IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF WISCONSIN

NORDOCK, INC. )
) CIVIL ACTION: 11-CV-0118
Plaintiff, )
) Magistrate Judge William Duffin
v. )
)
SYSTEMS, INC. )
)
Defendant. )

PLAINTIFFS CIVIL L. R. 7(h) EXPEDITED NON-DISPOSITIVE MOTION TO

CERTIFY FOR IMMEDIATE APPEAL THE COURTS ORDER DATED NOVEMBER
21, 2017, AND TO STAY PROCEEDINGS PENDING CERTIFICATION AND APPEAL

Plaintiff, Nordock, Inc. (Nordock), hereby moves the Court for an order certifying its

Order dated November 21, 2017 (ECF No. 270) for immediate appeal to the Federal Circuit

pursuant to 28 U.S.C. 1292(b) for an order regarding the appropriate factors for determining the

article of manufacture in a design patent case. When seeking relief under 1292(b), a party must

show that the issue is a controlling question of law as to which there is substantial ground for

differences of opinion, and an immediate appeal will advance the ultimate termination of the

case. For the reasons discussed below, certification should be granted. Certification can advance

the ultimate termination of a case, resolve issues standing in the way of settlement and whose

resolution would aid in developing the law, and reduce the overall workload of the court.

Howard Eisenberg and Alan Morrison, Discretionary Appellate Review of Non-Final Orders:

Its Time to Change the Rules, 1 J. App. Prac. & Process 285, 291-95 (1999). Given the national

importance of the issue, the question is not if this issue will reach the Federal Circuit, but when.

Determining the article of manufacture factors is a controlling issue of law. As this court

stated: [T]he foremost issue is determining the test that should apply for identifying the article

of manufacture. (ECF No. 270, at 5). The Courts decision sets forth the relevant factors - the
1

Case 2:11-cv-00118-WED Filed 12/05/17 Page 1 of 4 Document 273

Government proposed four-factor test from its amicus brief in Samsung. (ECF No. 270, at 13). Now

that the court has determined the four-factor article of manufacture test that applies, 1292(b)

provides a procedural mechanism to determine whether this determination is correct before

delving into costly and protracted litigation and trial.

Section 1292(b) requires that there be substantial ground for differences of opinion

regarding the appropriate factors. This requirement is clearly present. The Supreme Courts

Samsung decision does not endorse the Government four-factor test, and the Federal Circuit has

never considered any of these four factors. Samsung Elect. Co. Ltd. v. Apple, Inc., 137 S. Ct. 429

(2016). While the Courts Samsung decision reversed the Federal Circuits one factor not sold

separately test as not consistent with 289, the Court concurred with the statutory history and

construction of 289 set forth in the Federal Circuits Nike decision. Apple Inc. v. Samsung

Elecs. Co., 786 F.3d 983, 1001-02 (Fed. Cir. 2015) (citing Nike, Inc. v. Wal-Mart Stores, Inc.,

138 F.3d 1437, 1440-43 (Fed. Cir. 1998)). The Nike decision placed significant weight on the

sale and infringers profits to determine the total profit damages. Id. at 1440-43, 47-48.

The Courts Samsung decision does not criticize the Nike decision. Yet, the Governments four-

factor test places little or no significance on the Nike decision. The substantial grounds for

difference of opinion are further evidenced by the fact that many manufacturers and designers

filed, or participated in the filing of, numerous amicus briefs opposing the Governments

proposed four-factor test, providing compelling arguments for contrary tests. See, e.g., Brief for

Bison Designs, LLC, et al. as Amici Curiae in Support of Respondent, Samsung, 137 S. Ct. 429

(2016) (No. 15-777), pp. 29-32. These manufacturers design and sell a wide spectrum of

products notably dissimilar to a smartphone. Thus, there is reason to believe the Federal Circuit

could reach a different decision when determining appropriate article of manufacture factors.

Case 2:11-cv-00118-WED Filed 12/05/17 Page 2 of 4 Document 273

 There is uncertainty regarding the appropriate factors for an article of manufacture test,

and an immediate appeal would clear up this uncertainty in this litigation and across the country,

thus advancing the ultimate termination of this case. It is unlikely the parties will be able to settle

this case prior to a final determination on the proper test to determine the article of manufacture.

If an immediate appeal is not allowed, one or both of the parties will likely appeal after trial, and

any remand at that time will likely require yet another trial in this case. An immediate appeal

would save that time and effort, and potentially facilitate settlement discussions.

The Seventh Circuit has noted that district court proceedings are normally halted when an

immediate appeal under 1292(b) is granted. Ahrenholz v. Bd. of Trustees of Univ. of Ill., 219

F.3d 674, 676 (7th Cir. 2000). As the four-factor test is the foremost issue in the case and will

impact pending proceedings, Nordock respectfully requests that the Court stay all proceedings

pending 1292(b) certification and appeal. See, e.g., Bayer Healthcare, LLC v. Norbrook Labs,

Ltd., 2010 WL 338089, at *5 (E.D. Wis. Jan. 20, 2010).

Certification will achieve the goals of 1292(b). Certification will reduce the workload of

the Court, advance the ultimate termination of a case, resolve issues standing in the way of

settlement, and aid in developing the law.

Dated: this 5th day of December, 2017.

Respectfully submitted,

NORDOCK, INC.

s/Jeffrey S. Sokol
Jeffrey S. Sokol,
Sokol Law Office
828 North Broadway
Milwaukee, WI 53202

Case 2:11-cv-00118-WED Filed 12/05/17 Page 3 of 4 Document 273

 CERTIFICATE OF SERVICE

I hereby certify that on December 5, 2017, I electronically filed the foregoing with the Clerk of
the Court using the ECF system which will send notification of such filing to each of the
attorneys of record.

COUNSEL FOR NORDOCK, INC.

s/Jeffrey S. Sokol________________
Jeffrey S. Sokol
Sokol Law Office
828 North Broadway
Milwaukee, WI 53202
(414) 272-7200

Case 2:11-cv-00118-WED Filed 12/05/17 Page 4 of 4 Document 273

 IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF WISCONSIN

NORDOCK, INC. )
) CIVIL ACTION: 11-CV-0118
Plaintiff, )
) Magistrate Judge William Duffin
v. )
)
SYSTEMS, INC. )
)
Defendant. )

[PROPOSED] ORDER

Plaintiffs Civil L.R. 7(h) Expedited Non-Dispositive Motion to Certify for Immediate

Appeal the Courts Order dated November 21, 2017, and to Stay Proceedings Pending

Certification and Appeal, is GRANTED. Said Order involves a controlling question of law as to

which there is substantial ground for difference of opinion, and an immediate appeal from the

order may materially advance the ultimate termination of the litigation. Certification is therefore

appropriate. See 28 U.S.C. 1292(b). Consistent with 1292(b), Plaintiff may petition the

United States Court of Appeals for the Federal Circuit to permit an appeal to be taken within ten

days after entry of this order. Id.

Further proceedings in this Court are STAYED pending the resolution of any petition for

interlocutory appeal and, if accepted by the Court of Appeals for the Federal Circuit, the

subsequent appeal.

SO ORDERED.

Dated: ___________________ _______________________________________

The Honorable William Duffin

United States District Court Magistrate Judge

Case 2:11-cv-00118-WED Filed 12/05/17 Page 1 of 1 Document 273-1