United States Court of Appeals for the Federal Circuit ______________________

COLUMBIA SPORTSWEAR NORTH AMERICA, INC., Plaintiff-Appellant

v.

SEIRUS INNOVATIVE ACCESSORIES, INC., Defendant-Cross-Appellant ______________________

2021-2299, 2021-2338 ______________________

Appeals from the United States District Court for the Southern District of California in No. 3:17-cv-01781-HZ, Judge Marco A. Hernandez. ______________________

Decided: September 15, 2023 ______________________

NICHOLAS FREMONT ALDRICH, JR., Schwabe, William- son & Wyatt P.C., Portland, OR, argued for plaintiff-appel- lant. Also represented by SCOTT D. EADS, SARA KOBAK. Also argued by CHRISTOPHER V. CARANI, McAndrews, Held & Malloy, Ltd., Chicago, IL.

SETH MCCARTHY SPROUL, Fish & Richardson, P.C., San Diego, CA, argued for defendant-cross-appellant. Also rep- resented by CHRISTOPHER MARCHESE, JOHN WINSTON THORNBURGH. ______________________ Case: 21-2299 Document: 61 Page: 2 Filed: 09/15/2023

2 COLUMBIA SPORTSWEAR NORTH AMERICA, INC. v. SEIRUS INNOVATIVE ACCESSORIES, INC.

Before PROST, REYNA, and HUGHES, Circuit Judges. PROST, Circuit Judge. Columbia Sportswear North America, Inc. (“Colum- bia”) sued Seirus Innovative Accessories, Inc. (“Seirus”) for infringing U.S. Design Patent No. D657,093 (“the D’093 pa- tent”). After the district court granted summary judgment of infringement and a jury awarded Columbia $3,018,174 in damages, Seirus appealed to this court. In Columbia I, 1 we vacated the summary judgment of infringement and re- manded for further proceedings. On remand, a jury found that Seirus did not infringe. Columbia appeals, mainly challenging the jury instruc- tions. Seirus conditionally cross-appeals as to damages. For the reasons discussed below, we vacate the non-in- fringement judgment and remand for further proceedings. BACKGROUND I Columbia’s D’093 patent, titled “Heat Reflective Mate- rial,” claims “[t]he ornamental design of a heat reflective material, as shown and described” in various figures. D’093 patent, at [54], [57]. Figure 1, described as “an ele- vational view of a heat reflective material,” J.A. 4, is repro- duced below:

1 Columbia Sportswear N. Am., Inc. v. Seirus Inno- vative Accessories, Inc., 942 F.3d 1119 (Fed. Cir. 2019) (“Co- lumbia I”). Case: 21-2299 Document: 61 Page: 3 Filed: 09/15/2023

COLUMBIA SPORTSWEAR NORTH AMERICA, INC. v. 3 SEIRUS INNOVATIVE ACCESSORIES, INC.

J.A. 1704. Seirus markets and sells products (e.g., gloves) made with material that it calls HeatWave. An image of Heat- Wave material appears below:

Cross-Appellant’s Br. 17 (citing J.A. 3992). Case: 21-2299 Document: 61 Page: 4 Filed: 09/15/2023

4 COLUMBIA SPORTSWEAR NORTH AMERICA, INC. v. SEIRUS INNOVATIVE ACCESSORIES, INC.

II A Columbia sued Seirus in district court, 2 accusing Seirus of infringing the D’093 patent via its HeatWave products. Columbia sought both a construction of the D’093 pa- tent’s claim and summary judgment of infringement. The district court declined to construe the claim but granted summary judgment of infringement all the same. Colum- bia Sportswear N. Am., Inc. v. Seirus Innovative Accesso- ries, 202 F. Supp. 3d 1186, 1189 (D. Or. 2016) (“SJ Opinion”). The district court’s summary-judgment opinion began with the “ordinary observer” test for design-patent in- fringement, drawn from the Supreme Court’s Gorham de- cision: [I]f, in the eye of