Nordock Pretrial Report

IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF WISCONSIN NORDOCK, INC. Plaintiff, v. SYSTEMS, INC.
Defendant. ) ) ) ) ) ) ) ) )
CIVIL ACTION: 11-CV-0118 District Judge Rudolph T. Randa
Magistrate Judge William E Callahan
PLAINTIFF'S FINAL PRETRIAL REPORT Pursuant to Eastern District of Wisconsin Local Rule 16(c), Plaintiff, Nordock, Inc. (herein Plaintiff or Nordock) hereby files its Pretrial Report. A. SUMMARY OF CASE Nordock was founded in 2001 and is a relative newcomer to the established dock leveler industry an industry dominated by three manufacturers (i.e., Rite-Hite, 4Front Engineered Solutions, Inc. and Systems, Inc. "Systems"). Although a variety of manufacturers sold a variety of dock levelers throughout the United States, Nordock developed a distinctive front end design with a lip, lug and header plate arrangement not previously sold in the United States. Many dock leveler consumers recognize Nordocks distinctive front end design, much like many automobile consumers recognize the distinctive front end of a particular automobile. Nordock obtained U.S. Patent No. D579,754 (the 754 Design Patent) for its distinctive front end design. Although the 754 Design Patent issued November 4, 2008, this design patent receives the benefit of a December 23, 2002 filing date for Nordocks original U.S. patent application disclosing the distinctive front end lip, lug and header plate design. Systems does not dispute the December 23, 2002 priority date of the 754 Design Patent.
1 Case 2:11-cv-00118-RTR Filed 02/18/13 Page 1 of 12 Document 128
This litigation arises from Systems unabashed adoption of Nordocks proprietary and patented dock leveler front end design. Although Systems had a 40-year history of making levelers with a front end piano hinge design, in early 2005 Systems obtained a copy of Nordocks original patent disclosing its new front end design, and in October 2005 started selling dock levelers with a highly similar front end lip, lug and header plate design (Accused Leveler). After Nordocks 754 Design Patent issued on November 4, 2008, and prior to filing this litigation, Nordock advised Systems of its 754 Design Patent, and tried to persuade Systems to modify its Accused Levelers starting May 19, 2009. Nordock sent Systems letters advising it of the 754 Design Patent, and addressing Systems assertions that the 754 Design Patent was invalid. These efforts went unheeded. Systems has stalwartly refused to make any changes to its Accused Levelers, and maintains that the patent is invalid, unenforceable and not infringed. No other loading dock manufacturer has followed Systems down this path. Under U.S. law, Nordocks 754 Design Patent is presumed valid unless Systems proves otherwise by clear and convincing evidence. Systems simply refuses to consider the wide variety of dock leveler front end designs that demonstrate that the overall appearance of Nordocks front end design of the 754 Patent is ornamental, and not de jure functional. Systems also fails to identify a primary reference necessary to invalidate a U.S. design patent. The various alternate designs and the high degree of similarity between the 754 Design Patent and Systems Accused Leveler render infringement undeniable. Systems unfair competition is equally undeniable. In 2005/2006, without Nordocks authorization or consent, Systems adopted Nordocks front end design trade dress for Systems Accused Levelers. The high degree of similarity between Nordocks front end design and Systems front end design, combined with the fact that the goods are sold in the same channels of
trade to identical consumers, creates a likelihood of confusion by dock leveler consumers. Moreover, Systems is using Nordocks front end design trade dress on its lower end levelers, which misleads consumers to think they are obtaining a higher end leveler of the type sold by Nordock when in fact they are obtaining a lower end Systems leveler. Prior to Systems first sale of its Accused Levelers, Nordock had, through its continuous sale of dock levelers incorporating its distinctive front end design, acquired product configuration trade dress rights to this design as dock leveler consumers had come to recognize that design as indicating the source of the leveler as made by Nordock, endorsed or sponsored by Nordock, or associated with Nordock. Notwithstanding, these product configuration trade dress rights, Systems adopted a confusingly similar dock leveler front end design. B. STATEMENT OF ISSUES This is an action for patent infringement under 35 U.S.C. 271 (Count I), federal unfair competition under 15 U.S.C. 1125 (Count II), common law unfair competition (Count III), and unfair methods of competition or unfair deceptive acts or practices under Wisconsin Statute 100.18 and 100.20 (Count IV) against Systems, Inc. (Systems). Discovery is closed. Under patent law, Nordocks 754 Design Patent is presumed valid unless Systems proves otherwise by clear and convincing evidence. Systems wildly asserts that the 754 Design Patent is invalid for obviousness, anticipation or lack of ornamentation. To date, Systems has failed to meet even the threshold step necessary to assert the invalidity of the 754 Design Patent based on anticipation or obviousness. To date, Systems has not identified a primary reference upon which it could even begin to make an invalidity assertion, let alone prove it by clear and convincing evidence. As explained in Nordocks Summary Judgment motion, Systems has failed meaningfully respond to Nordocks
Interrogatory Nos. 15 and 16, and has not identified a primary reference or the date it learned of that primary reference. Systems asserted the 754 Design Patent is invalid based on Crawford and Combursa references that allegedly constitute prior are that disclose Nordocks claimed deign. However, Systems failed to show that either reference was published prior to December 23, 2002. In fact, Systems failed to identify any publication date for these references. Accordingly, the Crawford and Combursa references are not prior are that can be used to assert the invalidity of the 754 Design Patent. Systems attempts to overcome its Crawford and Combursa publication date shorfalling by throwing Norbert Hahn under the bus and having him testify that he saw a Hafa leveler with a front end design that looks similar to the Crawford leveler at a Hanover, Germany trade show in the mid-1990s. According to Systems, his return to the United States constitutes a basis for invalidating the 754 Design Patent. Yet, when questioned at his deposition, Mr. Hahn said he was not aware of any brochure to substantiate what he recalls seeing in Hanover about 20 years ago, and could not identify anyone to corroborate the appearance of the front end of that leveler, or that such a leveler even existed. Mr. Hahn was also not able to remember or describe the details of the design he saw in Hanover, and was unable to draw a perspective or front view of the front end design he saw in Hanover. Mr. Hahn also stated he has been a friend of Mike Pilgraim, a shareholder of Systems, for many years, that Mr. Pilgrim asked him for his knee jerk thoughts about the 754 Design Patent, and that he was surprised that Systems listed him as a witness in this case. Systems relies on its asserted technical expert, Patent Attorney Adam Brookman, to assert the 754 Design Patent is invalid because the claimed design lacks ornamentation.
Systems reliance on Brookman is flawed for several reasons. First, the Federal Circuit has stated that allowing a Patent Attorney (with experience similar to Brookman) to testify about the validity or infringement of a patent is reversible error. Second, Brookman himself is a listed co-inventor of two cutting board design patents that clearly contradict his opinion that the 754 Design Patent lacks ornamentation. According to Brookman, the only possible feature other than the shape of a single small groove in an edge of the cutting board is the rounded corners of the board. Yet, notwithstanding his years of experience as a patent attorney, he signed a declaration attesting that these two cutting board designs contain sufficient ornamentation for design patent protection. Moreover, Brookman stated under oath that the advertising brochures lauding the benefits of the groove in the cutting board do not necessarily invalidate these cutting board design patents. This flatly contradicts Brookmans opinion that the 754 Design Patent is invalid for lack of ornamentation because Nordocks brochures state a benefit of using a header plate to reinfocce the underside of the deck of a dock leveler. Third, Brookman admits his June 20, 2012 Report fails to mention Chapter 1500 Design Patents of the Manual of Patent Examining Procedure (MPEP), which is used by the U.S. Patent & Trademark Office Examiners to review the allowability of design patent applications. Brookman also admits patent examiners are considered persons of ordinary skill in the art, and that they are presumed to have done their job properly. Notwithstanding these presumptions, Brookman admits he only reviewed the very same references listed on the cover and page 2 of the 754 Design Patent, and that each of these references were already considered by the U.S. Patent & Trademark Office prior to its allowance of the 754 Design Patent.
Fourth, Brookman improperly asserts that Claims 36-41 of a co-pending parent utility patent application shows the 754 Design Patent is invalid for lack of ornamentation. This allegation is without merit and contradicts Brookmans own practice. MPEP clearly states examiners are to consider parent patents when reviewing a design patent. Brookman admits that the parent patents and applications are listed in the first sentence of the application for the 754 Design Patent, and that he has no evidence that the examiner did not read this sentence or do her job properly to support his paid opinion that the patent is invalid due to Claims 36-41. Brookman admits that many ornamental features shown in the 754 Design Patent are not required by Claims 36-41. Brookmans own practice also contradicts his opinion. Bookman has obtained design patent protection for a napkin holder based on a co-pending parent utility patent showing describing and claiming the same napkin holder. Fifth, Brookman admits the deck and deck beams shown in the 754 Design Patent are in dotted lines, and thus are not part of the claimed design. Yet Brookmans opinion finds that an admittedly unclear statement in the specification of the co-pending patent utility application regarding a benefit of using a header plate is to reinforce the deck renders the 754 Design Patent invalid for lack of ornamentation. Brookman also fails to provide any reason why the Patent Examiner would not have considered this and the fact that the deck is shown in dotted lines, particularly given MPEP 1504.01(c). Pages 1-3 and 5 of the Examiners October 31, 2007 Office Action refer to Application No. 11/179,941 and acknowledges Nordocks claim to priority. In addition the Response Acknowledge section of the June 23, 2008 Notice of Allowability for Design Application refers to Application No. 11/179,941 and acknowledges that this 941 Application provides antecedent basis for the parts shown in the current application.
Systems infringement is clearly established by comparing the overall appearance of the front end design of Systems Accused Leveler to the claimed design of the 754 Design Patent. This comparison establishes a high degree of similarity between the overall appearance of the front ends of the Accused Levelers and the 754 Design Patent. Ordinary observer witnesses will further demonstrate that purchasers are misled by this high degree of similarity into thinking the front end design of the Accused Levelers is that of the 754 Design Patent. Systems infringement is willful. Systems vice president, Mike Pilgrim, admits he was aware of Nordock in about 2003. Systems also admits it was aware of Nordocks December 23, 2002 patent application, which ultimately issued as the 754 Design Patent by at least early 2005, well prior to Systems first sale of its Accused Levelers in 2006. In spite of this knowledge, Systems obtained no opinion of counsel upon which a reasonable individual could rely to proceed with launching its Accused Levelers. Nordock also marks its products with its 754 Design Patent. In spite of this marking, as well as Nordocks written May 2009 notice letter and follow up pre-litigation correspondence, Systems has made no change to its Accused Levelers. With respect to Nordocks unfair competition counts, Nordock will present evidence of its extensive marketing and advertising displaying its distinctive front end design for its dock levelers. Nordock will also present witness testimony to the distinctive nature of this front end design and that prospective customers have come to associate that distinctive front end design with a single source, namely Nordock, and that Systems unauthorized adoption and use of its distinctive front end design causes prospective consumers to mistakenly believe that its dock levelers, with their highly similar front end design, are associated with or sponsored by Nordock. Systems provides no survey evidence to contradict the secondary meaning and likelihood of confusion testimony by Nordock witnesses.
C.
WITNESSES See attached Plaintiffs Witness List.
D. 1.
BACKGROUND OF NORDOCK EXPERTS Qualifications of Professor Steven C. Visser as an expert witness in industrial design and the ornamental appearance of products of industry and the Validity of the 754 Design Patent and its Infringement by Systems . Professor Visser received a Masters of Fine Art in Industrial Design in 1988 from the
University of Illinois at Urbana-Champaign. Professor Visser is currently a tenured Full Professor at Purdue University in the area of Industrial Design. He has four design patents and three utility patents. He has designed a variety of products as an industrial designer for companies including, Samsung, Delta Faucet, Klipsch Audio, Ansco, and Shure Microphones. Of particular interest in this case, which is about a commercial product, he has designed several commercial products, including a rotary assembly table for Raven engineering, track lighting for Omega Lighting (Philips), a Radio Frequency Meter for Trilithic, Inc. and a blood analyzer for Coulter, Inc. Professor Visser is an Industrial Designer. Sometimes Industrial Designers are confused for Industrial Engineering. This is due to how similar the names sound. However, they are rather far apart on what they do. According to Websters Unabridged Dictionary Industrial Design is the art that deals with the design problems of manufactured objects, including problems of designing such objects with consideration for available materials and means of production, of designing packages, bottles, etc. for manufactured goods, and graphic design for manufactured objects, packages, etc. On the other hand Industrial Engineering is engineering applied to the planning, design and control of industrial operations.
Profeesor Vissers design work has been recognized nationally and internationally. He has received recognition in international design competitions, including the following: Award of Excellence in the Taiwan International Design Competition, two Opus Awards in an International eyewear design competition from Japan, a silver IDEA Award in the USA, and Second Place in Neste Forma Finlandia 3 International Plastic Design Competition. Professor Vissers designs have been exhibited both nationally and internationally. Locations include the following: the Chicago Antheneum, the Cooper Hewitt National Design Museum (Smithsonian) in New York, the Groninger Museum (Netherlands), Veletrzni Palc Prague (Czech Republic), and the Biennale Internationale Design 2000 and 2002 sponsored by the Museum of Modern Art in Saint-tienn (France). And the Museum of Modern Art in New York. 2. Qualifications of Dr. Stanley V. Smith as an expert witness of Damages Economist Stan V. Smith is President of Smith Economics Group in Chicago, a national economic consulting firm offering a broad range of consulting services and litigation support in economics and finance. For over two decades, Dr. Smith has assisted thousands of law firms nationwide in successful results for both plaintiffs and defendants, including the U.S. Department of Justice, in all types of commercial cases, personal injury cases, employment cases, credit damage cases, etc. Dr. Smiths work on intellectual property cases includes calculations of loss of sales and profits and reasonable royalties. He has worked on various patent infringement cases, including Quick Tag, Inc. v. Stallman & Pollock, et al and Huntair v. Climatecraft Inc., and trade dress and trade secret cases including Kaiser, et al. v. The Pampered Chef, et al.
Trained in economics at the world-acclaimed University of Chicago, Dr. Smith taught the first course nationwide in Forensic Economic Damages at De Paul University, based on his textbook, Economic/Hedonic Damages, which has also been used at other college and universities. He has presented his concepts of damages at the annual meetings of the American Bar Association, the Defense Research Institute, at many dozens of state bar and state trial lawyer association meetings, on Larry King, and other media programs. Dr. Smith received his Master's Degree and Ph.D. in Economics from the University of Chicago and his B.S. Degree from Cornell University. He has written numerous articles appearing in the ABA Journal, the Journal of Forensic Economics and elsewhere. He and his work have been profiled on the front page of The Wall Street Journal and The National Law Journal, as well as in the ABA Journal, Larry King Live, Trial, Best Lawyers in America: Experts Directory, in many law review articles, The Atlantic Monthly, and elsewhere. E. EXHIBIT LIST See attached Plaintiffs List of Exhibits. F. DEPOSITION TRANSCRIPT DESIGNATIONS See attached Plaintiffs Deposition Transcript Designations. G. ESTIMATE OF TIME NEEDED FOR TRIAL Nordock estimates that it will take two days to present its case-in-chief, and that the duration of the trial will be four days, not counting jury deliberation. H. JURY TRIAL (i) Proposed Voir Dire Questions See attached Plaintiffs Proposed Voir Dire Questions. (ii) Proposed Jury Instructions
See attached Plaintiffs Proposed Jury Instructions. (iii) Proposed Verdict Form See attached Plaintiffs Proposed Verdict Form.
Dated: this 18th day of February, 2013. Respectfully submitted, SOKOL LAW OFFICE Counsel for Plaintiff Nordock, Inc. s/Jeffrey S. Sokol Jeffrey S. Sokol P.O. ADDRESS: 828 North Broadway Milwaukee, WI 53202 414.272.7200 (telephone) 414.272.7204 (facsimile)
CO-COUNSEL: O'NEIL, CANNON, HOLLMAN, DeJONG & LAING S.C. Gregory W. Lyons
111 East Wisconsin Avenue, Suite 1400 Milwaukee, Wisconsin 53202 Phone 414.276.5000
CERTIFICATE OF SERVICE I hereby certify that on February 18, 2013, I electronically filed an un-redacted version of the foregoing with the Clerk of the Court using the ECF system which will send notification of such filing to the following: Philip P. Mann Mann Law Group Seattle Tower 1218 3rd Avenue, Ste. 1809 Seattle, WA 98101 David A. Affeldt Affeldt Law Offices 8741 W National Ave West Allis, WI 53227 John Whitaker Whitaker Law Group Seattle Tower 1218 3rd Avenue, Ste 1809 Seattle, WA 98101
COUNSEL FOR NORDOCK, INC. /s/Jeffrey S. Sokol Jeffrey S. Sokol Sokol Law Office 828 North Broadway Milwaukee, WI 53202 (414) 272-7200
IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF WISCONSIN NORDOCK, INC. Plaintiff, v. SYSTEMS, INC. Defendant. ) ) ) ) ) ) ) ) )
PLAINTIFF'S WITNESS LIST Plaintiff, Nordock, Inc., (Nordock), pursuant to Fed. R. Civ. P. 26(a)(3)(A) makes its required disclosures as follows: 1. Plaintiff intends to call the following individuals: a. Denis Gleason Nordock, Inc. 405 Lake Road, Unit #2 Bowmanville, Ontario Canada L1C 4P8 Shawn Ward Nordock, Inc. W278 N2697 Rocky Point Road Pewaukee, WI 53072 Jim Flatley Flatley Corporation 3026 Helsan Drive, Unit B Richfield, WI 53076 Professor Steven C. Visser Steve Visser Design 2472 Gala Ct. West Lafayette, IN 47906 Dr. Stan V. Smith, PhD. Corporate Financial Group, Ltd. 1165 N. Clark Street, Suite 600 Chicago, IL 60610
b.
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e.
Case 2:11-cv-00118-RTR Filed 02/18/13 Page 1 of 4 Document 128-1
2.
Plaintiffs may call the following individuals: f. William, Weber Weber Company 8140 Mayfield Road Chesterland, OH 44026 Mark Miller Hodge Material Handling 7465 Chavenelle Rd. Dubuque, IA 52002 Tom Barlow BCI 832 Hwy 64 East Conway, AR 72032 Dan Sewell Best Handling Systems 595 Spice Islands, Dr#5 Sparks, NV 89431 Dan Bernacki Dans Overhead Doors 1810 Hwy 965 NW North Liberty, IA 52317 Kirby Moore Northern Dock Systems 1200 Aerowood Dr., Unit 44 Mississauga, Ontario L4W 2S7 Stan Fluit Speedtech 3364 Quincy Street Hudsonville, MI 49426 Larry Goodall Toyota Material Handling 31010 San Antonio Street Hayward, CA 94544 Rick Spitznagel Tri-State 6145 Rose Petal Drive Cincinnati, OH 45247
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Edward McGuire (adversely) Systems, Inc. W194 N11481 McCormick Drive Germantown, WI 53022 Mike Pilgrim (adversely) Systems, Inc. W194 N11481 McCormick Drive Germantown, WI 53022 Gerald Palmersheim (adversely) Systems, Inc. W194 N11481 McCormick Drive Germantown, WI 53022 Richard Bero N16 W23217 Stone Ridge Drive RidgeView Office Center I Suite 250
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Nordock reserves the right to call as a witness any person identified in Systems witness list, either in its case in chief or rebuttal. Dated: this 18th day of February, 2013. Respectfully submitted, SOKOL LAW OFFICE Counsel for Plaintiff Nordock, Inc. s/Jeffrey S. Sokol Jeffrey S. Sokol P.O. ADDRESS: 828 North Broadway Milwaukee, WI 53202 414.272.7200 (telephone) 414.272.7204 (facsimile)
COUNSEL FOR NORDOCK, INC. /s/Jeffrey S. Sokol Jeffrey S. Sokol Sokol Law Office 828 North Broadway Milwaukee, WI 53202 (414) 272-7200
PLAINTIFFS DEPOSITION TRANSCRIPT DESIGNATIONS
Trial Date March 18, 2013 Ed McGure 6/18/12 from to (page:line) (page:line) 45:13 45:18
Ed McGuire 4/17/12 from to (page:line) (page:line) 123:3 123:5 123:22 123:22 124:16 124:20 125:15 125:20 126:21 126:25 128:23 129:5 8:5 8:5 26:15 26:17 88:17 89:24
Pilgrim 4/18/12 from to (page:line) (page:line)
96:23 100:12 100:21 105:20 109:8 109:19 111:25 170:10 171:14 165:9 175:15 176:9 220:11 221:5 241:6 97:5
97:10 100:16 100:21 106:5 109:12 110:1 112:21 170:12 171:18 168:4 175:18 176:16 220:19 221:11 241:13 97:12
Hahn from to (page:line) (page:line) 17:2 17:11 18:14 18:24 57:23 58:5 156:15 156:18 14:21 15:2 176:1 176:25 6:20 6:23 89:9 89:11 94:19 94:25 185:21 186:2 94:22 95:19 263:16 263:18 265:21 265:25 222:3 222:7 37:2 37:4 227:4 227:8 97:13 97:19 106:6 106:11 107:7 107:9
237:21 111:17
237:23 112:23
Brookman from to (page:line) (page:line) 192:3 192:4 193:19 194:1 206:2 206:5 77:18 77:24 125:8 125:13 83:20 83:22 182:1 190:25 60:4 60:11
Bero 8/24/12 from to (page:line) (page:line) 73:24 75:8 79:21 80:6
Palmersheim from to (page:line) (page:line) 43:17 43:21 55:14 55:20 61:9 61:13 61:19 62:8 118:9 119:8
CO-COUNSEL: O'NEIL, CANNON, HOLLMAN, DeJONG & LAING S.C. Gregory W. Lyons 111 East Wisconsin Avenue, Suite 1400 Milwaukee, Wisconsin 53202 Phone 414.276.5000
PLAINTIFF'S PROPOSED VERDICT FORM We the jury, unanimously agree to the answers to the following questions and return them under the instructions of this Court as our verdict in this case.
FINDINGS ON NORDOCKS CLAIMS NORDOCKS 754 DESIGN PATENT CLAIM AGAINST SYSTEMS 1. For each of the following products, has Nordock proven by a preponderance of the evidence that Systems has infringed the 754 Design Patent? Please answer in each cell with a Y for yes (for Nordock), or an N for no (for Systems). Accused Levelers 6 Wide LHP 7 Wide 6 Wide LMP 7 Wide 6 Wide LHD 7 Wide 6 Wide LMD 7 Wide 2. Yes/No
If you answered Yes to any product listed in Question 2, and thus found that Systems has infringed the 754 Design Patent, has Nordock proven by clear and convincing evidence that Systems infringement was willful? Please answer in each cell with a Y for yes (for Nordock), or an N for no (for Systems). Accused Levelers 6 Wide LHP 7 Wide 6 Wide LMP 7 Wide 6 Wide LHD 7 Wide 6 Wide LMD 7 Wide Yes/No
3.
Has Systems proven by clear and convincing evidence that Nordocks 754 Design Patent is invalid? Yes (not valid for Systems) ______ No (valid for Nordock) ______
NORDOCKS TRADE DRESS CLAIMS AGAINST SYSTEMS Protectability 4. Has Nordock proven by a preponderance of the evidence that Nordocks unregistered trade dress is protectable? Please answer with a Y for yes (for Nordock), or with an N for no (for Systems). Asserted Trade Dress 6 Wide Front End of INDUSTRIAL 7 Wide Front End of DUAL DUTY Front End of AIRDOCK Front End of HEAVY DUTY 6 Wide 7 Wide 6 Wide 7 Wide 6 Wide Yes/No
7 Wide 6 Wide Front End of COLDSTORAGE 7 Wide 5. If you found Nordocks unregistered trade dress protectable, for each of the following products, has Nordock proven by a preponderance of the evidence that Systems has infringed Nordocks unregistered trade dress. Please answer with a Y for yes (for Nordock), or with an N for no (for Systems). Asserted Trade Dress 6 Wide Front End of INDUSTRIAL 7 Wide Front End of DUAL DUTY Front End of AIRDOCK Front End of HEAVY DUTY 6 Wide 7 Wide 6 Wide 7 Wide 6 Wide 7 Wide 6 Wide Yes/No
Front End of COLDSTORAGE 7 Wide
DAMAGES TO NORDOCK FROM SYSTEMS (IF APPLICABLE) 6. What is the total dollar amount that Nordock is entitled to receive from Systems on the claims on which you have ruled in favor of Nordock? $_____________________________________. 7. For the total dollar amount in your answer to Question 6, please provide the dollar breakdown by product. Accused Levelers 6 Wide LHP 7 Wide 6 Wide LMP 7 Wide 6 Wide LHD 7 Wide 6 Wide LMD 7 Wide Dated: this 18th day of February, 2013. Respectfully submitted, SOKOL LAW OFFICE Counsel for Plaintiff Nordock, Inc. s/Jeffrey S. Sokol Jeffrey S. Sokol P.O. ADDRESS: 828 North Broadway Milwaukee, WI 53202 414.272.7200 (telephone) 414.272.7204 (facsimile) Amount
111 East Wisconsin Avenue, Suite 1400 Milwaukee, Wisconsin 53202
Phone 414.276.5000
CERTIFICATE OF SERVICE I hereby certify that on February 18, 2013, I electronically filed an un-redacted version of the foregoing with the Clerk of the Court using the ECF system which will send notification of such filing to the following: Philip P. Mann Mann Law Group Seattle Tower 1218 3rd Avenue, Ste. 1809 Seattle, WA 98101 David A. Affeldt Affeldt Law Offices 8741 W National Ave West Allis, WI 53227 John Whitaker Whitaker Law Group Seattle Tower 1218 3rd Avenue, Ste 1809 Seattle, WA 98101 COUNSEL FOR NORDOCK, INC. /s/Jeffrey S. Sokol Jeffrey S. Sokol Sokol Law Office 828 North Broadway Milwaukee, WI 53202 (414) 272-7200
PLAINTIFF'S PROPOSED VOIR DIRE QUESTIONS Trial Date: March 18, 2013 1. Have you ever tried to obtain a design patent, utility patent or trademark registration from the U.S. Patent and Trademark Office, or a copyright registration from the U.S. Copyright Office? If so: What was the subject matter of the patent, trademark or copyright? Did you obtain the patent, or trademark or copyright registration? Did you ever enforce your patent, trademark or copyright against anyone? 2. Do you believe U.S. patents and copyrights promote the progress of the Sciences and useful Arts? If not, Why? Have you or a member of your family ever had any dealings with the United States Patent and Trademark office? Do you have any opinions regarding the United States Patent and Trademark office, either positive or negative? Have you or any of your relatives ever worked for a company that manufactured or sold dock levelers? Have you ever bought a dock leveler? If so: When did you purchase it? What company made the dock leveler? Have you ever used a dock leveler? If so: When? How frequently? Do you know the brand or name of the manufacturer?
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Are you familiar with more than one kind of loading dock leveler? If, so: What kinds or brands? Have you ever worked on a loading dock? Have you ever worked for a company where your job included transporting or unloading material from or on to a loading dock? Do you believe United States laws should apply equally to all persons and companies doing business in the United States, regardless of whether the person lives in the United States or the company is a United States company? Do you believe the United States should allow a Canadian company to have a U.S. patent? Do you believe a person or company should have the right to bring a lawsuit against someone to protect his, her or its interests, and the need for the Court and Juries to ultimately decide the outcome? Have you ever felt that there were circumstances when an inventor should not be entitled to prevent others from making, using or selling his or her invention? Does anyone have any medical condition, including any hearing or vision problems that might interfere with your ability to adequately view or hear the evidence in this case?
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111 East Wisconsin Avenue, Suite 1400 Milwaukee, Wisconsin 53202 Phone 414.276.5000 Case 2:11-cv-00118-RTR Filed 02/18/13 Page 2 of 3 Document 128-4
CERTIFICATE OF SERVICE I hereby certify that on February 18, 2013, I electronically filed an un-redacted version of the foregoing with the Clerk of the Court using the ECF system which will send notification of such filing to the following: Philip P. Mann Mann Law Group Seattle Tower 1218 3rd Avenue, Ste. 1809 Seattle, WA 98101 David A. Affeldt Affeldt Law Offices 8741 W National Ave West Allis, WI 53227 John Whitaker Whitaker Law Group Seattle Tower 1218 3rd Avenue, Ste 1809 Seattle, WA 98101 COUNSEL FOR NORDOCK, INC. /s/Jeffrey S. Sokol Jeffrey S. Sokol Sokol Law Office 828 North Broadway Milwaukee, WI 53202 (414) 272-7200
LIST OF EXHIBITS Trial Date March 18, 2013 PLAINTIFFS EXHIBIT INDEX DATE
IDENTIFICATION
DESCRIPTION
No. 001
Witness U.S. Patent No. 6,834,409 (Systems 4/17/12 Dep Ex 23) (NOR 4-29) U.S. Patent No. 7,013,519 (Systems 4/17/12 Dep Ex 24) (NOR 164-187) U.S. Patent Appl. No. 11/179,941 (NOR 355-435) U.S. Design Patent No. D579,754 Systems 4/17/12 Dep Ex 15) (NOR 437-442) U.S. Patent Appl. No. 10/328,279 (409 Patent) (Brookman 8/23/12 Dep Ex 23) (NOR 91-157) U.S. Patent Appl. No. 29/288,137 (754 Design Patent) (Brookman 8/23/12 Dep Ex 24) (NOR 501-508) Prosecution History of 754 Patent (137 Design Application) (Brookman 8/23/12 Dep Ex. 25) (NOR 436-508)
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OFFERS, OBJECTIONS , RULINGS, EXCEPTIONS
NOR SJ Motion Exhibit
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AS
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Copies of 51 References Cited listed on page 1-2 of 754 Patent. (NOR 545 1139) MPEP 1500 (Systems 4/17/12 Dep Ex 19) (NOR 1633-1694) MPEP Section 706 and 2128 Co-Pendency Chart (Systems 4/17/12 Dep Ex 20) (NOR 1304-5 and 1310) Assignment of U.S. Patent Appl. No. 10/328,279 (409 Patent) and all divisions and continuations thereof, Recorded with USPTO on 2/25/03. (NOR 1695-1697) Alternate Dock Leveler designs (Not listed on 754 Design Patent) (NOR 1140-64 and BERO 382-493) Systems alternate leveler designs, including the following with standard and gusseted piano hinge designs: - PoweRamp: PR, EH, VH, AP &CM - DLM: DA/AP, DH/EH, DM/CM/HM; - McGuire: HP/H, MA and MP (Systems 4/17-18/12 Dep Ex 6 &26) (NOR 1308-09) BERO148 and 502-509) Alternate Dock Leveler Front End design, including (Systems 4/17/12 Dep Ex 7-14) (Brookman DepEx 21, 26-36 and 37). Alternate Lug designs (Brookman 8/23/12 Dep Ex 32) Alternate Header Plate designs Alternate Lip designs (Also see BERO 524) Alternate Pivot Rod designs U.S. Patent No. 6,370,719 to Alexander (NOR 965-972) Kelley, Blue Giant and Pentalift brochures (NOR 1609-32, esp 11, 17, 30-32) Genisys open lug dock leveler by
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AAJ
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D E F G I Z
022
023
Rite Hite (Systems 4/18/12 Dep Ex 25) (NOR 1306-1307) Systems 1/23/91 LHP Series Demonstration Outline states: Front Hinge-Piano style front lip hinge and Strongest dock leveler on market (BERO 534-37) Demonstrative Exhibits showing dock levelers with Alternate front end designs. LODAM Dock Levers 101 (Systems 4/17/12 Dep Ex 5) Penta Lift brochure discussing attractive appearance (NOR 1630-31) Systems emails regarding its asserted development of Accused Levelers (Systems 4/17/12 Dep Ex 3-4, 16-18, 30) Systems Mrk Lobel email stating Nordock, Rite Hite and McGuire do not know what they are doing. To think they had figured out a better and cheaper mouse trap. The nerve!! (Systems 4/18/12 Dep Ex 30) (SI100519) J
024043 044
045
046
047
048
Dock Leveler rating capacities (NOR 1454, 1456, 1617-18, 1624-25, 1629, 1631 and BERO 388, 400, 402, 426, 462, 482, 486, 499, 522, 529, 531, 533) Nordock brochures INDUSTRIAL, DUAL DUTY, HEAVY-DUTY (NOR 1457-60 and 1264-65) Nordock INDUSTRIAL, HEAVY DUTY, COLDSTORAGE, SUPER DUTY and AIRDOCK brochures (NOR 1264-76) List of Dock Leveler Manufacturers
3
049
050
051
(BERO 515-517) 052 Systems Brochures, User Manuals and Photos showing its DLM levelers LMP, LHP, LMD and LHD Series (Accused Levelers), including - Complaint Exhibit 3 (Systems 4/17/12 Dep Ex 2) NOR 1619-22; (NOR 1243-44, 1311, 1461-71) (SI 100236-255, 263-314, 335-341) (BERO 382, 494-501 and 519-33) Nordock photographs showing Accused Levelers, including NOR 1594-1602 Systems Video shown at 1/30/13 Claim Construction Hearing (Systems Exhibit 4 of CC Hearing) Nordock Demonstrative Video showing operation of dock leveler. Demonstrative Exhibits showing Accused Levelers infringement of 754 Design Patent Pre-Litigation correspondence (Systems 4/17/12 Dep Ex 21) (Brookman 8/23/12 Dep. Ex 20) (NOR 536-544 and BERO 379-381) Manns 1/31/06 email to Systems (SI300003) Manns 7/22/10 Letter to Systems (SI300001-2) 2010 Distributor Questionnaires (Brookman 8/23/12 Dep. Ex. 4) (NOR 509-534) Complaint filed 1/28/11 Systems Initial Disclosures Systems Answers to Nordock Interrogatory Nos. 1-20 and Supplements thereto Systems Responses to Nordock Document Request Nos. 1-40 and Supplements thereto
4
053
054
055 056075
076
AAE
078 079
AAC AAD
080
AH
081 082 083
AZ AB
084
085
Systems alleged Primary Reference attempting to invalidate 754 Design (SI100800-940) U.S. Design Patents for Hinges that Palmersheim and Hahn assert are entirely functional (no ornamentation) (NOR 1165-1207 and 1284-1303) (Systems 4/18/12 Dep. Ex. 34-46) Example U.S. Design patents (NOR 1284-1303) Pilgrim 4/18/12 Dep Ex. 2, 15 and 25 Hahn 8/24/12 Dep Ex. 1-6 Web printout regarding 1998 HafaCrawford Merger (NOR 1806-10) Declarations of Jim Flatley, William Weber and Mark Miller Professor Steven C. Visser 6/20/12 Report Professor Steven C. Visser 7/20/12 Rebuttal Report Professor Steven C. Visser Curriculum Vitae U.S. Design Patent Nos. D375,531 and Utility Patent No. 5,568,928 to Steven Visser for Video Game Controller for Exercise Machine (Visser CV, Exhibit 1, page 14) Dr. Stan V. Smith 6/20/12 Damages Report Dr. Stan V. Smith 7/20/12 Rebuttal Report Dr. Stan V. Smith 2012 Supplemental Damages Report Dr. Stan V. Smith 2013 Supplemental Damages Report (Pending Supplemental Bero Report) Stan V. Smith Curriculum Vitae Systems Financial records for Accused Levelers (Motion pending)
5
AE
086
AM
087
088 089 090
AO AL AQ
091
AI
092 093 094 095
AT AU AAH
096 097 098 099
100 101
102 103 104 105 106
107
Bero 7/20/12 Damages Rebuttal Report Bero 2013 Supplemental Damages Rebuttal Report (Motion pending) Bero subpoena served 8/_/12 Bero Schedule Workpapers (BERO 1-144 Documents produced by Bero per his subpoena: - Walmart Sales: Nordock v Systems, including Walmart Dock Equip Spec listing AirDock Air Powered Dock Lever by Nordock (BERO 145-161) - Documents provided by Mike Pilgram, also including Walmart Dock Equip Spec listing AirDock Air Powered Dock Lever by Nordock (BERO 162-183) - Notes with Pilgrim for preparing Damages Report (BERO 282-285) - Beros Patent Infringement Damages: Lost Profits publication (BERO 201-228) - Beros Past Patent Damage Reports: a) Jore v. Kouvat, (BERO 184-195 b) Ashley Furniture (BERO 229-281) c) 4Front v Systems (BERO 286-336) U.S. Patent No. D419,575 to Kouvato for Drill Bit Lowes bid sheet requiring Lug Hinge style dock leveler (Systems 4/18/12 Dep Ex 31) (NOR 1277-78) U.S. Design Patent Nos. D507,463 and D512,281 to Brookman for Cutting Board, Signed Declarations, and Advertising Materials (Brookman 8/23/12 Dep. Ex. 11-14) (NOR 1503-09, 1585-93 &1603-08) U.S. Patent Nos. D493,312, 7,543,719 and D590,213 for Napkin Holder prosecuted by Brookman (Brookman 8/23/12 Dep Exs 17-19) (NOR 1523-49)
6
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AP
111
112
113
114 115
116
117
U.S. Design Patent No. D297,525 (The Baby Jogger) and Racing Stroller case (NOR 1707- 1805, esp. 1711-20, 29-36, 46-48, 50 and 61-63) Examples of U.S. Design Patents that are Continuations/Divisionals of U.S. Utility Patents (NOR 1312-1444) U.S. Design Patent No. D496,233 and CIP U.S. Patent No. 7,621,572 for same Scoop and Sheath product (Brookman 8/23/12 Dep Exs 15-16) (NOR 1472-1502) Lee v. Dayton Hudson case (Brookman 8/23/12 Dep Ex 22) Brookmans trademark book Section 6.07 comparing Trade Dress to Design Patents (NOR 1698-1706) List of Patents prosecuted by Brookman (NOR 1518-22) U.S.Design Patents prosecuted by Brookman (NOR 1550-84) Nordock Damages Spread Sheet (NOR 1254-63) Nordock Engineering drawings for dock levelers, production and range of motion drawings, 3/2002 invoice and INDUSTRIAL brochure (NOR 1279-83) Systems Product Line Detail Report for Lug Hinge Hydraulic Sales all dates. (Systems 6/18/12 Dep. Ex 50) (SI100866-868) Systems Product Line Detail Report for Lug Hinge Mechanical Sales all dates . (Systems 6/18/12 Dep. Ex 51) (SI101010-1013) DLM 2007 Product Price Catalog for LHD and LMD levelers (Systems 6/18/12 Dep. Ex 52)
7
AR
118
AY
119
120
121
122
123
(SI100231-235) PoweRamp 2007 Product Price Catalog for LHP and LMP levelers (Systems 6/18/12 Dep. Ex 53) (SI100249-254) Dock Leveler Industry design patents (Hahn 8/24/12 Dep. Ex. 1) Systems owns several U.S. patents. (Systems 4/17/12 Dep Ex 1) U.S. Patents issued to Pilgrim or Palmersheim (Systems 4/18/12 DepEx 33 Fairborn) (NOR 1208-NOR 1242) Prosecution History of 409 Patent (279 Application) (NOR 001-157) Prosecution History of 519 Patent (532 Application) (NOR 158-313) Prosecution History of 941 Applic. (NOR 314-435) Combursa brochure and patent (Systems 4/18/12 Dep Ex 27-28) (Systems 6/18/12 Dep Ex 47) (Brookman 8/23/12 Dep Ex 7 &9-10) (Hahn 8/24/12 Dep Ex. 4) Crawford brochures (Systems 4/18/12 Dep Ex 29) (Brookman 8/23/12 Dep Ex 6) (Hahn 8/24/12 Dep Ex. 6) Hafa (Hahn 8/24/12 Dep Ex. 5) Horrman brochure (April 2011) and asserted old version installed about 1999-2000 at U.K. Post Office. (Systems 6/18/12 Dep Ex 48-49) (Brookman 8/23/12 Dep Ex 8) All Exhibits of Record in this Case
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SOKOL LAW OFFICE Counsel for Plaintiff Nordock, Inc. s/Jeffrey S. Sokol Jeffrey S. Sokol
10
UNITED STATES DISTRICT COURT EASTERN DISTRICT OF WISCONSIN
NORDOCK, INC. Plaintiff, v. SYSTEMS, INC., Defendant. Case No. 11-cv-00118-RTR
PLAINTIFF'S PROPOSED LIST OF JURY INSTRUCTIONS
Plaintiff, Nordock, Inc. (Nordock), by and through its attorneys, Sokol Law Office and ONeil, Cannon, Hollman, DeJong & Laing S.C., hereby provides the below list of jury instructions, and which are attached hereto, to be provided to the jury at the trial of this action. PRELIMINARY JURY INSTRUCTION I. The Nature of the Action and the Parties A. United States Patents B. Patent Litigation II. Contentions of the Parties III. Trial Procedure IV. Glossary of Patent and Trade Dress Terms 1.01 1.02 2.14 1.03 1.04 1.05 2.08
FUNCTIONS OF THE COURT AND THE JURY NO INFERENCE FROM JUDGES QUESTIONS* JUDGES COMMENTS TO LAWYER* ALL LITIGANTS EQUAL BEFORE THE LAW* EVIDENCE* DEPOSITION TESTIMONY* DEPOSITION AS SUBSTANTIVE EVIDENCE*
Starred Jury Instructions correspond to and are taken from the Pattern Civil Jury Instructions of the Seventh Circuit.
1.06 1.07 1.08
WHAT IS NOT EVIDENCE* NOTE-TAKING* CONSIDERATION OF ALL EVIDENCE REGARDLESS OF WHO PRODUCED* LIMITED PURPOSE OF EVIDENCE* WEIGHING THE EVIDENCE* TESTIMONY OF WITNESSES (DECIDING WHAT TO BELIEVE)* NUMBER OF WITNESSES* ABSENCE OF EVIDENCE* EXPERT WITNESSES* DEMONSTRATIVE EXHIBITS MODIFIED* BURDEN OF PROOF* CLEAR AND CONVINCING EVIDENCE* SELECTION FO PRESIDING JUROR; GENERAL VERDICT* COMMUNICATION WITH COURT* DISAGREEMENT AMONG JURORS*
1.09 1.11 1.13 1.17 1.18 1.21 1.24 1.27 1.28 1.32 1.33 1.34
SUMMARY OF PATENT AND TRADE DRESS ISSUES 7.1 7.2 8.1 8.2 CLAIM CONSTRUCTION GENERALLY CLAIM CONSTRUCTION FOR THE CASE (Modified) DESIGN PATENT INFRINGEMENT GENERALLY (Modified) DIRECT INFRINGEMENT KNOWLEDGE OF PATENT OR INTENT TO INFRINGE IS IMMATERIAL DIRECT INFRINGEMENT
8.3
DESIGN PATENT DIRECT INFRINGEMENT COMPARISONS 9.1 INVALIDITY CONTENTIONS OF THE PARTIES
9.2 9.3 9.6
SCOPE AND CONTENT OF PRIOR ART (Modified) ANTICIPATION A SINGLE REFERENCE OR A SINGLE PRODUCT ANTICIPATION PRIOR DESIGN BY ANOTHER (Modified)
DESIGN PATENTS OBVIOUSNESS 9.8 9.9 OBVIOUSNESS DIFFERENCES WITH THE PRIOR ART DESIGNER OF ORDINARY SKILL IN THE ART
DESIGN PATENTS INVALIDITY LACK OF ORNAMENTALITY DESIGN PATENT DAMAGES BURDEN OF PROOF DESIGN PATENT DAMAGES DEFENDANTS PROFITS DESIGN PATENT DAMAGES LOST PROFITS DESIGN PATENT DAMAGES LOST PROFITS GENERALLY DESIGN PATENT DAMAGES LOST PROFITS FACTORS TO CONSIDER DESIGN PATENT DAMAGES LOST PROFITS AMOUNT OF PROFIT DESIGN PATENT DAMAGES REASONABLE ROYALTY DESIGN PATENT DAMAGES REASONABLE ROYALTY DEFINITION DESIGN PATENT DAMAGES DATE OF COMMENCEMENT PRODUCTS 8.6 WILLFUL INFRINGEMENT
TRADE DRESS INFRINGEMENT INTRODUCTION TRADE DRESS INFRINGEMENT DEFINITION OF TRADE DRESS (15 U.S.C. 1125(A)) TRADE DRESS INFRINGEMENT PROTECTABILITY TRADE DRESS INFRINGEMENT PROTECTABILITY DISTINCTIVENESS SECONDARY MEANING TRADE DRESS INFRINGEMENT PROTECTABILITY NON-FUNCTIONAL REQUIREMENT
INFRINGEMENT ELEMENTS AND BURDEN OF PROOF TRADE DRESS (15 U.S.C. 1125(A)(1)) TRADE DRESS INFRINGEMENT SECONDARY MEANING TIMING INFRINGEMENT LIKELIHOOD OF CONFUSION SLEEKCRAFT TEST (15 U.S.C. 1114(1) and 1125(A)) TRADE DRESS DAMAGES IN GENERAL TRADE DRESS DAMAGES PLAINTIFFS ACTUAL DAMAGES (15 U.S.C. 1117(A)) TRADE DRESS DAMAGES DEFENDANTS PROFITS (15 U.S.C. 1117(A)) MONETARY REMEDIES ONLY ONE RECOVERY PER ACCUSED SALE Nordock reserves the right to update this list of jury instructions and to add any additional instructions as necessary based upon the Courts rulings, if any, on the parties pre-trial filings. Dated this 18th day of February, 2013. FACTORS
SOKOL LAW OFFICE s/Jeffrey S. Sokol Jeffrey S. Sokol P.O. ADDRESS: 828 North Broadway Milwaukee, WI 53202 414.272.7200 (telephone) 414.272.7204 (facsimile) CO-COUNSEL: O'NEIL, CANNON, HOLLMAN, DeJONG & LAING S.C. Gregory W. Lyons 111 East Wisconsin Avenue, Suite 1400 Milwaukee, Wisconsin 53202 Phone 414.276.5000
PRELIMINARY JURY INSTRUCTION Members of the jury: Now that you have been sworn, I have the following preliminary instruction for your guidance on the nature of the case and your role as jurors. I. The Nature of the Action and the Parties This is a design patent and product configuration trade dress case. The patent and trade dress involved in this case relate to a loading dock leveler, and more particularly to the front end design of the dock leveler. Dock levelers are used to transfer goods between a building and a truck trailer. Dock levers bridge the gap between the building floor to the bed of the trailer or similar carrier. Dock levelers include a frame or support structure for mounting the leveler in a pit of a loading dock. The rear end of a conventional dock leveler is hinged to the building floor. The opposite or front end has an extendable lip that pivots out and onto the trailer bed. Levelers are adapted to move from a generally horizontal position where the upper surface of the deck is flush with the surface of the building floor to a second generally inclined position to provide a ramp between the bed of the truck and the dock floor. The front end of the dock lever and its extendable lip can be raised by either a hydraulic cylinder, an inflatable air bag or a mechanical spring. This case pertains to the overall appearance of a design claimed by a design patent and the claimed trade dress for the overall appearance of the front end of a dock leveler. For this particular dock leveler, its front end is formed by a header plate, header lugs, lip plate, lip lugs and a pivot rod that pivotally secure the lip plate to the deck of the dock leveler. During the trial, the parties will offer testimony to familiarize you with this technology. For your convenience, the parties have also prepared a glossary of some of the technical terms to which they may refer during the trial, which will be distributed to you.
The Plaintiff is the owner of a U.S. design patent, which is identified by the Patent and Trademark Office as Patent Number D579,754 and is entitled Lip and Hinge Plate for a Dock Leveler. The D579,754 may be called the 754 Design Patent or as the Plaintiffs Patent or Nordocks Patent. Systems is the other party to this case. A. United States Patents
Patents are granted by the United States Patent and Trademark Office (sometimes called the PTO). A patent gives the owner the right to exclude others from making, using, offering to sell, or selling the patented invention within the United States or importing it into the United States. During the trial, the parties may offer testimony to familiarize you with how one obtains a patent from the PTO, but I will give you a general background here. To obtain a design patent, an application for a patent must be filed with the PTO. The application includes a single claim, which is the design shown and described by the drawing figures of the application. The purpose of the drawing figures is to set forth what the applicant regards as the invention and to define the scope of the patent owners exclusive rights. An application for a patent is reviewed by a trained PTO examiner. The examiner reviews (or examines) the patent application to determine whether the claimed design is patentable. In examining a patent application, the patent examiner searches records available to the PTO for what is referred to as prior art, and he or she also reviews prior art submitted by the applicant. A patent examiner is presumed to be one of ordinary skill in the art of the invention for which the patent is being sought. When the parties are done presenting evidence, I will give you specific instructions as to what constitutes prior art in this case. But generally it is technical information and knowledge that was known to the public either before the invention by the applicant or more than a year before the priority date of the patent application. The patent examiner considers, among other things, whether each claim defines an invention that is new,
useful, and not obvious in view of this prior art. The PTO examiner also reviews the design application to determine if the claimed design lacks ornamentation. Following the prior art search and examination of the application, the PTO examiner advises the applicant in writing what the patent examiner has found and whether the claimed design is patentable (in other words, allowed). This writing from the patent examiner is called an office action. More often than not, the initial office action by the patent examiner rejects the claims. The applicant then responds to the office action to overcome any concern noted by the patent examiner. This process may go back and forth between the patent examiner and the applicant for several months or even years until the patent examiner is satisfied that the application and claimed design are patentable. In this case the priority date of the 754 Design Patent will be discussed. Under U.S. law, an applicant can file an application for a new product with more than one inventive aspect. The original application must show and describe each of the inventions claimed by the applicant for the new product. The PTO examiner will then ask the application to elect one of the inventions for examination via the original application. Then, while that original or first patent application is pending, the applicant can file a second application for a second inventive aspect shown and described in the original or parent application. The second or sibling application is then examined by the PTO. When appropriate, an applicant can file a third, fourth or fifth application to obtain protection on other inventive aspects to the new product. Provided each application is co-pending with an earlier filed application and the applicant properly asserts priority on the filing date of the earlier filed application or applications, the second, third, fourth or fifth applications will legally be entitled to the priority of the filing date of the original application. The collection of papers generated by the patent examiner and the applicant during this time of corresponding back and forth is called the prosecution history. You may also hear the
prosecution history referred to as the file history or the file wrapper. B. Patent Litigation
Someone is said to be infringing on claims of a design patent when they, without permission from the patent owner, import, make, use, offer to sell, or sell the patented invention, as defined by the claimed design, within the United States before the term of the patent expires. A patent owner who believes someone is infringing on the exclusive rights of the patent may bring a lawsuit like this to stop the alleged infringing acts and recover damages, which generally is money paid by the infringer to the patent owner to compensate for the harm caused by the infringement. The patent owner must prove infringement of the claims of the patent. The patent owner must also prove the need for damages. A granted patent is presumed to be valid. But that presumption of validity can be overcome if the defendant presents clear and convincing evidence that proves the patent is invalid. One example of a way in which the presumption may be overcome is if the PTO has not considered, for whatever reason, invalidating prior art that is presented to you. A person sued for allegedly infringing a patent can deny infringement and also can defend by proving the asserted claims of the patent are invalid. The accused infringer must prove invalidity by clear and convincing evidence. I will discuss more of this topic later. I will now briefly explain the parties' basic contentions in more detail. II. Contentions of the Parties The Plaintiff contends that the Defendant makes, uses, offers to sell, or sells a dock leveler that infringes its 754 Design Patent. The Plaintiff must prove that the Defendant
infringes the 754 Design Patent by a preponderance of the evidence. That means that the Plaintiff must show that it is more likely that the Defendant's allegedly infringing products infringe than do not infringe.
To determine infringement, you must compare the defendants accused products with the design claimed by the 754 Design Patent. It will be my job to tell you what the claim of the 754 Design Patent covers. You must follow my instructions as to the meaning of the patent claims. A design patent is infringed if in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other. The Defendant denies that it is infringing the 754 Design Patent. The Defendant also contends that the 754 Design Patent is invalid. The Defendant believes the claimed design is anticipated or rendered obvious by the prior art, and lacks any ornamentation. Invalidity is a defense to infringement. Therefore, even though the PTO examiner has allowed the claims of the 754 Design Patent, you, the jury, have the ultimate responsibility for deciding whether the claimed design of the 754 Design Patent are valid. The Defendant must prove invalidity by clear and convincing evidence. This is a higher standard than a preponderance of the evidence, but it does not require proof beyond a reasonable doubt. Clear and convincing evidence is evidence that shows it is highly probable that the claims are invalid. III. Trial Procedure We are about to commence the opening statements in the case. Before we do that, I want to explain the procedures that we will be following during the trial and the format of the trial. This trial, like all jury trials, comes in six phases. We have completed the first phase, which was to select you as jurors. We are now about to begin the second phase, the opening statements. The opening statements of the lawyers are statements about what each side expects the evidence to show. The opening statements are not evidence for you to consider in your deliberations.
The evidence comes in the third phase, when the witnesses will take the witness stand and the documents will be offered and admitted into evidence. In the third phase, the Plaintiff goes first in calling witnesses to the witness stand. These witnesses will be questioned by the Plaintiff's counsel in what is called direct examination. After the direct examination of a witness is completed, the opposing side has an opportunity to cross-examine the witness. After the Plaintiff has presented its witnesses, the Defendant will call its witnesses, who will also be examined and cross-examined. The parties may present the testimony of a witness by reading from their deposition transcript or playing a videotape of the witness's deposition testimony. A deposition is the sworn testimony of a witness taken before trial and is entitled to the same consideration as if the witness had testified at trial. The evidence often is introduced piecemeal, so you need to keep an open mind as the evidence comes in. You are to wait until all the evidence comes in before you make any decisions. In other words, keep an open mind throughout the entire trial. After we conclude the third phase, the lawyers again have an opportunity to talk to you in what is called closing argument, which is the fourth phase. Again, what the lawyers say is not evidence. The closing arguments are not evidence for you to consider in your deliberations. The fifth phase of the trial is when I read you the jury instructions. In that phase, I will instruct you on the law. I have already explained to you a little bit about the law. But in the fifth phase of the trial, I will explain the law in much more detail. Finally, in the sixth phase of the trial it will be time for you to deliberate. You can then evaluate the evidence, discuss the evidence among yourselves and make a decision in the case. You are the judges of the facts, and I decide the questions of law. I will explain the rules of law that apply to this case, and I will also explain the scope of the 754 Design Patent. You must follow my explanation of the law and the scope of the design claimed by the 754 Design Patent
even if you do not agree with me. Nothing I say or do during the course of the trial is intended to indicate what your verdict should be. IV. Glossary of Patent and Trade Dress Terms
Application The initial papers filed by the applicant in the United States Patent and Trademark Office (also called the Patent Office or PTO). Claim The claim of a design patent is the design as shown and described by the design patent and its drawing figures. De Jure Functional See lack of ornamentation below. File wrapper See prosecution history below. Functional See lack of ornamentation below. Lack of Ornamentation A design with an overall appearance that is void of any ornamentation or so entirely dictated by functionality that alternative designs are not feasible. License Permission to use the patented invention(s), which may be granted by a patent owner (or a prior licensee) in exchange for a fee called a royalty or other compensation. Office Action Communication from the patent examiner regarding the patent application and/or the design claimed in the patent application. Ordinary skill in the art The level of experience, education, and/or training generally possessed by those individuals who work in the area of the invention at the time of the invention. PTO examiners are presumed to have ordinary skill in the art. Patent Examiners Personnel employed by the PTO in a specific technical area who review (examine) the patent application to determine (1) whether the claims of a patent application are patentable over the prior art considered by the examiner, and (2) whether the specification/application describes the invention with the required specificity. Prior art Knowledge that is available to the public either prior to the invention by the applicant or more than one year prior to the priority date of the application. Prosecution history The written record of proceedings between the applicant and the PTO, including the original patent application and later communications between the PTO and applicant. The prosecution history may also be referred to as the file history or file wrapper of the patent during the course of this trial. Cited References A reference consider by the PTO examiner when determining patentability. Cited References are not necessarily Prior art. Specification The information that appears in the design patent and concludes with a design patent claim. The specification includes the written text, the claim, and the drawing figures. The specification must show and describe the invention in sufficient detail to enable others skilled in Case 2:11-cv-00118-RTR Filed 02/18/13 Page 11 of 81 Document 128-6
the art to practice the invention.
1.01 FUNCTIONS OF THE COURT AND THE JURY Members of the jury, you have seen and heard all the evidence and arguments of the attorneys. Now I will instruct you on the law. You have two duties as a jury. Your first duty is to decide the facts from the evidence in the case. This is your job, and yours alone. Your second duty is to apply the law that I give you to the facts. You must follow these instructions, even if you disagree with them. Each of the instructions is important, and you must follow all of them. Perform these duties fairly and impartially. Nothing I say now, and nothing I said or did during the trial, is meant to indicate any opinion on my part about what the facts are or about what your verdict should be.
1.02 NO INFERENCE FROM JUDGES QUESTIONS During this trial, I have asked a witness a question myself. Do not assume that because I asked questions I hold any opinion on the matters I asked about, or on what the outcome of the case should be.
2.14 JUDGES COMMENTS TO LAWYER I have a duty to caution or warn an attorney who does something that I believe is not in keeping with the rules of evidence or procedure. You are not to draw any inference against the side whom I may caution or warn during the trial.
1.03 ALL LITIGANTS EQUAL BEFORE THE LAW In this case the parties are corporations. All parties are equal before the law. A
corporation is entitled to the same fair consideration that you would give any individual person.
1.04 EVIDENCE The evidence consists of the testimony of the witnesses, the exhibits admitted in evidence, and stipulations. A stipulation is an agreement between both sides that certain facts are true or that a person would have given certain testimony.
1.05 DEPOSITION TESTIMONY During the trial, certain testimony was presented to you by the reading of depositions and/or video. You should give this testimony the same consideration you would give it had the witnesses appeared and testified here in court.
2.08 DEPOSITION AS SUBSTANTIVE EVIDENCE A deposition is the sworn testimony of a witness taken before trial. The witness is placed under oath to tell the truth and lawyers for each party may ask questions. The questions and answers are recorded. Deposition testimony is entitled to the same consideration and is to be judged, insofar as possible, in the same way as if the witness had been present to testify. Do not place any significance on the behavior or tone of voice of any person reading the questions or answers.
1.06 WHAT IS NOT EVIDENCE Certain things are not to be considered as evidence. I will list them for you: First, if I told you to disregard any testimony or exhibits or struck any testimony or exhibits from the record, such testimony or exhibits are not evidence and must not be considered. Second, anything that you may have seen or heard outside the courtroom is not evidence and must be entirely disregarded. Third, questions and objections or comments by the lawyers are not evidence. Lawyers have a duty to object when they believe a question is improper. You should not be influenced by any objection, and you should not infer from my rulings that I have any view as to how you should decide the case. Fourth, the lawyers opening statements and closing arguments to you are not evidence. Their purpose is to discuss the issues and the evidence. If the evidence as you remember it differs from what the lawyers said, your memory is what counts.
1.07 NOTE-TAKING Any notes you have taken during this trial are only aids to your memory. The notes are not evidence. If you have not taken notes, you should rely on your independent recollection fo the evidence and not be unduly influenced by the notes of other jurors. Notes are not entitled to any greater weight than the recollections or impressions of each juror about the testimony.
1.08 CONSIDERATION OF ALL EVIDENCE REGARDLESS OF WHO PRODUCED In determining whether any fact has been proved, you should consider all of the evidence bearing on the question regardless of who introduced it.
1.09 LIMITED PURPOSE OF EVIDENCE You will recall that during the course of this trial I instructed you that I admitted certain evidence for a limited purpose. You must consider this evidence only for the limited purpose for which it was admitted.
1.11 WEIGHING THE EVIDENCE You should use common sense in weighing the evidence and consider the evidence in light of your own observations in life. In our lives, we often look at one fact and conclude from it that another fact exists. In law we call this inference. A jury is allowed to make reasonable inferences. Any inference you make must be reasonable and must be based on the evidence in the case.
1.13 TESTIMONY OF WITNESSES (DECIDING WHAT TO BELIEVE) You must decide whether the testimony of each of the witnesses is truthful and accurate, in part, in whole, or not at all. You also must decide what weight, if any, you give to the testimony of each witness. In evaluating the testimony of any witness, you may consider, among other things: the ability and opportunity the witness had to see, hear, or know the things that the witness testified about; the witnesss memory; any interest, bias, or prejudice the witness may have; the witnesss intelligence; the manner of the witness while testifying; and the reasonableness of the witnesss testimony in light of all the evidence in the case.
1.17 NUMBER OF WITNESSES You may find the testimony of one witness or a few witnesses more persuasive than the testimony of a larger number. You need not accept the testimony of the larger number of witnesses.
1.18 ABSENCE OF EVIDENCE The law does not require any party to call as a witness every person who might have knowledge of the facts related to this trial. Similarly, the law does not require any party to present as exhibits all papers and things mentioned during this trial.
1.21 EXPERT WITNESSES You have heard witnesses give opinions about matters requiring special knowledge or skill. You should judge this testimony in the same way that you judge the testimony of any other witness. The fact that such person has given an opinion does not mean that you are required to accept it. Give the testimony whatever weight you think it deserves, considering the reasons given for the opinion, the witnesss qualifications, and all of the other evidence in the case.
1.24 DEMONSTRATIVE EXHIBITS MODIFIED Certain demonstrative exhibits have been shown to you to clarify or illustrate testimony in this case. Those demonstrative exhibits are used for convenience and to help explain the facts of the case. They are not themselves evidence or proof of any facts.
1.27 BURDEN OF PROOF When I say a particular party must prove something by a preponderance of the evidence, or when I use the expression if you find, or if you decide, this is what I mean: When you have considered all the evidence in the case, you must be persuaded that it is more probably true that not true.
1.28 CLEAR AND CONVINCING EVIDENCE When I say that a particular party must prove something by clear and convincing evidence, this is what I mean: When you have considered all of the evidence, you are
convinced that it is highly probable that it is true.
1.32 SELECTION OF PRESIDING JUROR; GENERAL VERDICT Upon retiring to the jury room, you must select a presiding juror. The presiding juror will preside over your deliberations and will be your representative here in court. Forms of verdict have been prepared for you. [Forms of verdict read.] Take these forms to the jury room, and when you have reached unanimous agreement on the verdict, your presiding juror will fill in, date, and sign the appropriate form.
1.33 COMMUNICATION WITH COURT I do not anticipate that you will need to communicate with me. If you do need to communicate with me, the only proper way is in writing. The writing must be signed by the presiding juror, or, if he or she is unwilling to do so, by some other juror. The writing should be given to the marshal, who will give it to me. I will respond either in writing or by having you return to the courtroom so that I can respond orally.
1.34 DISAGREEMENT AMONG JURORS The verdict must represent the considered judgment of each juror. Your verdict, whether for or against the parties, must be unanimous. You should make every reasonable effort to reach a verdict. In doing so, you should consult with one another, express your own views, and listen to the opinions of your fellow jurors. Discuss your differences with an open mind. Do not hesitate to reexamine your own views and change your opinion if you come to believe it is wrong. But you should not surrender your honest beliefs about the weight or effect of evidence solely because of the opinions of other jurors or for the purpose of returning a unanimous verdict. All of you should give fair and equal consideration to all the evidence and deliberate with the goal of reaching an agreement that is consistent with the individual judgment of each juror. You are impartial judges of the facts.
SUMMARY OF PATENT AND TRADE DRESS ISSUES I will now summarize the issues that you must decide and for which I will provide instructions to guide your deliberations. You must decide the following three main issues: 1. Whether the Plaintiff has proved that the Defendant infringed the design claimed by the 754 Design Patent or its unregistered trade dress. 2. Whether the Defendant has proved that the 754 Design Patent and Plaintiffs unregistered trade dress are invalid. 3. What amount of damages, if any, the Plaintiff has proved.
7.1 CLAIM CONSTRUCTION GENERALLY (Modified) Before you decide whether Systems has infringed Nordocks patent or whether Nordocks patent is invalid, you will have to understand the design patent claim. The design patent claim states that it covers the design as shown and described. The figure drawings are intended to define the boundaries of the claimed design. A design patent can only have one claim.
7.2 CLAIM CONSTRUCTION FOR THE CASE (Modified) It is my job as judge to provide to you the meaning of the claim of the asserted 754 Design Patent. You must accept the meaning that I give you and use it when you decide whether the design patent has been infringed and whether the design patent is invalid. The scope of the claim encompasses the designs visual appearance as a whole and in particular the visual impression it creates. It does not cover any broad general design concept. Taking into account all figures in the patent, you must consider all of the visual features of the 754 Design Patent as a whole and not merely isolated portions or individual features of the claimed design. All matter depicted in solid lines contributes to the overall appearance of the design. Any features shown in broken lines in the drawings of the754 Design Patent and described in the specification as disclaimed are excluded from the claimed design. Failure to show features in broken lines signals inclusion of such features in the claimed design. The various features of the overall appearance of the design may perform a function that is the nature of an article of manufacture for which this design patent has been granted. If such functional features are illustrated in solid lines, they are part of the claimed design based on how they contribute to the overall visual appearance. When considering the design patent, you should view certain features in the drawings in this way: 754 Design Patent The 754 Design Patent claims the ornamental design of a lip and hinge plate for a dock leveler as shown in Figures 1-7. The broken lines constitute unclaimed subject matter and form no part of the claimed design.
8.1 DESIGN PATENTINFRINGEMENT GENERALLY (Modified) I will now instruct you as to the rules you must follow when deciding whether Nordock has proven that Systems has directly infringed the 754 Design Patent. Patent law gives the owner of a valid design patent the right to exclude others from importing, making, using, offering to sell, or selling the patented designs within the United States during the term of the patent. Any person or company that has engaged in any of those acts without the design patent owners permission infringes the patent. You have heard evidence about both Nordocks commercial INDUSTRIAL, DUAL DUTY, AIRDOCK, HEAVY DUTY and COLDSTORAGE levelers and Systems accused LMP, LHP, LMD and LHD levelers. However, unless I have instructed you otherwise, in deciding the issue of infringement you may not compare Systems accused LMP, LHP, LMD and LHD levelers to Nordocks commercial INDUSTRIAL, DUAL DUTY, AIRDOCK, HEAVY DUTY and COLDSTORAGE levelers. Rather, you must compare Systems accused LMP, LHP, LMD and LHD levelers to the 754 Design Patent when making your decision regarding infringement. In deciding whether a sale has taken place within the United States, you may find the following guidelines helpful to your analysis: The location of the sale depends on many factors, and you may find that the sale occurred in several places. A sale occurs wherever the essential activities of the sale take place. The essential activities include, for example, negotiating the contract and performing obligations under the contract. Nordock bears the burden of proving by a preponderance of the evidence that each of Systems accused products infringes the 754 Design Patent. Therefore, you, the jury, must determine infringement considering each individual product separately.
8.2 DIRECT INFRINGEMENT KNOWLEDGE OF PATENT OR INTENT TO INFRINGE IS IMMATERIAL In this case, Nordock asserts that Systems has directly infringed the patent. Systems would be liable for directly infringing Nordocks patent if you find that Nordock has proven that it is more likely than not that Systems has made, used, offered to sell, or sold the design defined Nordocks patent. This standard of proof is called the preponderance of evidence. Someone can directly infringe a patent without knowing that what they are doing is an infringement of the patent. They also may directly infringe a patent even though they believe in good faith that what they are doing is not an infringement of any patent.
8.3 DIRECT INFRINGEMENT To determine infringement, you must compare the overall appearances of the accused design and the claimed design (using my instructions as to the meaning of the claimed design). Before conducting your infringement analysis, you must familiarize yourself with all of the prior art designs that have been brought to your attention in this litigation. In view of this prior art, if you find that, by a preponderance of evidence, the overall appearance of the accused design is substantially the same as the overall appearance of the claimed design, then you must find that the accused design infringes the design patent. In conducting this analysis, keep in mind that minor differences between the patented and accused designs should not prevent a finding of infringement. In weighing your decision, you should consider any perceived similarities or differences. When evaluating designs, be it the claimed design, accused design, and prior art designs, you should always focus on the overall appearance of a design, and not individual features. You should consider and weigh any perceived similarities and differences. In conducting your analysis, you may find the following guidelines helpful: 1. When the claimed design is visually close to the prior art designs, small differences between the accused design and the claimed design may be important to your analysis as to whether the overall appearance of the accused design is substantially the same as the overall appearance of claimed design. 2. If the accused design includes a particular feature of the claimed design that departs conspicuously from the prior art, you may find the inclusion of that feature important to your analysis as to whether the overall appearance of the accused design is substantially the same as the overall appearance of claimed design.
3.
If the accused design is visually closer to the claimed design than it is to the closest prior art, you may find this comparison important to your analysis as to whether the overall appearance of the accused design is substantially the same as the overall appearance of claimed design.
While these guidelines may be help to your analysis, please keep in mind that the sole test for infringement is whether you believe that the overall appearance of the accused design is substantially the same as the overall appearance of the claimed design. If you find that the accused design is substantially the same, then you must find that the accused design infringes the design patent.
DESIGN PATENT DIRECT INFRINGEMENTCOMPARISONS In deciding the issue of infringement you must compare the front end design of Systems accused products to the claimed design of the 754 Design Patent. In addition, you have heard evidence about certain Nordock products and models. If you determine that any of Nordocks products or models are substantially the same as the design claimed by Nordocks 754 Design Patent, and that the product or model has no significant distinctions with the claimed design, you may compare the front end design of the Nordock product or model directly to the front end design of the accused Systems products. This may facilitate your determination of whether the accused products infringe the Nordocks 754 Design Patent. If you determine that a particular Nordock product or model does not embody the claimed design of the 754 Design Patent, you may not compare it to the accused Systems product.
9.1 INVALIDITY CONTENTIONS OF THE PARTIES Systems contends that the 754 Design Patent is invalid or not enforceable. Systems must prove by clear and convincing evidence that each design patent is invalid. An issued design patent may be found to be invalid due to (a) anticipation by a single reference; (b) obvious in view of multiple references; (c) offered for sale to the public or in commercial use more than one year before the patent filing or (d) inequitable conduct by the inventor or his or her attorneys; Thus, you must determine whether the 754 Design Patent is invalid. Systems contends that the 754 Design Patent is invalid for the following reasons: [Insert invalidity contentions] I will now instruct you in more detail why Systems alleges that the asserted claim of the 754 Design Patent is invalid.
9.2 SCOPE AND CONTENT OF PRIOR ART (Modified) Before I describe how to assess whether Nordocks 754 Design Patent is invalid, I will instruct you about documents and things called prior art. Prior art includes any of the following items received into evidence during trial: 1. Any design or product that was publicly known or used by others in the United States, or patented or described in a printed publication in the United States or a foreign country, before the patented design was made; 2. Patents and design registrations that were published or issued more than one year before the filing date of the patent, or before the design was made; 3. Publications having a date more than one year before the filing date of the patent, or before the design was made; 4. Any design or product that was in public use or on sale in the United States more than one year before the patent was filed; 5. Any design or product that was made by anyone before the named inventors created the patented design or product where the design or product was not abandoned, suppressed, or concealed. [ADD ANY ADDITIONAL TYPES OF PRIOR ART] Denis Gleason conceived the ornamental design of the 754 Design Patent in about November 2001. The first drawings were produced and the first offer to sell was made in about January 2002. The first shipment of the product was in about March 2002, and the first use was in about April 2002. The original patent application disclosing the claimed design of the 754 Design Patent was filed on December 23, 2002, and the 754 Design Patent properly asserts December 23, 2002 as its date of priority.
In this case, Systems contends that the following items are prior art: [identify prior art by name]
9.3 ANTICIPATION A SINGLE REFERENCE OR A SINGLE PRODUCT (Modified) A person cannot obtain a design patent if someone else already has made an identical version of the design. Simply put, the design must be new. A design that is not new or novel is said to be anticipated by the prior art. Under the U.S. patent laws, a design that is anticipated is not entitled to patent protection. To prove anticipation, Systems must prove with clear and convincing evidence that the claimed design is not new. In this case, Systems contends that the 754 Design Patent is anticipated. [DESCRIBE BRIEFLY EACH BASIS FOR THE DEFENDANTS INVALIDITY DEFENSE] To find that a design patent is anticipated, the jury must find that, to an ordinary observer, the prior art reference is identical in all material respects to the claimed design. You must keep this requirement in mind and apply it to each kind of anticipation you consider in this case.
DESIGN PATENTSOBVIOUSNESS Even if a design is not anticipated by a single reference, it may still be invalid if the claimed design would have been obvious to a designer of ordinary skill in the field at the time the design was made. Unlike anticipation, which allows consideration of only one item of prior art, obviousness may be shown by considering more than one item of prior art. The ultimate conclusion of whether a claimed design is obvious should be based upon your determination of several factual decisions. First, you must decide the level of ordinary skill in the field of the patent at the time the claimed design was made. In deciding this, you should consider all the evidence from trial, including: (1) (2) (3) the levels of education and experience of persons designing articles in the field; the types of problems encountered in designing articles in the field; and the sophistication of the field.
Second, you must determine if a designer of ordinary skill in these designs would have combined the prior art references or modified a single prior art reference to create the same overall visual appearance as the claimed design. To do this, you must consider whether Systems has identified a primary prior art reference. A primary reference must be an actual design which creates basically the same visual impression as the patented design. If you identify a primary reference, you must then consider whether Systems has identified one or more secondary prior art references. Secondary references are other references that are so visually related to the primary reference that the appearance of certain ornamental features in the other references would suggest the application of those features to the primary reference. If you find that there are one or more such secondary references, you must
determine if a designer of ordinary skill in these designs would have combined these references to create the same overall visual appearance as the claimed design. Finally, before deciding the issue of obviousness, you must consider other factors that might show that the designs were not obvious despite the prior art. You may only consider those factors that Nordock has established through evidence admitted at trial. No one factor alone is dispositive: (1) Were products covered by the claimed design commercially successful due to the appearance of the claimed design? (2) Was there a long felt need for a new look or design of the subject product? (3) Did others copy the claimed design? (4) Did the claimed design achieve an unexpectedly superior appearance over the closest prior art? (5) Did others in the field praise the claimed design or express admiration for the claimed design? Answering any, or all, of these questions yes may suggest that the claim was not obvious. In deciding whether the claimed design was obvious, keep in mind that a design with several features is not obvious merely because each individual feature was present in prior art designs. You must always be careful not to determine obviousness using the benefit of hindsight. You should put yourself in the position of a person of ordinary skill in the field at the time the claimed design was made and should not consider what is known today.
9.8 OBVIOUSNESS DIFFERENCES WITH THE PRIOR ART You should analyze whether there are any relevant differences between the prior art and the claimed design from the view of a designer of ordinary skill in the art at the time the design was created. Your analysis must determine the impact, if any, of such differences on the obviousness or non-obviousness of the design as a whole, and not merely some portion of it. The scope of the relevant prior art for purposes of evaluating obviousness extends to all analogous arts. The field of analogous art depends on the type of design. If the design relates to the surface appearance of an article, then any prior art that discloses a similar surface appearance would be analogous art. However, if the design relates to the form of the article, then the field of analogous art is limited to similar types of articles. In analyzing the relevance of the differences between the claimed design and the prior art, you do not need to look for precise appearance in the prior art directed to the nature or subject matter of the claimed design. You may take into account the inferences and creative steps that a designer of ordinary skill in the art would have employed in reviewing the prior art at the time of the creation of the design. For example, combining known elements in a known fashion is generally not patentable. On the other hand, a new material element may be combined with an existing element and if that overall combination creates a new and new and integral design, then the patent is non-obvious. Importantly, a design is not proved obvious merely by demonstrating that each of the elements was independently known in the prior art. Most, if not all, designs rely on building blocks long since uncovered, and claimed discoveries almost of necessity will likely be combinations of what is already known. Therefore, you should consider whether a reason existed at the time of the creation of the design that would have prompted a person of ordinary skill in the art in the relevant field to combine the known elements in the way the claimed design does.
The reason could come from the prior art, the background knowledge of one of ordinary skill in the art, the nature of the problem to be solved, market demand, or common sense. If the prior art discouraged a designer of ordinary skill from following the path set out in the reference or would be led in a different direction, then the design is non-obvious. If you find that a reason existed at the time of the creation of the design to combine the elements of the prior art to arrive at the claimed design, this evidence would make it more likely that the claimed design was obvious.
9.9 DESIGNER OF ORDINARY SKILL IN THE ART The determination of whether a claimed design is obvious is based on the perspective of the ordinary designer skilled in the art. The ordinary designer skilled in the art is presumed to be familiar with all of the prior art designs that you have determined to be reasonably relevant. When determining the identity of the designer of ordinary skill in the art, you should keep in mind that the designer of ordinary skill is not any designer, but one who designs articles of the type involved.
DESIGN PATENTSINVALIDITYLACK OF ORNAMENTALITY Design patents protect the ornamental appearance, including shape or configuration, of an article of manufacture. If Systems proves by clear and convincing evidence that the overall appearance of the Nordock 754 Design Patent is dictated by how the article claimed in the patent works, the patent is invalid because the design is not ornamental. In other words, the inventor did not design anything because in order to achieve the function of the design, it had to be designed that way. When deciding this, you should keep in mind that design patents must be for articles of manufacture, which by definition have inherent functional characteristics. It is normal that claimed designs perform some function that does not disqualify them from patent protection. In determining whether a design is dictated by functionality, you may consider whether the protected design represents the best design; whether alternative designs would adversely affect the utility of the specified article; whether there are any concomitant utility patents; whether the advertising touts particular features of the design as having specific utility; and whether there are any elements in the design or an overall appearance clearly not dictated by function. When there are several other designs that achieve the function of an article of manufacture, the design of the article is more likely to serve a primarily ornamental purpose. However, this may not be true if the other designs adversely affect the utility of the article.
DESIGN PATENT DAMAGESBURDEN OF PROOF I will instruct you about the measure of damages for infringement of Nordocks design patents. By instructing you on damages, I am not suggesting which party should win on any issue. If you find that Systems infringed the 754 Design Patent, you must then determine the money damages to award Nordock. The amount of those damages must be adequate to compensate Nordock for the infringement. You should keep in mind that the damages you award are meant to compensate the patent holder and not to punish an infringer. For design patents, Nordock can elect to prove either actual damages, known as compensatory damages, or it may elect to prove the defendants profits as its measure of potential recovery with respect to the sale of each unit of an infringing product. As compensatory damages, Nordock may prove either its own lost profits, or a reasonable royalty for the design patent. Nordock is not entitled to recover both compensatory damages and the defendants profits on the same sale. Nordock has the burden to prove that Nordocks calculation of damages is correct by a preponderance of the evidence. While Nordock is not required to prove its damages with mathematical precision, it must prove them with reasonable certainty. Nordock is not entitled to damages that are remote or speculative.
DESIGN PATENT DAMAGESDEFENDANTS PROFITS In this case, Nordock seeks Systems profits from sales of products alleged to infringe the 754 Design Patent. If you find infringement by Systems and do not find the 754 Design Patent is invalid, you may award Nordock the amount of Systems total profit attributable to the sale of its infringing products. The total profit of Systems means the entire profit on the sale of the article to which the patented design is applied, and not just the portion of profit attributable to the design or ornamental aspects covered by the patent. Total profit does not include profit attributable to other products that may be sold in association with an infringing article embodying the patented design. If you find infringement by Systems, Nordock is entitled to all profit earned by that defendant on sales of articles that infringe Nordocks 754 Design Patent. Profit is determined by deducting certain expenses from gross revenue. Gross revenue is all of the infringers receipts from the sale of articles using any design found infringed. Nordock has the burden of proving the infringing defendants gross revenue by a preponderance of the evidence. Expenses can include costs incurred in producing the gross revenue, such as the cost of the goods. Other costs may be included as deductible expenses if they are directly attributable to the sale or manufacture of the infringing products resulting in a nexus between the infringing products and the expense. Systems has the burden of proving the deductible expenses.
DESIGN PATENT DAMAGESLOST PROFITS Nordock may alternatively recover compensatory damages in the form of lost profits. As previously explained, Nordock may not recover both Systems profits and compensatory damages on each sale of an infringing product.
DESIGN PATENT DAMAGES LOST PROFITS GENERALLY In this case, Nordock seeks to recover lost profits for some of Systems sales of allegedly infringing products, and a reasonable royalty on the rest of Systems allegedly infringing sales. To recover lost profits for infringing sales, Nordock must show that but for the infringement, there is a reasonable probability that it would have made sales that Systems made of the infringing products. Nordock must show the share of Systems sales that it would have made if the infringing products had not been on the market.
DESIGN PATENT DAMAGESLOST PROFITSFACTORS TO CONSIDER Nordock is entitled to lost profits if it proves all of the following: (1) (2) there was demand for the patented design; there were no acceptable non-infringing alternatives, or, if there were, that Nordock lost some sales as a result of the infringing activity; (3) Nordock had the manufacturing and marketing capacity to make any infringing sales actually made by Systems; and (4) the amount of profit that Nordock would have made if Systems had not infringed.
DESIGN PATENT DAMAGESLOST PROFITSAMOUNT OF PROFIT If you conclude that Nordock has proved that it lost profits because of Systems infringement, the lost profits that you award should be the amount that Nordock would have made on any sales that Nordock lost because of the infringement, minus the additional costs that Nordock would have incurred in making those sales, plus the amount by which Nordocks profits on its own sales were decreased as a result of reduced prices or increased costs caused by Systems infringement.
DESIGN PATENT DAMAGESREASONABLE ROYALTY If Nordock has not proved its claim for lost profits or has not proved its claim to Systems profits, then Nordock should be awarded a reasonable royalty for all infringing sales by Systems. In no event should the damages you award Nordock for design patent infringement be less than a reasonable royalty.
DESIGN PATENT DAMAGESREASONABLE ROYALTYDEFINITION If Nordock has not proved its claim for lost profits, or has proved its claim for lost profits for only a portion of the infringing sales, then Nordock should be awarded a reasonable royalty for all infringing sales for which it has not been awarded lost profits damages. A royalty is a payment made to a patent holder in exchange for the right to make, use or sell the claimed design. This right is called a license. A reasonable royalty is the payment for the license that would have resulted from a hypothetical negotiation between the patent holder and the infringer taking place at the time when the infringing activity first began. In considering the nature of this negotiation, you must assume that the patent holder and the infringer would have acted reasonably and would have entered into a license agreement. You must also assume that both parties believed the patent was valid and infringed. Your role is to determine what the result of that negotiation would have been. The test for damages is what royalty would have resulted from the hypothetical negotiation and not simply what either party would have preferred. A royalty can be calculated in several different ways and it is for you to determine which way is the most appropriate based on the evidence you have heard. One way to calculate a royalty is to determine what is called an ongoing royalty. To calculate an ongoing royalty, you must first determine the base, that is, the product on which the infringer is to pay. You then need to multiply the revenue the defendant obtained from that base by the rate or percentage that you find would have resulted from the hypothetical negotiation. For example, if the patent covers a nail, and the nail sells for $1, and the licensee sold 200 nails, the base revenue would be $200. If the rate you find would have resulted from the hypothetical negotiation is 1%, then the royalty would be $2, or the rate of .01 times the base revenue of $200.
If the patent covers only part of the product that the infringer sells, then the base would normally be only that feature or component. For example, if you find that for a $100 car, the patented feature is the tires which sell for $5, the base revenue would be $5. However, in a circumstance in which the patented feature is the reason customers buy the whole product, the base revenue could be the value of the whole product. A second way to calculate a royalty is to determine a one-time lump sum payment that the infringer would have paid at the time of the hypothetical negotiation for a license covering all sales of the licensed product both past and future. This differs from payment of an ongoing royalty because, with an ongoing royalty, the licensee pays based on the revenue of actual licensed products it sells. When a one-time lump sum is paid, the infringer pays a single price for a license covering both past and future infringing sales. In determining a reasonable royalty, you may consider the following factors: (1) The royalties received by the patentee for the licensing of the patent-in-suit, proving or tending to prove an established royalty. (2) The rates paid by the licensee for the use of other patents comparable to the patent-in-suit. (3) The nature and scope of the license, as exclusive or nonexclusive, or as restricted or nonrestricted in terms of territory or with respect to whom the manufactured product may be sold. (4) The licensors established policy and marketing program to maintain his or her patent monopoly by not licensing others to use the patented design or by granting licenses under special conditions designed to preserve that monopoly.
(5)
The commercial relationship between the licensor and licensee, such as whether they are competitors in the same territory in the same line of business, or whether they are inventor and promoter.
DESIGN PATENT DAMAGESDATE OF COMMENCEMENTPRODUCTS Damages that Nordock may be awarded by you commence on the date that Systems has both infringed and been notified of the 754 Design Patent. If you find that Nordock sells products that include the claimed designs but has not marked those products with the patent numbers, you must determine the date that Systems received actual written notice of the patent and the specific products alleged to infringe. While you may identify an earlier date by which Systems had notice of Nordocks claims of infringement based on your evaluation of the evidence, Nordocks lawsuit provided Systems such notice for the 754 Design Patent by no later than May 19, 2009. For design patent infringement damages (as opposed to trademark infringement damages discussed below), the start date for calculating damages should not be earlier than the November 4, 2008 issue date to the 754 Design Patent. On the other hand, if you find that Nordock does not sell products covered by a patent, then damages begin without the requirement for actual notice under the following circumstances: For each infringed patent that was granted before the infringing activity began, damages should be calculated as of the date you determine that the infringement began; or For each infringed patent that was granted after the infringing activity began as determined by you, damages should be calculated as of the date the patent issued.
8.6 WILLFUL INFRINGEMENT Nordock asserts that Systems has willfully infringed Nordocks design patent. The issue of willful infringement is relevant to the amount of damages Nordock is entitled to recover in this lawsuit. However, if you decide that Systems willfully infringed the claim of Nordocks design patent, then it is my job to decide whether or not to award increased damages to Nordock. You should not take this factor into account in assessing the damages, if any, to be awarded to Nordock. To prove willful infringement, Nordock must first persuade you, through clear and convincing evidence, that Systems was aware of Nordocks design patent, and that it is highly probable that Systems acted recklessly, or in other words, acted despite an objectively high likelihood that its actions constituted infringement of a valid design patent. Thus, the state of mind of Systems is not relative to this objective inquiry. Legitimate or credible defenses to infringement, even if ultimately not successful, demonstrate a lack of recklessness. If the threshold objective standard is satisfied, Nordock must then persuade you that it is highly probable that this objectively-defined risk was either known or so obvious that it should have been know to Systems. To determine whether this objectively-defined risk was either known or so obvious that it should have been known to Systems, you should consider all the facts surrounding the alleged infringement including, but not limited to, the following: 1. whether Systems acted in a manner consistent with the standards of commerce for its industry; 2. whether Systems intentionally copied without a reasonable basis a product of Nordock covered by the claim of the 754 Design Patent, as distinguished from trying to design around the patent by designing a product that Systems believed did not infringe those claims;
3.
whether Systems presented a substantial defense to infringement, including the defense that the patent is invalid or unenforceable; and
4.
[INCLUDE ONLY IF THE DEFENDANT IS RELYING ON OPINION OF COUNSEL AS A DEFENSE TO ALLEGATION OF WILLFUL
INFRINGEMENT] whether Systems relied on competent legal advice.
TRADE DRESS INFRINGEMENTINTRODUCTION Nordock seeks damages against Systems for infringement of Nordocks unregistered front end design for its INDUSTRIAL, DUAL DUTY, AIRDOCK, HEAVY DUTY and COLDSTORAGE trade dress. Systems denies that it infringed Nordocks asserted trade dress and contends it is unprotectable. Here are the instructions you must follow in deciding Nordockss trade dress infringement claims.
TRADE DRESS INFRINGEMENTDEFINITION OF TRADE DRESS (15 U.S.C. 1125(A)) Trade dress is the non-functional physical detail and design of a product, which identifies the products source and distinguishes it from the products of others. Trade dress is the products, or portion thereofs, total image and overall appearance, and may include features such as size, shape, color, color combinations, texture, or graphics. In other words, trade dress is the form in which a person presents a product to the market, its manner of display. A trade dress is non-functional if, taken as a whole, the collection of trade dress elements is not essential to the products use or purpose or does not affect the cost or quality of the product even though certain particular elements of the trade dress may be functional. Trade dress concerns the overall visual impression created in the consumers mind when viewing the non-functional aspects of the product and not from the utilitarian or useful aspects of the product. In considering the impact of these non-functional aspects, which are often a complex combination of many features, you must consider the appearance of features together, rather than separately. A person who uses the trade dress of another may be liable for damages.
TRADE DRESS INFRINGEMENTPROTECTABILITY The first step in considering Nordocks claims that Systems infringed certain of Nordocks INDUSTRIAL, DUAL DUTY, AIRDOCK, HEAVY DUTY and COLDSTORAGE dock leveler trade dress is to determine whether or not each asserted trade dress is protectable. You need to make this determination for each of Nordocks asserted trade dresses. You must find that an asserted Nordock trade dress is protectable if the trade dress: 1. 2. has acquired distinctiveness through secondary meaning; and is non-functional.
For each unregistered AIRDOCK, HEAVY DUTY and COLDSTORAGE trade dress, Nordock bears the burden of proving by a preponderance of the evidence that the trade dress is both distinctive and non-functional. If you find that Nordock has met its burden, you must find that trade dress is protectable. Otherwise, you must find the trade dress unprotectable. For each Nordock trade dress that you find protectable, resolving whether System has infringed the trade dress will require you to assess additional questions that I will explain after addressing protectability more fully.
TRADE DRESS INFRINGEMENTPROTECTABILITYDISTINCTIVENESS SECONDARY MEANING To be protectable, Nordocks trade dresses must have acquired distinctiveness through secondary meaning. A trade dress acquires a secondary meaning when it has been used in such a way that its primary significance in the minds of the prospective consumers is not the product itself, but the identification of the product with a single source, regardless of whether consumers know who or what that source is. For each asserted Nordock trade dress, you must find that the preponderance of the evidence shows that a significant number of the consuming public associate the trade dress with a single source, in order to find that it has acquired secondary meaning. When you are determining whether each trade dress has acquired a secondary meaning, consider the following factors: 1. Consumer Perception. Whether the people who purchase dock levelers associate the claimed trade dress with Nordock; 2. Advertisement. To what degree and in what manner Nordock may have advertised featuring the claimed trade dress; 3. Demonstrated Success. Whether Nordock has successfully used the claimed trade dress to increase the sales of its products; 4. Extent of Use. The length of time and manner in which Nordock has used the claimed trade dress; 5. 6. Exclusivity. Whether Nordocks use of the claimed trade dress was exclusive; Copying. Whether Systems intentionally copied Nordocks alleged trade dress; and 7. Actual Confusion. Whether Systems use of Nordocks alleged trade dress has led to actual confusion among a significant number of consumers.
The presence or absence of any particular factor should not necessarily resolve whether the asserted trade dress has acquired secondary meaning. Nordock has the burden of proving by a preponderance of the evidence that its unregistered trade dresses have acquired a secondary meaning. The mere fact that Nordock is using the asserted trade dresses does not mean that they have acquired secondary meaning. There is no particular length of time that a trade dress must be used before it acquires a secondary meaning.
TRADE DRESS INFRINGEMENTPROTECTABILITY NON-FUNCTIONALITY REQUIREMENT A product feature is functional if it is essential to the products use or purpose, or if it affects the products cost or quality. However, if the feature serves no purpose other than as an assurance that a particular entity made, sponsored or endorsed the product, it is non-functional. A product feature is also non-functional if its shape or form makes no contribution to the products function or operation. To determine whether a products particular shape or form is functional, you should consider whether the design as a whole is functional, that is whether the whole collection of elements making up the design or form are essential to the products use or purpose. To determine whether a product feature is functional, you may consider the following factors: 1. The Designs Utilitarian Advantage. In considering this factor, you may examine whether the particular design or product feature yield a utilitarian advantage over how the product might be without that particular design or product feature. If there is a utilitarian advantage from having the particular design or feature, this would weigh in favor of finding the design or feature is functional; if it seems merely ornamental, incidental, or arbitrary it is more likely to be nonfunctional; 2. Availability of Alternate Designs. In considering this factor, you may examine whether an alternate design could have been used, so that competition in the market for that type of product would not be hindered by allowing only one person to exclusively use the particular design or configuration. For this to be answered in the affirmative, the alternatives must be more than merely theoretical or speculative. They must be commercially feasible. The unavailability of a sufficient number of alternate designs weighs in favor of finding the design or feature is functional;
3. Advertising Utilitarian Advantage in the Design. In considering this factor, you may examine whether the particular design or configuration has been touted in any advertising as a utilitarian advantage, explicitly or implicitly. If a seller advertises the utilitarian advantages of a particular feature or design, this weighs in favor of finding that design or feature is functional; and 4. The Designs Method of Manufacture. In considering this factor, you may examine whether the particular design or feature result from a relatively simple or inexpensive method of manufacture. If the design or feature is a result of a particularly economical production method, this weighs in favor of finding the design or feature is functional; if the feature is essential to the use or purpose of the device or affects its cost or quality, it is more likely functional. If you find that the preponderance of the evidence shows that the trade dress is essential to the products use or purpose, or that it affects the products cost or quality, then you must find the trade dress functional and thus unprotectable. In addition, if you find that the preponderance of the evidence shows that limiting Nordocks competitors use of the feature would impose a significant non-reputation-related competitive disadvantage, then you must find the trade dress functional and thus unprotectable. However, the fact that the feature contributes to consumer appeal and saleability of the product does not mean that the trade dress is necessarily functional. Nordock has the burden of proving by a preponderance of the evidence that its unregistered trade dresses are non-functional.
INFRINGEMENTELEMENTS AND BURDEN OF PROOFTRADE DRESS (15 U.S.C. 1125(A)(1)) Nordock also claims that the front end designs of Systems LMP, LHP, LMD and LHD dock levelers infringe the front end design trade dress of Nordocks INDUSTRIAL, DUAL DUTY, AIRDOCK, HEAVY DUTY and COLDSTORAGE dock levelers. To prove trade dress infringement, Nordock bears the burden of proving by a preponderance of the evidence each of the following elements: 1. the front end design trade dress of Nordocks INDUSTRIAL, DUAL DUTY, AIRDOCK, HEAVY DUTY and COLDSTORAGE dock levelers is nonfunctional. See Instruction No. __ above. 2. the front end design trade dress of Nordocks INDUSTRIAL, DUAL DUTY, AIRDOCK, HEAVY DUTY and COLDSTORAGE dock levelers has acquired distinctiveness through secondary meaning. See Instruction No. __ above. 3. Systems used the front end design trade dress of Nordocks INDUSTRIAL, DUAL DUTY, AIRDOCK, HEAVY DUTY and COLDSTORAGE dock levelers in a manner that is likely to cause confusion among ordinary consumers as to the source, sponsorship, affiliation, or approval of Systems goods. If you find that Nordock has proved each of these elements, your verdict should be for Nordock. If, on the other hand, Nordock has failed to prove any one of these elements, your verdict should be for Systems.
TRADE DRESS INFRINGEMENTSECONDARY MEANINGTIMING Nordock must prove by a preponderance of the evidence that its asserted front end design trade dress of its INDUSTRIAL, DUAL DUTY, AIRDOCK, HEAVY DUTY and COLDSTORAGE dock levelers acquired secondary meaning before Systems first sold a product that Nordock claims is infringing that trade dress. If you find that Nordock has not proved by a preponderance of the evidence that its asserted front end design trade dress of its INDUSTRIAL, DUAL DUTY, AIRDOCK, HEAVY DUTY and COLDSTORAGE dock leveler acquired secondary meaning before Systems began selling its accused LMP, LHP, LMD and LHD levelers with this trade dress, then you must find for Systems.
INFRINGEMENTLIKELIHOOD OF CONFUSION FACTORS SLEEKCRAFT TEST (15 U.S.C. 1114(1) and 1125(a)) You must decide whether Systems alleged use of the front end design trade dress of Nordocks INDUSTRIAL, DUAL DUTY, AIRDOCK, HEAVY DUTY and COLDSTORAGE dock levelers in the Systems LMP, LHP, LMD and LHD Series dock levelers1 is likely to cause confusion about the source, sponsorship, affiliation, or approval of Systems LMP, LHP, LMD and LHD dock levelers. Nordock must prove by a preponderance of the evidence that a reasonably prudent consumer in the marketplace is likely to be confused about the source of Systems LMP, LHP, LMD and LHD dock levelers. Nordock must show more than simply a possibility of such confusion. Nordock may prove a likelihood of confusion by providing direct evidence of consumer confusion. Evidence of non-consumer confusion may also be relevant where there is confusion on the part of: (1) potential customers; (2) non-consumers whose confusion could create an inference that consumers are likely to be confused; and (3) nonconsumers whose confusion could influence consumers. I will suggest some factors you should consider in deciding whether there is a likelihood of confusion. The presence or absence of any particular factor that I suggest should not necessarily resolve whether there was a likelihood of confusion, because you must consider all relevant evidence in determining this. As you consider the likelihood of confusion you should examine the following: 1. Strength or Weakness of Nordocks Asserted Trade Dress. The more the
consuming public recognizes the front end design trade dress of Nordocks INDUSTRIAL, DUAL DUTY, AIRDOCK, HEAVY DUTY and COLDSTORAGE dock levelers as an indication of origin of Nordocks goods, the more likely it is that
consumers would be confused about the source of Systems goods if Systems uses a similar design or configuration. 2. Similarity of the Goods. If Nordock and Systems use the subject designs
on the same, related, or complementary kinds of goods, there may be a greater likelihood of confusion about the source of the goods than otherwise. 3 Similarity of the Designs. If the overall impression created by Nordocks
asserted front end design trade dress of its INDUSTRIAL, DUAL DUTY, AIRDOCK, HEAVY DUTY and COLDSTORAGE dock levelers in the marketplace is similar to that created by Systems front end designs in appearance, there is a greater chance of likelihood of confusion. 4. Actual Confusion. If use by Systems of Nordocks asserted front end
design trade dress of its INDUSTRIAL, DUAL DUTY, AIRDOCK, HEAVY DUTY and COLDSTORAGE dock levelers has led to instances of actual confusion, this suggests a likelihood of confusion. However actual confusion is not required for a finding of likelihood of confusion. Even if actual confusion did not occur, Systems use of the trade dresses may still be likely to cause confusion. As you consider whether the design used by Systems creates for consumers a likelihood of confusion with Nordocks products, you should weigh any instances of actual confusion against the opportunities for such confusion. If the instances of actual confusion have been relatively frequent, you may find that there has been substantial actual confusion. If, by contrast, there is a very large volume of sales, but only a few isolated instances of actual confusion, you may find that there has not been substantial actual confusion. 5. Systems Intent. Knowing use by Systems of Nordocks asserted front
end design trade dress of its INDUSTRIAL, DUAL DUTY, AIRDOCK, HEAVY DUTY
and COLDSTORAGE dock levelers to identify similar goods may show an intent to derive benefit from the reputation of Nordocks trade dress, suggesting an intent to cause a likelihood of confusion. On the other hand, even in the absence of proof that Systems acted knowingly, the use of Nordocks trade dress to identify similar goods may indicate a likelihood of confusion. 6. Marketing/Advertising Channels. If Nordocks and Systems goods are
likely to be sold in the same or similar stores or outlets, or advertised in similar media, this may increase the likelihood of confusion. 7. Purchasers Degree of Care. The more sophisticated the potential buyers
of the goods or the more costly the goods, the more careful and discriminating the reasonably prudent purchaser exercising ordinary caution may be. They may be less likely to be confused by similarities in the Nordock and Systems products.
TRADE DRESS DAMAGES IN GENERAL If you find that Nordock has proven by a preponderance of the evidence that Systems has infringed upon any of Nordocks trade dresses, then there are two forms of monetary relief to which Nordock may be entitled: Nordocks actual damages or Systems profits. In determining the amount of money to award Nordock for its trade dress claims, you must determine the date on which damages began to accrue. Damages for trade dress infringement of Nordocks unregistered trade dresses started on the date that the infringing conduct of an unregistered Nordock trade dress began. You may award Nordock money damages for all violations that occurred on the date the products that infringed each unregistered Nordock trade dress were released and any date after that. Proof of damages to a certainty is not required. However, the burden is on Nordock to show any damages to a reasonable certainty, and awarded damages may not be speculative.
TRADE DRESS DAMAGESPLAINTIFFS ACTUAL DAMAGES (15 U.S.C. 1117(a)) If you find for Nordock on its trade dress infringement claims, you must determine Nordocks actual damages. Nordock has the burden of proving by a preponderance of the evidence the actual damages it has suffered. Damages means the amount of money which will reasonably and fairly compensate Nordock for any injury you find was caused by any Systems infringement of Nordocks unregistered trade dresses. You should consider the profits that Nordock would have earned but for Systems infringement. Such lost profits are determined by deducting all expenses from gross revenue.
TRADE DRESS DAMAGESDEFENDANTS PROFITS (15 U.S.C. 1117(a)) In addition to actual damages, Nordock is entitled to any profits earned by the Systems that are attributable to willful infringement, which Nordock proves by a preponderance of the evidence. You may not, however, include in any award of profits any amount that you took into account in determining actual damages. Profit is determined by deducting all expenses from gross revenue. Gross revenue is each of the Systems sales of products that infringed Nordocks trade dresses. Nordock has the burden of proving the gross revenues of each Systemssales of products that infringed Nordocks trade dresses by a preponderance of the evidence. Expenses are all operating, overhead, and production costs incurred in producing the gross revenue. Systems has the burden of proving the expenses and the portion of the profit attributable to factors other than use of the infringed trade dress by a preponderance of the evidence. Unless you find that Systems has proven that a portion of the profit from the sale of its products that infringed any Nordock trade dress is attributable to factors other than use of the trade dress, you shall find that the total profit is attributable to the infringement.
MONETARY REMEDIESONLY ONE RECOVERY PER ACCUSED SALE You should award any remedy Nordock has proven it is entitled with respect to each sale of an accused dock leveler, except that you should not award a party twice for the same sale of any accused dock leveler. This means that if you award Nordocks profits under trade dress or design patent infringement for the sale of a certain number of accused LMP, LHP, LMD and LHD dock levelers, you may not also award reasonable royalties or lost profits for those same sales. If you award reasonable royalties or lost profits for the sale of a certain number of accused LMP, LHP, LMD and LHD dock levelers, you may not award Systems profits as to those accused dock levelers. You do not have to use the same theory to calculate damages for every sale, however. For example, an award may be split between lost profits for some sales and a reasonable royalty for the remainder of sales of a product that infringes a patent and/or infringes a trade dress. For any sale where you measure damages by a reasonable royalty or lost profits, you may include royalty amounts or lost profits for the 754 Design Patent that you find valid and infringed by the sale. If a sale is awarded one form of monetary recovery, that same sale cannot be awarded another form of monetary recovery.

Nordock Pretrial Report

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Nordock Pretrial Report

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IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF WISCONSIN NORDOCK, INC. Plaintiff, v. SYSTEMS, INC.

CIVIL ACTION: 11-CV-0118 District Judge Rudolph T. Randa

Magistrate Judge William E Callahan

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WITNESSES See attached Plaintiffs Witness List.

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CIVIL ACTION: 11-CV-0118 District Judge Rudolph T. Randa

Magistrate Judge William E Callahan

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CIVIL ACTION: 11-CV-0118 District Judge Rudolph T. Randa

Magistrate Judge William E Callahan

PLAINTIFFS DEPOSITION TRANSCRIPT DESIGNATIONS

Pilgrim 4/18/12 from to (page:line) (page:line)

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Bero 8/24/12 from to (page:line) (page:line) 73:24 75:8 79:21 80:6

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CIVIL ACTION: 11-CV-0118 District Judge Rudolph T. Randa

Magistrate Judge William E Callahan

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Front End of COLDSTORAGE 7 Wide

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CIVIL ACTION: 11-CV-0118 District Judge Rudolph T. Randa

Magistrate Judge William E Callahan

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CIVIL ACTION: 11-CV-0118 District Judge Rudolph T. Randa

Magistrate Judge William E Callahan

OFFERS, OBJECTIONS , RULINGS, EXCEPTIONS

NOR SJ Motion Exhibit

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