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 heat-directing elements, each 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,
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.
’270 patent, col. 9, ll. 26–30; col. 10, ll. 1–14.
II.

Claim Construction
The parties agree on the construction of the following four claim terms or phrases:


“surface area ratio of heat-directing elements to base material” means “the
amount of surface area of a side of the base material that is covered by the
heat directing elements divided by the total surface area of the side of the base
material onto which the elements are attached.” ’119 Patent, Claim 2, 16, 23;
’270 Patent, Claim 2, 23.



“pairing the heat management body gear material with a piece of body gear”
means “using the heat management material with other components to form a
piece of body gear. ” ’119 Patent, Claim 16.



“uniformly-sized” means “the same size.” ’270 Patent, Claim 22.



“heat” means “heat seen as a form of energy that may be transferred by
conduction, convection or radiation.” ’119 Patent, Claims 2, 16, 23; ’270
Patent, Claims 2, 23.

Joint Statement at 2–3.

OPINION & ORDER - 10

The parties submitted a number of disputed terms for the Court to construe, which can be
organized into the following categories:






“Adapted” terms;
“Heat Management” terms;
“Heat Directing” or “Heat Reflecting” terms;
“Discontinuous Array”;
Construction of Design Patent ’D093.

Each category is addressed below.
a.

“Adapted” terms

The parties seek construction of the terms “adapted to” or “adapted for.” ’119 patent,
claims 2, 16, 23; ’270 patent, claims 2, 23. Further, the parties ask for a construction of those
terms as they appear in specific claims: “adapted for use with body gear,” ’119 patent, claims 2,
23; ’270 patent claims 2, 23, and “adapted to allow, impede, and/or restrict passage.” ’119
patent, claims 2, 16; ’270 patent, claims 2, 23. Seirus asserts that “adapted to” or “adapted for”
should be construed as the broader concept of “capable of,” or as a specific example,
“[something that is] capable of being incorporated into body gear.” Joint Statement at 3–4.
Columbia proposes a narrower construction of “suited by design for,” or “suited by designed for
use with body gear.” Id.
“[T]he phrase ‘adapted to’ is frequently used to mean ‘made to,’ ‘designed to,’ or
‘configured to,’ but it can also be used in a broader sense to mean ‘capable of’ or ‘suitable for.’ ”
Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012). The way
“adapted to” or “adapted for” is used in the ’119 and the ’270 patents supports the narrower
construction of “suited by design to” or “suited by design for.”
The ’119 and ’270 patents disclose a specially designed fabric that combines a base
fabric specifically chosen for its properties (whether moisture wicking, drape, or the like) with a
OPINION & ORDER - 11

heat reflective material to create a new fabric that combines the desired properties of both
component materials. See ’119 col. 1, ll. 23–28 (disclosing “a fabric . . . used for body gear . . .
having designed performance characteristics,” specifically combining a “pattern of heat
management/directing elements” with a “base fabric to manage heat . . . while maintaining the
desired properties of the base fabric.”). It is not, as Serius’s proposed construction would
suggest, a happy accident that the invention is “capable” of both directing heat and being
incorporated into body gear. If that were true, then the patent would potentially claim the very
problem it purported to solve. As the patents explain, a sheet of heat reflective materials such as
aluminum and mylar, though capable of being incorporated into body gear, is not suited by
design for such a purpose because it would “impede[] the breathability and other functions of the
underlying base fabric,” and actually “accelerat[e] heat loss due to the increased heat
conductivity inherent in wet materials.” ’270 Patent, col. 1, ll. 40–45. The proper understanding
of “adapted for” or “adapted to” in the asserted patents does not incorporate the broader sense of
mere capability.
Accordingly, the Court construes the terms as follows:




b.

“adapted to” or “adapted for” means “suited by design to” or “suited by
design for”;
“adapted for use with body gear” means “suited by design for use with body
gear”;
“adapted to allow, impede, and/or restrict passage” means “suited by design to
allow, impede, and/or restrict passage.”

“Heat Management” terms

The parties also seek construction of the terms “heat management material,” 119 patent,
claims 2, 23; ’270 patent, claims 2, 23, “heat management body gear material,” 119 patent,
claims 16, and “body heat management.” 119 patent, claims 2, 16, 23; ’270 patent, claims 2, 23.
OPINION & ORDER - 12

Seirus asserts that the Court should construe the “heat management” terms as encompassing the
mere “ability to affect the loss or increase of heat.” Joint Statement at 3. Columbia argues that
Seirus’s proposed construction improperly writes mere “capability” into the claims and counters
with a more narrow construction of a “textile material designed to direct heat.” Id.
The Court declines to further construe the term “management” because a person of
ordinary skill in the art would understand the term to have a plain and ordinary meaning, and
nothing in the specification indicates the term has any other meaning. The concept of “directing
heat,” as Columbia proposes, is adequately captured by other language in the claims. See ’119
patent, col. 10, ll. 1–10 (reciting “[a] heat management material . . . comprising: a base material .
. . [and] one or more heat-reflective elements . . . positioned to reflect heat in a desired
direction.”). And Seirus’s attempt to import the broad concept of mere “capability” is not
supported by a reading of the patents’ claims in context. Further construction of “management”
simply is not necessary as the meaning of the term is apparent by reading the claims and
specification. Encap LLC v. Oldcastle Retail Inc., No. 11-C-808, 2012 WL 2339095, at *9 (E.D.
Wis. June 19, 2012) (“Claim construction is not intended to allow for needless substitution of
more complicated language for terms easily understood by a lay jury.”).
c.

“Heat Directing” or “Reflecting” Elements

The parties ask the Court to construe the following terms: “heat directing elements,” ’119
patent, claims 2, 16, 23; ’270 patent, claims 2, 23, “direct heat,” ’119 patent, claims 2, 16, 23;
’270 patent, claims 2, 23, “heat-reflective elements,” ’119 patent, claim 23, and “reflect heat,
’119 patent, claim 23; ’270 patent, claim 23. Columbia offers constructions where “direct” or
“reflect” essentially means to “alter the direction” of heat. Joint Statement at 4. The only

OPINION & ORDER - 13

differences between parties’ proposed constructions is that Seirus again attempts to insert the
concept of “capability” and also asserts that “heat” should be construed as “heat flow.” Id.
For the same reasons stated previously, the Court declines to construe these terms to
include the concept of capability. The patents, when read in context, do not support such a broad
reading. Secondly, the Court declines to further construe the word “heat,” because offering a
more complex definition of such a simple and well-understood concept would not be helpful to
the jury. Encap LLC, 2012 WL 2339095 at *9.
Accordingly, the Court construes the terms as follows:





“direct heat” means “alter the direction of heat;”
“heat-directing elements” means “elements that alter the direction of heat;”
“reflect heat” means “alter the direction of heat by reflection;” and
“heat-reflecting elements” means “elements that alter the direction of heat by
reflection.”

d. “Discontinuous Array”
The parties seek construction of the terms “discontinuous array” and “discontinuous array
of uniformly-sized heat reflective elements.” ’270 patent, claims 2, 23. Seirus proposes the terms
be construed as a “set of [something] that are not connected (i.e. do not touch), and further
asserts that “uniformly-sized” should be construed as meaning “are all the same size.” Joint
Statement at 5. Columbia proposes that “discontinuous array” should be construed as “an
arrangement of multiple, discrete elements, whereby some of the base fabric is exposed between
adjacent elements,” and that further construction of “uniformly-sized” is not necessary. Id.
Seirus’s construction purports to rely on the “plain and ordinary meaning of the term.”
Def. Brief at 25, ECF 70. Columbia relies on the patent’s specification to support its proposed
construction. The specification describes the invention and provides some further clarification
about the arrangement of the heat-directing elements:
OPINION & ORDER - 14

In various embodiments a material for body gear is disclosed that may use a
pattern of heat management material elements coupled to a base fabric to manage,
for example, body heat by directing the heat towards or away from the body as
desired, while still maintaining the desired transfer properties of the base fabric.
For example . . . in one embodiment, a plurality of heat management or heat
directing elements . . . may be disposed on a base fabric . . . in a generally noncontinuous array, whereby some of the base fabric is exposed between adjacent
heat management elements. The heat directing function of the heat management
elements may be generally towards the body through reflectivity or away from the
body through conduction and/or radiation or other heat transfer property.
’270 patent, col. 3, ll. 27–40 (emphasis added). Columbia also provided a portion of the patent’s
prosecution history to support its proposed construction. As initially filed, the ’270 patent recited
an “array,” but did not include the term “continuous.” The examiner rejected claim 1 of the ’270
patent because a prior patent anticipated an “array of heat directing elements” that were
“coupled” to a base material. Aldrich Decl. Ex. G at 2–3, ECF 74-2. In response, the applicant
amended claim 1 to recite “a discontinuous array” of heat directing elements, and explained the
distinction:
The [prior patent] fails to teach or suggest “a discontinuous array of discrete heatdirecting elements, each independently coupled to a first side of a base material,”
. . . . Rather, the [prior] patent teaches a continuous, laminated, reflective sheet
that is perforated with fiber wadding. Thus, the laminated sheet provides a
continuous, perforated surface, rather than a discontinuous array of discrete heatdirecting elements that allow the base material to retain its desired properties. . . .
The laminated sheets of the [prior] patent cannot provide the breathability, drape,
stretch, etc. afforded by the discrete elements of the claimed invention.
Aldrich Decl. Ex. H at 8–9.
The specification’s description of the “discontinuous array” is particularly convincing
evidence of the term’s meaning. Trustees of Columbia Univ. in City of New York v. Symantec
Corp., 811 F.3d 1359, 1364 (Fed. Cir. 2016) (“a claim term may be clearly redefined without an
OPINION & ORDER - 15

explicit statement of redefinition and even when guidance is not provided in explicit definitional
format, the specification may define claim terms by implication such that the meaning may be
found in or ascertained by a reading of the patent documents.”) (citation and quotation marks
omitted).
Based on the claim language, specification, and prosecution history, the Court adopts
Columbia’s proposed construction:


“discontinuous array” means “an arrangement of multiple, [discrete heatdirecting elements], whereby some of the base fabric is exposed between
adjacent elements.”

The bracketed terms are not part of the Court’s construction of the term, but are simply offered to
provide context for the construed term as it is inserted into the claims.
Finally, the Court notes that “uniformly sized” only appears in Claim 22, and Columbia
has withdrawn its infringement contention in regards to that claim. Pl. Resp. at 1, ECF 87.
Moreover, the parties’ Joint Statement indicated that the parties had agreed that “uniformlysized” meant “the same size.” Joint Statement at 3. Accordingly, further construction by the
Court as to that term is not necessary.
e. ’D093 Patent
The parties also ask the Court to construe the ’D093 design patent by providing a
“detailed verbal description of the claimed design.” Egyptian Goddess, Inc. v. Swisa, Inc., 543
F.3d 665, 679 (Fed. Cir. 2008). Columbia offers the following construction:
A repeating pattern of adjacent wavy lines of contrasting colors on a material
designed to reflect heat, without regard to (i) any trade names or logos in the
pattern, (ii) orientation of the pattern, and (iii) the choices of the colors used.
Joint Statement at 5. Seirus offers the following construction:

OPINION & ORDER - 16

The ornamental aspects of an uninterrupted pattern of wave shaped elements as
shown and described.
Id.
The Court declines to construe the ’D093 patent with a detailed verbal description. “As
the Supreme Court has recognized, a design is better represented by an illustration ‘than it could
be by any description and a description would probably not be intelligible without the
illustration.’ ” Egyptian Goddess , 543 F.3d at 679 (quoting Dobson v. Dornan, 118 U.S. 10, 14
(1886)). “Given the recognized difficulties entailed in trying to describe a design in words, 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.” Id. The Court here
follows that preferable course.
As the parties well know, Columbia has filed a motion for partial summary judgment
regarding the ’D093 patent. Pl. Motion for Partial Summary Judgement, ECF 75. In resolving
that motion, the Court will explore the legal rules underlying the parties’ proposed constructions
of the ’D093 patent. Rather than analyzing the parties’ summary judgment arguments into this
claim construction Opinion & Order, the Court will address those issues in a separate Opinion &
Order and incorporate the analysis of the proper scope of the ’D093 patent into jury instructions.
//
//
//
//
//
//
//
OPINION & ORDER - 17

CONCLUSION
The Court construes the contested terms as stated.

IT IS SO ORDERED

Dated this

day of _____________________, 2016.

MARCO A. HERNÁNDEZ
United States District Judge

OPINION & ORDER - 18