Fish & Richardson P.C.

12390 El Camino Real

San Diego, CA 92130
858 678 5070 main
Seth M. Sproul
Principal
sproul@fr.com
August 23, 2019 858 678 4343 direct

Peter R. Marksteiner
Clerk of the Court
United States Court of Appeals
for the Federal Circuit
717 Madison Place NW
Washington, DC 20439

RE: Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, Inc.
USCA Fed. Cir. Nos. 18-1329, -1331, -1728

Dear Mr. Marksteiner:

Pursuant to Federal Circuit Rule 28(j), Seirus advises the Court about statements made
by Columbia in an office action response filed on August 19, 2019 in an Ex Parte
Reexamination of the D’093 design patent at issue here. These statements represent
pertinent and significant authority relevant to this appeal because they are inconsistent
with arguments made before this Court regarding infringement of the D’093 patent.

Responding to a prior art rejection in the Reexamination, Columbia stressed that even
small differences in each element “weigh strongly” when assessing the overall visual
impression of the D’093 design:

Patent Owner notes that the collective impact of a group of differences

(even if, taken individually, the differences are small) can be significant
when taken in the aggregate. Accordingly, no portions of the design
should be set aside as minor or insignificant; they all play a part in creating
the overall appearance of the design. Moreover, in simple designs with
few visual elements, the characteristics of each element weigh strongly in
the visual analysis of the whole. “A design is a unitary thing and all of its
portions are material in that they contribute to the appearance which
constitutes the design.” In re Blum, 54 C.C.P.A. 1231, 1234 (C.C.P.A.
1967).
Mr. Peter R. Marksteiner
August 23, 2019
Page 2

Exhibit A at 7.

This differs from what Columbia said regarding infringement of the D’093 patent in its
Yellow Brief (at 29-30), where it urged the Court to disregard any differences between
the D’093 patent and the accused products. (“Seirus focuses on details and argues there
are differences in the width of the HeatWave fabric lines. (Appx3151; Appx3168-3169.)
But the ordinary observer test looks to the “overall effect” of the “patented design in
its entirety,” not an assessment of isolated features. Crocs, Inc. v. Int’l Trade Com’n, 598
F.3d 1294, 1303 (Fed. Cir. 2010).”)

The same analytical standard should apply for infringement that Columbia is now asking
the PTO to apply to the prior art.

Very truly yours,

/s/ Seth M. Sproul

Seth M. Sproul

cc: All Counsel of Record

Attorney Docket No.: 106477-238943 Patent

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

Patent Under Reexamination: Examiner: Reickel, John E.

0657,093 Art Unit: 2914

Reexamination Control No.: 90/014, 113 Confirmation No.: 9957

Filed: March 13, 2018

For: HEAT REFLECTIVE MATERIAL

Mail Stop Amendment

Commissioner for Patents
PO Box 1450
Alexandria, VA 22313-1450

RESPONSE TO OFFICE ACTION

Dear Examiner Reickel:

In response to the Office Action mailed May 17, 2019, please reconsider the
merits of the above-identified patent under reexamination:

Remarks begin on page 2 of this paper.

Exhibit A
Page 1 of 23
 Remarks

Claim 1 is subject to reexamination and stands rejected.

Examiner Interview

Examiners Fox and Reickel are thanked for the time they provided to the
undersigned, Mr. Motley, and Mr. Carani, during the August 16, 2019, interview during
which the outstanding rejections were discussed. The Examiners' insights were helpful
in framing the present response. Patent Owner's record of the substance of the
interview is embodied in the remarks below.

Claim Rejections under 35 USC 112

Claim 1 was rejected under 35 USC 112. Respectfully, it is suggested that a
Section 112 rejection is improper under Patent Office Regulations.

The scope of a reexamination in an ex parte reexamination proceeding is stated

explicitly in 37 CFR 1.552 (a-c):

(a) Claims in an ex parte reexamination proceeding will be

examined on the basis of patents or printed publications and, with
respect to subject matter added or deleted in the reexamination
proceeding, on the basis of the requirements of 35 U.S. C. 112.
(b) Claims in an ex parte reexamination proceeding will not be
permitted to enlarge the scope of the claims of the patent.
(c) Issues other than those indicated in paragraphs (a) and (b) of
this section will not be resolved in a reexamination proceeding . ...

As clearly indicated in 37 CFR 1.552(a), in an ex parte reexamination

proceeding, claims are re-examined based on prior art pursuant to 35 USC 102 and
2
Attorney's Docket No.: 106477-238943
Reexamination Control No.: 90/014,113
Patent Under Reexamination: 0657,093

Exhibit A
Page 2 of 23
 103. Claims are only examined on the basis of the requirements of 35 USC 112 with
respect to subject matter added or deleted in the reexamination proceeding.

During this reexamination proceeding, no subject matter has been added or

deleted. Thus, there is no basis to reject the claim on 35 USC 112 grounds.

For the above reason, Patent Owner is not otherwise addressing the merits of
the 35 USC 112 rejections, and respectfully requests instead that the rejections be
withdrawn as exceeding the grounds of permissible review.

Claim Rejections under 35 USC 103(a)

The claim was rejected under 35 USC 103(a) over Throx Wavy Zebra Stripes
("Throx") in view of "Huge Collection of High Quality Patterns" as published in Vector
Diary ("Vector Diary"). The rejection is traversed in light of the remarks below.

I. Background of the Claimed Invention

The patent at issue covers a unique and inventive ornamental design for a heat-
reflective material - a three-dimensional structure. As explained by inventor Zach
Snyder, the term "heat reflective material" is generally known in the apparel industry to
refer to a base material with an applied layer of metallic foil or other similar metallic
elements. The purpose of a heat reflective material is to reflect heat-such as to the
user to increase the warmth of the user. (Snyder Decl.1J 7.) However, as explained in
a related utility patent (U.S. 8,424,119),

[h]eat reflective materials such as aluminum and mylar typically take the
form of a unitary solid film that is glued or otherwise attached to the
interior of a garment, such as a jacket. The purpose of this layer is to
inhibit thermal radiation by reflecting the body heat of the wearer and
thereby keeping the garment wearer warm in colder conditions. However,

Attorney's Docket No.: 106477-238943

Reexamination Control No.: 90/014, 113
Patent Under Reexamination: D657,093

Exhibit A
Page 3 of 23
 these heat reflective linings do not transfer moisture vapor or allow air
passage, thus they trap moisture near the body. Because the application
of a heat reflective material impedes the breathability and other functions
of the underlying base fabric, use of heat reflective materials during
physical activity causes the inside of a garment to become wet, thereby
causing discomfort and accelerating heat loss due to the increased heat
conductivity inherent in wet materials. Further, these heat reflective
coated materials impair the ability of the material to stretch, drape, or hang
in a desired fashion.

Thus, the material has a three-dimensional quality to it. As explained by Mr.

Snyder, in creating an ornamental design for heat reflective materials, the designer is
creating a design not for a two-dimensional context, but a three-dimensional context.
(Snyder Deel. ,I 12)

In the late 2000s, Patent Owner Columbia Sportswear invented a new

technology whereby heat reflective elements would be placed on a base material using
a discontinuous array resulting in a heat reflective material with only partial coverage of
the underlying base material. This would result in a garment that could both reflect heat
and retain the beneficial properties of the underlying base material. Columbia
Sportswear then set about to create a design for the heat reflective material-an
ornamental design for affixing the heat reflective elements onto the base material. As
explained by Mr. Snyder, such a project poses particular design challenges given the
three-dimensional nature of the material.

In the apparel industry, and more specifically with respect to outdoor

apparel/gear, it is difficult to create visual features that are acceptable to consumers and
that distinguish the apparel from others being sold. For example, most gloves are black,
and either structured with five fingers or as mittens. There are not a lot of options

Attorney's Docket No.: 106477-238943

Reexamination Control No.: 90/014, 113
Patent Under Reexamination: D657,093

Exhibit A
Page 4 of 23
available to the designer. This places a great deal of value on finding aesthetic
differences, or improvements, within the available options. (Snyder Deel. ,I 9.)

Designers are always concerned with communicating a message to the end user
through the design itself. Good design is about creating an emotional connection with
the user, so the user associates the designed product with certain qualities or features.
(Snyder Deel. il 10.)

Heat reflective materials are made with two layers-a base layer and a layer of
reflective material placed on top of that layer. The challenge is not one of merely
creating a two-dimensional graphic design, but rather an ornamental design for a
material having three dimensions. This poses a significant challenge-using an
ornamental design that can be implemented solely by layering two elements, the design
must convey to the user the beneficial features of heat reflectivity. (Snyder Deel. ,I 11.)

There are also other design challenges. For example, a heat reflective material
may be used in a wide variety of garments. Where the garments are small, however,
like gloves, the design must make its connection to the user in a very small area. The
portion of the inner fabric of a glove that is exposed to the consumer is very small. And
for ease of manufacturing and implementation into a wide variety of apparel, an ideal
design would have a repeating pattern.

Mr. Snyder set about to invent a design that could be used in this unique
application. During the inventive process, he tried to figure out how to convey to the
user of a heat reflective material the benefits that they would obtain from using that
material. In his declaration, he explains that he grew up in Tucson, Arizona, where it
gets extremely hot in the summer. He remembers from his childhood the mirages of
heat ripples created when heat rose off the ground. He experimented with the idea of
trying to represent those heat ripples or that disturbed air in a design that could be

Attorney's Docket No.: 106477-238943

Reexamination Control No.: 90/014, 113
Patent Under Reexamination: 0657,093

Exhibit A
Page 5 of 23
implemented with only two layers-a layer of metallic heat reflective elements overlaid
onto a base fabric. (Snyder Deel. 1J 13.)

The result was the claimed design in US 0657,093. As the design can be hard
to communicate, an enlargement was used to show the details of the design. In Figure
2, one of ordinary skill in the art, would understand several things about the '093 design,
including:

(1) the multi-layer design is three-dimensional,

(2) the layers have a contrasting appearance,
(3) the widths of the two contrasting layers are different, and
(4) the amplitude and frequency of the curves of the layers are uniform.

These design elements taken together yield a heat-reflective material that evokes
within the mind of the consumer the concept of heat rising. The '093 design thus
communicates warmth to a consumer and was intended to be used with respect to
outdoor apparel and gear for cold-weather applications, as shown in Figures 4-10 which
show exemplary environmental uses. Its design is repeatable and conveys its message
regardless of the size of the garment or how it is stitched inside. For example, even
with the small amount of the material that may be visible to the consumer on the inner
surface of a glove, the simplicity of the design succeeds in invoking the concept of heat
rising to the end consumer. (Snyder Deel. ,I 14.)

A. Patent Owner's claimed design is not rendered obvious under 35 U.S.C. §

103 because Throx is not a suitable primary reference

The claimed design stands rejected under 35 U.S.C. § 103 as allegedly

unpatentable over Throx Wavy Zebra Stripes ("Throx") in view of "Huge Collection of
High Quality Patterns" ("Vector Diary").

Attorney's Docket No.: 106477-238943

Reexamination Control No.: 90/014, 113
Patent Under Reexamination: D657,093

Exhibit A
Page 6 of 23
 Patent Owner submits that this combination does not render the claimed design
invalid under§ 103(a). See In re Rosen, 673 F.2d 388 (C.C.P .A.1982) (rejecting
obviousness argument where there was no primary reference in existence shown to be
"basically the same" as the claimed design). Specifically, Patent Owner respectfully
submits that Throx cannot serve as a proper§ 103 primary reference and consequently
cannot serve as the basis for rendering the claimed design invalid under § 103. Even if
Throx could serve as a valid primary reference (which it cannot) , it does not render the
claimed design obvious, alone or in combination with the Vector Diary secondary
reference.

As a preliminary matter, Patent Owner notes that the collective impact of a group
of differences (even if, taken individually, the differences are small) can be significant
when taken in the aggregate. Accordingly, no portions of the design should be set aside
as minor or insignificant; they all play a part in creating the overall appearance of the
design. Moreover, in simple designs with few visual elements, the characteristics of
each element weigh strongly in the visual analysis of the whole. "A design is a unitary
thing and all of its portions are material in that they contribute to the appearance which
constitutes the design. " In re Blum, 54 C.C.P.A. 1231 , 1234 (C.C.P.A. 1967).

In the present case, the visual differences between Patent Owner's '093 Design
and Throx prevent Throx from serving as a valid primary reference. To a hypothetical
observer conversant in the prior art, the collective effect of these visual differences is
significant.

Patent Owner respectfully notes that the Federal Circuit, its predecessor court,
and the Board have all steadfastly and stringently adhered to a "primary reference"
requirement for design patent obviousness: "there must be a reference, a something in
existence, the design characteristics of which are basically the same as the claimed

-7
Attorney's Docket No.: 106477-238943
Reexamination Control No.: 90/014, 113
Patent Under Reexamination : 0657,093

Exhibit A
Page 7 of 23
design in order to support a holding of obviousness." See In re Rosen, 673 F.2d 388,
391 (C.C .P.A. 1982) (rejecting obviousness argument where there was no primary
reference in existence shown to be "basically the same" as the claimed design);
Vanguard Identification Sys., Inc. v. Kappas, 407 F. App'x 479 (Fed . Cir. 2011)
(affirming a BPAI finding that enforced a strict adherence to the primary reference
requirement); Apple, Inc. v. Samsung Elecs. Co. , 678 F.3d 1314, 1330-31 (Fed. Cir.
201 2) (rejecting proffered primary references for failing to meet "basically the same"
standard). The policy reason behind strict enforcement of the primary reference
requirement is to guard against hindsight reconstruction (i.e., "Monday morning"
quarterbacking). See In re Borden, 90 F.3d 1570, 1574 (Fed . Cir. 1996) ("[A] finding of
obviousness cannot be based on selecting features from the prior art and assembling
them to form an article similar in appearance to the claimed design.").

Here, and as discussed below, once the binding "basically the same" standard is
faithfully applied , Throx cannot serve as a valid primary reference. The visual
differences between Throx and the Patented '093 Design lead to a different overall
visual impression. Further, even if improperly combined , Vector Diary fails to remedy all
of the deficiencies of Throx.

1. The Throx reference does not disclose a heat reflective material with a
three-dimensional structure.

First, the Throx reference fails to disclose a layered, three-dimensional structure ,

like that shown in the Patented '093 Design:

-8-
Attorney's Docket No.: 106477-238943
Reexamination Control No.: 90/014, 113
Patent Under Reexamination : D657 ,093

Exhibit A
Page 8 of 23
 FIG~ 2
Rather, the Throx reference discloses a simple two-dimensional design where the
white and black stripes are co-planar.

This visual difference contributes to a different overall visual impression. The

layered, three-dimensional structure of the Patented '093 Design is a fundamental
aspect of the claimed design. The absence of this fundamental aspect of the Patented
'093 Design in the Throx reference is sufficient to discard the Throx reference as a
proper primary reference.

2. The Throx Reference Does Not Disclose a Constrasting Appearance

Between Layers.

Attorney's Docket No.: 106477-238943

Reexamination Control No.: 90/014,113
Patent Under Reexamination: D657,093

Exhibit A
Page 9 of 23
 Second, the Throx reference does not teach a contrasting appearance of the
upper layer and lower layer. The Patented '093 Design expressly teaches that the
raised upper layer contrasts with the base layer. Indeed, as noted above, the Throx
reference (a two-dimensional design) does not teach layers, let alone the contrast in
appearance of the two layers.

3. The Throx Reference Does Not Teach a Difference in the Widths of the
Layers.

Third , Throx does not teach different widths of the visible portions of the upper
layer and the lower layer as taught in the Patented '093 Design. Indeed, as noted
above, Throx does not teach a three-dimensional structure at all.

In contrast, the Throx reference shows approximately a 1: 1 symmetry between

the white stripes and the black stripes.

This additional difference is sufficient to discard the Throx reference as a proper

primary reference.

4. Throx does not teach uniform amplitudes and frequencies.

Fourth, the Throx reference does not teach uniformity in the amplitude and
frequency of the curves of the layers. As the Examiner has noted in his May 17, 2019
Non-Final Office Action , the amplitude and frequency of the white and black curves of
the Throx reference are not uniform . This difference, while perhaps not significant on its
own to render the Throx reference an improper primary reference , contributes to the
different overall visual appearance when combined with the three other fundamental
differences noted above.

- 10 -
Attorney's Docket No. : 106477-238943
Reexamination Control No.: 90/014, 113
Patent Under Reexamination : 0657,093

Exhibit A
Page 10 of 23
 In view of at least these visual differences, the overall appearance of Throx
cannot be said to be "basically the sam e" as th e overall appearance of the Patented
'093 Design. Accordingly, Throx cannot serve as a valid primary reference . Without a
valid prim ary reference, Patent Owner respectfully submits that the obviousness
rejection should be withdrawn .

B. Even if Throx were a su itable primary reference (wh ich it is not), the
proposed combi nation is improper hi ndsight reconstruction and the
asserted vector diary secondary reference does not sufficiently re medy th e
defi ciencies of Throx

Although Patent Owner firmly believes that Throx is not a proper primary
reference, Patent Owner also wishes to briefly comment on the Office's proposed
combination of Throx with the Vector Diary secondary reference. In short, attempting to
recreate the Patented '093 Design by arbitrarily picking and choosing features from the
Vector Diary reference-where none of the asserted references can properly be
considered a primary Rosen reference-constitutes improper hindsight construction .
See In re Borden, 90 F.3d at 157 4 ("[A] finding of obviousness cannot be based on

-
selecting features from the prior art and assembling them to....f.GFfR-aA-erticle sirr lilarin
appearance to the claimed design. "). That is, Patent Owner respectfully submits that the
Office is attaining a reference that the Office considers to be "basically the same" as
Patent Owner's Claimed Design by first modifying Throx in view of Vector Diary, rather
than successfully establishing a primary reference.

Further, even if one were to improperly combine Throx and Vector Diary, the
combination would not successfully remedy all of the visual deficiencies of Throx. For
example, Vector Diary does not remedy deficiencies 1, 2, and 3 identified and
discussed above, namely:
- -- 11
Attorney's Docket No.: 106477-238943
Reexamination Control No.: 90/014, 113
Patent Unde r Reexa mination: D657 ,093

Exhibit A
Page 11 of 23
 (1) the multi-layer design is three-dimensional,
(2) the layers have a contrasting appearance, and
(3) the widths of the two contrasting layers are different.

As such, Patent Owner respectfully submits that this asserted combination does not
render the claimed design unpatentable.

In sum, there are distinct visual differences between the design disclosed in
Throx and the Patented '093 Design. Taking these differences together, the design in
Throx is not "basically the same" as the Patented '093 Design and cannot serve as a
primary reference under binding precedent. And, even if combined, Vector Diary fails to
remedy all of the visual deficiencies of Throx.

In light of the above remarks, Patent Owner respectfully submits that the
obviousness rejection under 35 U.S.C. § 103 is improper and kindly requests that it be
withdrawn.

II. Objective lndicia Demonstrate the Non-Obviousness of the Claimed Invention

In the event the above arguments are found unpersuasive, substantial real world
evidence further supports that Mr. Snyder's novel invention was not obvious.

A. Seirus copied the '093 Design

In 2010 Columbia Sportswear launched a line of heat reflective outdoor apparel

in which the heat reflective elements were applied in a discontinuous array of dots. In
2013, Seirus launched an independent line of heat reflective products to compete with
Columbia's products. But rather than copy Columbia's dots, Seirus adopted the
patented design, which became the centerpiece of the product line.

Attorney's Docket No.: 106477-238943

Reexamination Control No.: 90/014, 113
Patent Under Reexamination: 0657,093

Exhibit A
Page 12 of 23
 Seirus's fabric is shown below:

The United States District Court for the District of Oregon entered judgment that
Seirus's products infringe the '093 Design. (Kelly Deel. ,-r 4.)

B. Seirus heavily marketed the features of the '093 Design

Notably, Seirus not only adopted the patented design but then named its entire
product line after the design itself: Heatwave. (Snyder Deel. ,-r 16.) And although
Seirus, in most of its products, placed the heat reflective material on the innermost
surface of its products, facing the user, it emphasized the designed fabric in its
marketing materials.

Thus , although many of Seirus's glove products have multiple features, the
products are prominently marked and promoted as 'Heatwave' products 1f the gloves
include the Heatwave fabric. Seirus used the Heatwave technology as a top-line
differentiator distinguishing the Heatwave line of products. (Snyder Deel. ,-r 19.)
- 13 -
Attorney's Docket No.: 106477-238943
Reexamination Control No. : 90/014,113
Patent Und er Reexamin ati on: D657 ,093

Exhibit A
Page 13 of 23
 In an unusual move in the apparel industry, Seirus's marketing focused not on
the external appearance of the gloves, but rather on the inner lining bearing the
patented design. For example, the following image taken from Seirus's website uses
camera angles that are focused on the inside of the glove-the outside of the glove is
not as readily apparent:

(Snyder Deel. i120.)

Seirus's marketing conceptually links the designed heat-reflective material to the

product as an integrated whole. Seirus used the design to implement a heat-reflective
technology. Seirus then calls the products bearing the specially-designed material
'Heatwave' products (with the logo for 'Heatwave' also bearing the patented design),
thereby linking the ornamental design of the heat-reflective material with the function of
the product to create a connection for the consumer. The remaining text copy in the
above ad further makes this connection. (Snyder Deel. i121.)

Seirus's marketing materials associate the patented design and the Heatwave
name with the products made in whole or material part with the Heatwave material.
Even in Seirus's gloves where the lining is on the inside, Seirus repeatedly amplifies the
visibility of the HeatWaveheat reflective material by prominently incorporating the
ornamental design in its hangtags (see below), including a call-out to 'look inside' to
draw the consumer's attention to the Heatwave material.

Attorney's Docket No.: 106477-238943

Reexamination Control No.: 90/014, 113
Patent Under Reexamination: D657,093

Exhibit A
Page 14 of 23
 (Snyder Deel. 1J 22.)

Thus, when Seirus's black gloves are hanging on a "wall of gloves" in an outdoor
retail store, with this hangtag on the outside of the glove, the prominent marketing
message is not about the outer appearance of the glove, but rather on the inside of the
glove and the performance characteristics of the material bearing the patented design .
Seirus then connects this ornamental design with that material, repeatedly and
prominently using the ornamental design on the hangtag (including within the word
"Heatwave"), and using approximately 1/3 of the face of the hangtag to explain how the
ornamentally designed material reflects heat. (Snyder Deel. 1J 23.)

Notably, Seirus's marketing materials for its Heatwave products do not highlight
a premium leather exterior, buckles, waterproof membranes, or complex stitching - all
materials that Seirus contend are relevant to its products' value. The only promoted
aspect of the Heatwave products is the Heatwave material exhibiting the patented,
ornamental design. (Snyder Deel. 1J 25.)
- 15 -
Attorney's Docket No. : 106477-238943
Reexamination Control No.: 90/014,113
Patent Under Reexa minatio n: D657,093

Exhibit A
Page 15 of 23
 C. Seirus praised the Patented Design

Beyond the praise incident to its adoption and widespread use of the patented
design on heat reflective materials, Seirus, a direct competitor to Columbia Sportswear
for sales of heat reflective products, also praised the inventiveness of the patent by
stipulating that it was valid .

Specifically, Columbia Sportswear sued Seirus for infringing the 0 '093 Patent in
December 2013. The parties then litigated the 0 '093 Patent for a number of years .
Seirus was represented by patent litigation counsel at the large, esteemed, nationally
recognized law firm Troutman Sanders. By March 2016, Seirus recognized that the
~ was valid_:.nd stipulated to entry of judgmen~ st it in 1b94J.i:tited
States District Court for the District of Oregon that the patent was valid. In more than
two years of litigation, it never offered a reason why the patent was invalid-by the time
of its stipulation , it had not conjured a single piece of prior art it thought relevant to the
~ y_o,Ub.e_Q_§!ent. Instead, facing substantial liability exposure, it confessed that the
patent was valid-i.e. , that it was neither anticipated nor obvious over any other prior
art. With respect to the 0 '093 Patent, the case continued to a two-week trial in
September 2017 concerning the damages that were owed to Columbia for Seirus's
infringement.

Although the case was fiercely litigated (and would be litigated through an
expensive trial eighteen months later), Seirus recognized that validity of this patent was
not disputable. Thus Seirus, a "competitor[ and] infringer[] ha[s] indicated such
approval" for Mr. Snyder's unique and successful design invention. Id. Seirus has
admitted that the invention was patentable--worthy of protection by the United States
pursuant to the Patent Act. Higher praise for an invention from a staunch competitor
would be hard to muster.

- 16
Attorney's Docket No.: 106477-238943
Reexamination Control No.: 90/014, 113
Patent Under Reexa mination : D657 ,093

Exhibit A
Page 16 of 23
 It cannot be disputed that Seirus and Columbia Sportswear are direct
competitors for sales of garments with heat reflective materials on their inside surfaces.
Yet, as a competitor, Seirus adopted the same design that Mr. Snyder conceived and
patented several years prior. It not only adopted the design-it aggressively marketed
that design, turning it into an entire product line, name (Heatwave) and all. Seirus's
widespread adoption of the patented design is tantamount to an "extolling [of] the
virtues of [the] patent." Subtests of 'Nonobviousness': A Nontechnical Approach to
Patent Validity, 112 U. Pa. L. Rev. 1169 (1964).

Seirus's admissions and behavior in the face of liability exposure for infringement
is further evidence of the inventiveness of the patented design.

D. The Examiner must consider real world evidence before rendering an

opinion concerning obviousness

"Objective indicia of nonobviousness play a critical role in the obviousness

analysis. They are not just a cumulative or confirmatory part of the obviousness calculus
but constitute independent evidence of nonobviousness." Leo Pharms. Prods. Ltd. v.
Rea, 726 F.3d 1346, 1358 (Fed. Cir. 2013) (internal quotes and cites omitted).
"Objective indicia can be the most probative evidence of nonobviousness in the record,
and enables the court [and the Examiner] to avert the trap of hindsight." Id. Thus, "the
objective indicia of nonobviousness [can be] crucial in avoiding the trap of hindsight
when reviewing, what otherwise seems like, a combination of known elements." Id.
Such evidence "must always when present be considered en route to a determination of
obviousness." In re Cyclobenzaprine Hydrochloride Litig., 676 F.3d 1063, 1075 (Fed.
Cir. 2012). Such evidence "may often establish that an invention appearing to have
been obvious in light of the prior art was not." Transocean Offshore Deepwater v.
Maersk Drilling, 699 F.3d 1340, 1349 (Fed. Cir. 2012).

Attorney's Docket No.: 106477-238943

Reexamination Control No.: 90/014, 113
Patent Under Reexamination: D657,093

Exhibit A
Page 17 of 23
 This is as true in an inter partes reexamination as it is in a district court
proceeding. Leo Pharms, 726 F.3d at 1358. Indeed, the MPEP requires that the
Examiner consider "objective evidence" when present. MPEP § 2141; see also MPEP
§716.01(8) (Evidence traversing rejections must be considered by the Examiner
whenever present). Therefore, affidavits or declarations containing evidence of such
objective evidence or secondary considerations must be considered by the Examiner
before drawing a conclusion whether an invention is obvious or not. MPEP § 716.01 (a).
When reevaluating any obviousness determination in light of an applicant's rebuttal
evidence, the Examiner must "reconsider any initial obviousness determination in view
of the entire record." MPEP § 2141 (citing see, e.g., In re Piasecki, 745 F.2d 1468,
1472, 223 USPQ 785, 788 (Fed. Cir. 1984); In re Eli Lilly & Co., 902 F.2d 943, 945, 14
USPQ2d 1741, 1743 (Fed. Cir. 1990).

The fact that an invention has led to commercial success has long been
established as critical evidence tending to show that the invention was not obvious.
"Where ... it appears that the claims of the patent contain elements of novelty and
invention ... commercial success tends strongly to overcome the defense that what
was done was obvious to other persons of great skill shown to have been working in the
same field in an effort to accomplish the same objective." Otto v. Koppers Co., 246
F.2d 789, 799-800 (4th Cir. 1957); see also Graham v. John Deere Co., 383 U.S. 1, 17
(1966). "When a product attains a high degree of commercial success, there is a basis
for inferring that [attempts to the solution] have been made and have failed."' Campbell
Soup Co., 2018 WL 2084933, at *22 (P.T.A.B. 2018) (citing WBIP, 829 F.3d at 1337
(alterations in original) (quoting Merck & Co. v. Teva Pharm. USA, Inc., 395 F.3d 1364,
1376 (Fed. Cir. 2005)). "Demonstrating that an invention has commercial value, that it
is commercially successful, weighs in favor of its non-obviousness." Id.

Attorney's Docket No.: 106477-238943

Reexamination Control No.: 90/014, 113
Patent Under Reexamination: D657,093

Exhibit A
Page 18 of 23
 Likewise, industry praise has long been indicative of nonobviousness. "An
additional source of professional approval is statements of competitors bearing upon the
validity of the patented product. By extolling the virtues of a patent ... competitors or
infringers have indicated such approval." Note, Subtests of 'Nonobviousness': A
Nontechnical Approach to Patent Validity, 112 U. Pa. L. Rev. 1169 (1964) (cited in
Graham, 383 U.S. at 17).

E. A nexus must be presumed between the claim and the evidence

regarding the apparel produced and sold by Seirus

"For objective evidence of secondary considerations to be accorded substantial

weight, its proponent must establish a nexus between the evidence and the merits of
the claimed invention." In re Huai-Hung Kao, 639 F.3d 1057, 1067 (Fed. Cir. 2011).
Evidence that a patented feature contributes to the success or acclaim of a product will
establish a nexus. See Ecolochem, Inc. v. Southern Cal. Edison Co., 227 F.3d 1361,
1378 (Fed. Cir. 2000) (where "[t]he success was due to both [a feature] undisputedly not
covered by the claims, and to [a feature] undisputedly covered by the claims," invention
was nonobvious where challenger failed to "disprov[e] that the [patented feature]
contributed to the success of the invention .... "

"[T]here is a presumption of nexus for objective considerations when the

patentee shows that the asserted objective evidence is tied to a specific product and
that product is the invention disclosed and claimed in the patent." WBIP, 829 F.3d at
1329 (where claims were drawn to a "marine engine" incorporating a specific carbon
monoxide reduction technique, there was a presumption of nexus for evidence relating
to "marine engines" sold by accused infringer). See also World Bottling Cap, LLC v.
Crown Packaging Tech., Inc., IPR2015-01651, Paper 34 at 17 (P.T.A.B. Jan. 19, 2017)
(finding nexus upon showing "that the claimed invention is not a subcomponent of, but
rather the entirety of, the product sold"). This presumption applies equally to both

Attorney's Docket No.: 106477-238943

Reexamination Control No.: 90/014, 113
Patent Under Reexamination: D657 ,093

Exhibit A
Page 19 of 23
apparatus and method claims. Tee Air, Inc. v. Denso Mfg. Mich., Inc., 192 F.3d 1353,
1361 (Fed. Cir. 1999) ("A prima facie case of nexus is generally made out when ... the
thing (product or method) that is commercially successful is the invention disclosed and
claimed in the patent.").

It has already been established that the Heatwave products sold by Seirus,
include, in their entirety, the features present in the claimed design. The United States
District Court for the District of Oregon has already entered judgment that Seirus's
products infringe the patent. (Kelly Deel. ,I 4.) Mr. Snyder further explained that the
patented design fits seamlessly into Seirus's Heatwave fabric design. 1 (Snyder Deel.
,I 18.)

In case it is not noticeable at first blush, Fig. 2 of the '093 design patent is in the
center of the frame.

Further, Seirus deliberately chose this patented design in order to sell its
products, and it did so because it believed that this design would effectively convey the
abstract concept of heat rising. (Snyder Deel., ,I 17).

1 The Court held, adopting Federal Circuit law, that Seirus's use of logos interspersed in
its design as an indicator of source are of no moment.

Attorney's Docket No.: 106477-238943

Reexamination Control No.: 90/014,113
Patent Under Reexamination: 0657,093

Exhibit A
Page 20 of 23
 Thus, a clear nexus is present between the Heatwave products and the claimed
design. Any objective evidence submitted herewith concerning Seirus's Heatwave
products must be presumed to be directly relevant to the claimed design.

F. The Patented Design is commercially successful

The fact that the invented design has resulted in substantial commercial success
cannot reasonably be disputed. Seirus heavily marketed and emphasized the
ornamental design of its Heatwave Products. (Snyder Deel., ,m 20-23). "That Seirus
positions its Heatwave marketing to prominently highlight the ornamental design shows
that the Heatwave heat reflective material bearing the patented ornamental design
drives consumer demand for its Heatwave line of products." (Snyder Deel., ,r 24). Mr.
Snyder concluded that "[b]ased on the evidence I have seen, the ornamental design of
the heat reflective material in the Heatwave products is a primary factor responsible for
Seirus's commercial success." (Snyder Deel. ,r 26.)

Evidence was introduced at the trial in Columbia Sportswear North America, Inc.
v. Seirus Innovative Accessories, Inc., USDC SD CA, Case No. 3:17-cv-01781-HZ that
"Seirus's accused Heatwave products can be divided into two categories. First, Seirus
makes a number of products - including glove liners, socks, and hats - that are made
entirely from Heatwave fabric. I heard testimony that the products made entirely of
Heatwave fabric account for 21 % of Seirus's total Heatwave sales, earning gross
margins roughly 13% higher than the remainder of Seirus's Heatwave products." (Kelly
Deel. ,r 5.)

Additionally, "while Seirus's overall sales declined by 12% from 2015 to 2016,
sales of Heatwave products increased by about 50%." "Experts testified [at trial] that
Seirus's Heatwave products were the fastest growing product line for Seirus every year
since its introduction." "[W]itnesses and experts testified that, from 2014 to 2016, Seirus

Attorney's Docket No.: 106477-238943

Reexamination Control No.: 90/014,113
Patent Under Reexamination: D657,093

Exhibit A
Page 21 of 23
sold in excess of $6MM of Heatwave products." And, "in 2016, Seirus's sales of
Heatwave products were approximately $2.7MM, which was about 10% of Seirus's total
sales." (Kelly Dec1. ,r,r 7-10.)

Sales of entire products can be attributable to a single, patented component

where the patented component "drove demand for the entire product." VirnetX, Inc. v.
Cisco Sys., 767 F.3d 1308, 1329 (Fed. Cir. 2014); see a/so Callaghan v. Myers, 128
U.S. 617, 666 (1888) (the "value" of the item sold to the public derives from the
infringement); Elizabeth v. Pavement Co., 97 U.S. 126, 139 (1877) ("when the entire
profit of [an] ... undertaking results from the use of the invention, the patentee will be
entitled to recover the entire profits."). A patent holder can establish that a patented
feature drove demand for product sales by relying on the defendant's own marketing
materials "showing that the patented feature was important to the defendant's ability to
compete in the market." Interwoven, Inc. v. Vertical Computer Sys., No. CV-10-04645
RS, 2013 WL 3786633, at *10 (N.D. Cal. July 18, 2013); Fonar Corp. v. GE, 107 F.3d
1543, 1552-53 (Fed. Cir. 1997).

Here, Seirus's own marketing materials show that it "market[ed] the benefits of ...
using the invention," Bose Corp. v. JBL, Inc., 274 F.3d 1354, 1361 (Fed. Cir. 2001), and
that its marketing literature emphasized the importance of the patented feature. Fonar,
107 F. 3d at 1552-53. Thus, there is substantial evidence that the heat reflective
material bearing the patented design drove market demand for the patented products as
a whole.

The patented design was commercially successful, providing real world, objective
evidence that it was not obvious but rather the product of Mr. Snyder's creativity and
acumen as a highly experienced product designer.

Attorney's Docket No.: 106477-238943

Reexamination Control No.: 90/014, 113
Patent Under Reexamination: D657,093

Exhibit A
Page 22 of 23
Conclusion

For these and other reasons, the undersigned respectfully submits that the
claimed design is allowable over the references of record and requests withdrawal of
the rejections.

It is respectfully submitted that this patent under reexamination is in condition for

allowance. A Notice of Allowance is respectfully requested. If there are any questions,
the Examiner is invited to contact the undersigned at (503) 796-2844. Please charge
any shortages and credit overages to Deposit Account No. 500393.

Respectfully submitted,
SCHWABE, WILLIAMSON & VWATT, P.C.

Dated: August 19, 2019 /Steven J. Prewitt/

Steven J. Prewitt
Reg. No.45023
Pacwest Center, Suite 1900
1211 SW Fifth Avenue
Portland, Oregon 97204
Telephone: (503)222-9981

Attorney's Docket No.: 106477-238943

Reexamination Control No.: 90/014, 113
Patent Under Reexamination: D657,093

Exhibit A
Page 23 of 23
FORM 30. Certificate of Service Form 30
Rev. 03/16

UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT

CERTIFICATE OF SERVICE

I certify that I served a copy on counsel of record on August 23, 2019

by:

U.S. Mail

Fax

Hand

Electronic Means (by E-mail or CM/ECF)

Seth M. Sproul /s/ Seth M. Sproul

Name of Counsel Signature of Counsel

Law Firm Fish & Richardson PC

Address 12390 El Camino Real

City, State, Zip San Diego, CA 92130

Telephone Number (858) 678-5070

Fax Number (858) 678-5099

E-Mail Address sproul@fr.com

NOTE: For attorneys filing documents electronically, the name of the filer under whose log-in and
password a document is submitted must be preceded by an "/s/" and typed in the space where the
signature would otherwise appear. Graphic and other electronic signatures are discouraged.

Reset Fields