Case 5:15-cv-05836-EJD Document 306 Filed 02/07/18 Page 1 of 7

1 BLANK ROME LLP

Keith A. Rutherford (TX Bar No. 17452000; Admitted to NDCA)
2 krutherford@blankrome.com
J. David Cabello (TX Bar No. 03574500; Admitted to NDCA)
3 dcabello@blankrome.com
Domingo M. LLagostera (TX Bar No. 24070157; Admitted Pro Hac Vice)
4 dllagostera@blankrome.com
James Hall (TX Bar No. 24041040; Admitted Pro Hac Vice)
5 jhall@blankrome.com
6 717 Texas Avenue, Suite 1400
Houston, TX 77002
7 Telephone: 713.228.6601
Facsimile: 713.228.6605
8
Megan R. Wood (DC Bar No. 1024203; Admitted Pro Hac Vice)
9 1825 Eye Street, NW
Washington DC, 20006
10 Telephone: 202.420.2753
Facsimile: 202.420.2200
11 mwood@blankrome.com

12 Naki Margolis
(CA Bar No. 94120)
13 555 California Street, Suite 4925
San Francisco, CA 94104
14 Telephone: 415.986.2144
Facsimile: 415.659.1950
15 nmargolis@blankrome.com

16 Attorneys for Defendants

COREL CORPORATION and COREL INC.
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18 UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF CALIFORNIA – SAN JOSE DIVISION
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MICROSOFT CORPORATION, Case No. 5:15-cv-05836-EJD
20 Plaintiff and Counterclaim
Defendant, COREL CORP.’S AND COREL INC.’S
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vs. NOTICE OF MOTION AND MOTION
22 COREL CORPORATION FOR JUDGMENT AS A MATTER OF
Defendant LAW THAT MICROSOFT IS NOT
23 and ENTITLED TO DISGORGEMENT
DAMAGES UNDER 35 U.S.C. § 289
24 COREL INC. _________
Defendant and Counterclaim Hearing Date: February 8, 2018
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Plaintiff. Time: 9:00 a.m.
26 Ctrm: 4, 5th Floor
Judge: Hon. Edward J. Davila
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COREL CORP.’S AND COREL INC.’S NOTICE OF MOTION AND MOTION FOR JUDGMENT AS A MATTER OF
LAW THAT MICROSOFT IS NOT ENTITLED TO DISGORGEMENT DAMAGES UNDER 35 U.S.C. § 289
– CA #5:15-cv-05836-EJD
 Case 5:15-cv-05836-EJD Document 306 Filed 02/07/18 Page 2 of 7

1 PLEASE TAKE NOTICE that on February 8, 2018, at 9:00 am, or as soon thereafter as the

2 matter can be heard, in the courtroom of the Honorable Edward J. Davila, located in Courtroom 4,

3 5th Floor, San Jose Courthouse, 280 South 1st Street, San Jose, California 95113, Defendants Corel

4 Corporation and Corel Inc. (collectively, “Corel”) will, and hereby move under Federal Rule of Civil

5 Procedure 50(a) for an order granting the relief requested in Corel’s Motion for Judgment as a

6 Matter of Law that Microsoft is Not Entitled to Disgorgement Damages under 35 U.S.C. § 289.

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COREL CORP.’S AND COREL INC.’S NOTICE OF MOTION AND MOTION FOR JUDGMENT AS A MATTER OF
LAW THAT MICROSOFT IS NOT ENTITLED TO DISGORGEMENT DAMAGES UNDER 35 U.S.C. § 289
– CA #5:15-cv-05836-EJD
 Case 5:15-cv-05836-EJD Document 306 Filed 02/07/18 Page 3 of 7

1 Corel Corp. and Corel Inc. (collectively “Corel”) respectfully request the Court enter

2 judgment as a matter of law that Plaintiff Microsoft Corporation (“Microsoft”) is not entitled to a

3 Section 289 disgorgement of profits for the design Ribbon Patents 1 because Microsoft failed to put

4 on any evidence of the profits associated with the article of manufacture that is claimed in those
5 design patents—i.e. a “display screen.”

6 I. LEGAL STANDARDS
7 A. Judgment as a Matter of Law
8 Pursuant to Rule 50 of the Federal Rules of Civil Procedure, a court may grant a motion for

9 judgment as a matter of law against a party on a claim or issue where the party has been “fully heard

10 on [that] issue during a jury trial” and the court finds that a “reasonable jury would not have a legally

11 sufficient evidentiary basis” to find for that party. FED. R. CIV. P. 50(a). “[T]he trial judge must

12 direct a verdict if, under the governing law, there can be but one reasonable conclusion as to the

13 verdict.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250 (1986) (citations omitted).

14 B. Identifying the Article of Manufacture under 35 U.S.C. § 289

15 Under Section 289, a successful design patentee may recover the total profits an infringer

16 makes from its infringement of the design patents. See 35 U.S.C. § 289. In particular, the patentee

17 may obtain damages for the unlicensed “appli[cation]” of a “patented design, or any colorable

18 imitation thereof, to any article of manufacture for the purpose of sale” or the unlicensed sale or
19 exposure to sale of “any article of manufacture to which [a patented] design or colorable imitation

20 has been applied.” See id. (emphasis added). Arriving at a correct § 289 damages award, therefore,

21 involves two steps: (1) identify the “article of manufacture,” which is found in the design patent
22 claim, and to which the design is applied and (2) calculate the infringer’s total profit made on the
23 sale of that article of manufacture. See Samsung Elecs. Co. v. Apple Inc., 137 S. Ct. 429, 434
24 (2016); see also Curver Luxembourg, SARL v. Home Expressions Inc., No. 2:17-CV-4079-KM-JBC,

25 2018 WL 340036, at *7-*8 (D.N.J. Jan. 8, 2018) (explaining that “[i]f “Section 289 permitted

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The design Ribbon Patents include D’237, D’140, D’532 and D’865 patents.
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COREL CORP.’S AND COREL INC.’S NOTICE OF MOTION AND MOTION FOR JUDGMENT AS A MATTER OF
LAW THAT MICROSOFT IS NOT ENTITLED TO DISGORGEMENT DAMAGES UNDER 35 U.S.C. § 289
– CA #5:15-cv-05836-EJD
 Case 5:15-cv-05836-EJD Document 306 Filed 02/07/18 Page 4 of 7

1 damages in design patent cases whenever an individual used an ornamental design with any product,

2 it would make a hash of the statutory scheme” and therefore holding “design patents are limited in

3 scope to the article of manufacture that the design patent claims.”).

4 II. ARGUMENT
5 A. Microsoft is Not Entitled to Corel’s Profits for Corel Home Office Because It
Has Failed to Put on Any Evidence Pertaining to Corel’s Profits of the “Article
6 of Manufacture” Claimed in the Design Ribbon Patents
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Each of the four design Ribbon Patents in this trial includes the following patent claim:
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The ornamental design for a user interface for a portion of a display
9 screen, as shown and described…
10 D’237 Patent Claim (Tr. Exh. 6); D’140 Patent Claim (Tr. Exh 7); D’532 Patent Claim (Tr. Exh. 8);
11 D’865 Patent Claim (Tr. Exh. 9) (emphasis added). The claimed article of manufacture in each of
12 the four design Ribbon Patents is unambiguous—a display screen. To the extent Microsoft wishes to
13 seek disgorgement damages under 35 U.S.C. § 289 for these four patents, the profits can only come
14 from sales of display screens. See Curver Luxembourg, No. 2:17-CV-4079-KM-JBC, 2018 WL
15 340036, at *7-*8.
16 At trial, Microsoft’s damages expert, Ambreen Salters, did not opine on the profits of display
17 screens. Instead, she identified the “article of manufacture” as the Corel Home Office software
18 product itself, and opined that the disgorgement damages would thus be 100% of the total profits of
19 Corel Home Office:
20 Q. And so it's my understanding that when you rendered your opinion, in your opinion you've
identified the article of manufacture to be the software itself; is that correct?
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22 A. *correct, that's how –

23 Q. Corel home office?

24 A. Corel home office, that's correct.
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Q. And when we talk about profits, the calculation that you have, so your 74 thousand or
27 your million and 28, that is 100 percent of the profits that Corel receive from sales of Corel
home office; is that correct?
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COREL CORP.’S AND COREL INC.’S NOTICE OF MOTION AND MOTION FOR JUDGMENT AS A MATTER OF
LAW THAT MICROSOFT IS NOT ENTITLED TO DISGORGEMENT DAMAGES UNDER 35 U.S.C. § 289
– CA #5:15-cv-05836-EJD
 Case 5:15-cv-05836-EJD Document 306 Filed 02/07/18 Page 5 of 7

1 A. Yes. In the financial documents that were provided to me, that was called the contribution
margin and I believe in Corel's CFO's deposition he explained that. Those were the revenues
2 received minus the expenses that were directly attributable to the product. So that was the
exact definition.
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4 Trial Transcript 410:4-9; 406:20-407:1, dated February 7, 2018 (Ambreen Salters). Her analysis is

5 entirely flawed, in as much as a software product is not the article of manufacture that is claimed in

6 the design Ribbon Patents, it is a display screen. Because Ms. Salters failed to put on any evidence

7 of profits from the sales of display screens, there is no evidence from which the jury can properly

8 award disgorgement damages under § 289.

9 B. The Corel Home Office Software Product Does Not Qualify as an Article of
Manufacture under 35 U.S.C. § 289
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11 In the recent Samsung decision, the Supreme Court held that an “article of manufacture . . . is

12 simply a thing made by hand or machine.” Id. at 434-35 (explaining that “article” is “a particular

13 thing” and “manufacture means the conversion of raw materials by the hand, or by machinery, into

14 articles suitable for the use of man and the articles so made”) (citations and internal quotation marks

15 omitted). The Court’s conclusion is supported by the design patent statute 35 U.S.C. § 171. The

16 design patent statute grants a design patent on a “new, original and ornamental design for an article

17 of manufacture.” 35 U.S.C. § 171(a) (emphasis added). It has been interpreted to include at least

18 “[1] a design for an ornament, impression, print, or picture applied to or embodied in an article of

19 manufacture; [2] the design for the shape or configuration of an article of manufacture;” and (3) a

20 combination of the first two categories. See In re Schnell, 46 F.2d 203, 209 (C.C.P.A 1931); Ex

21 parte Donaldson, No. 92-0546, 1992 WL 470726, *1 (B.P.A.I. Apr. 2, 1992).

22 Ms. Salters testified that the Corel Home Office software product is the “article of

23 manufacture.” Trial Transcript 410:4-9, dated February 7, 2018 (Ambreen Salters). But she failed

24 to identify the thing to which the infringed design has been applied. See Samsung, 137 S. Ct. at

25 434. Ms. Salters made no such attempt, nor could she have, as she conceded at trial that Corel sold

26 Corel Home Office as a downloadable software product from its website: See Trial Transcript

27 408:20-410:9, dated February 7, 2018 (Ambreen Salters). As Corel sells the accused Corel Home

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COREL CORP.’S AND COREL INC.’S NOTICE OF MOTION AND MOTION FOR JUDGMENT AS A MATTER OF
LAW THAT MICROSOFT IS NOT ENTITLED TO DISGORGEMENT DAMAGES UNDER 35 U.S.C. § 289
– CA #5:15-cv-05836-EJD
 Case 5:15-cv-05836-EJD Document 306 Filed 02/07/18 Page 6 of 7

1 Office software products through download, those products in that instance, at a minimum, are not

2 themselves an article of manufacture, nor are they sold by Corel in association with an article of

3 manufacture. In other words, there is no evidence that Corel sells any article of manufacture (i.e.

4 computers or display screens) having Microsoft’s designs. Therefore, Microsoft’s evidence fails to

5 prove that Corel sold an article of manufacture with Microsoft’s design attached thereto, and

6 therefore Microsoft is not eligible for damages under Section 289.

7 For the foregoing reasons, pursuant to Federal Rule of Civil Procedure 50(a), Corel

8 respectfully requests that the Court enter judgment for Corel as a matter of law that Microsoft is not

9 entitled to disgorgement damages under Section 289 for the design Ribbon Patents.

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DATED: February 7, 2018 BLANK ROME LLP
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13 By: /s/ Domingo M. LLagostera

Domingo M. LLagostera
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Attorney for Defendants
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COREL CORPORATION AND COREL INC.
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COREL CORP.’S AND COREL INC.’S NOTICE OF MOTION AND MOTION FOR JUDGMENT AS A MATTER OF
LAW THAT MICROSOFT IS NOT ENTITLED TO DISGORGEMENT DAMAGES UNDER 35 U.S.C. § 289
– CA #5:15-cv-05836-EJD
 Case 5:15-cv-05836-EJD Document 306 Filed 02/07/18 Page 7 of 7

1 CERTIFICATE OF SERVICE
2 I certify that all counsel of record are being served on February 7, 2018 with a copy of the

3 foregoing Motion via the Court’s CM/ECF system.

5 /s/ Shayne Ford

Shayne Ford
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COREL CORP.’S AND COREL INC.’S NOTICE OF MOTION AND MOTION FOR JUDGMENT AS A MATTER OF
LAW THAT MICROSOFT IS NOT ENTITLED TO DISGORGEMENT DAMAGES UNDER 35 U.S.C. § 289
– CA #5:15-cv-05836-EJD
 Case 5:15-cv-05836-EJD Document 306-1 Filed 02/07/18 Page 1 of 2

1 BLANK ROME LLP

Keith A. Rutherford (TX Bar No. 17452000; Admitted to NDCA)
2 krutherford@blankrome.com
J. David Cabello (TX Bar No. 03574500; Admitted to NDCA)
3 dcabello@blankrome.com
Domingo M. LLagostera (TX Bar No. 24070157; Admitted Pro Hac Vice)
4 dllagostera@blankrome.com
James Hall (TX Bar No. 24041040; Admitted Pro Hac Vice)
5 jhall@blankrome.com
6 717 Texas Avenue, Suite 1400
Houston, TX 77002
7 Telephone: 713.228.6601
Facsimile: 713.228.6605
8
Megan Wood (DC Bar No. 1024203; Admitted Pro Hac Vice)
9 1825 Eye Street, NW
Washington DC, 20006
10 Telephone: 202.420.2753
Facsimile: 202.420.2200
11 mwood@blankrome.com

12 Naki Margolis
(CA Bar No. 94120)
13 555 California Street, Suite 4925
San Francisco, CA 94104
14 Telephone: 415.986.2144
Facsimile: 415.659.1950
15 nmargolis@blankrome.com

16 Attorneys for Defendants

COREL CORPORATION and COREL INC.
17
UNITED STATES DISTRICT COURT
18
NORTHERN DISTRICT OF CALIFORNIA – SAN JOSE DIVISION
19
MICROSOFT CORPORATION, Case No. 5:15-cv-05836-EJD
20 Plaintiff and Counterclaim
Defendant, [PROPOSED] ORDER GRANTING
21 vs. COREL CORP.’S AND COREL INC.’S
22 COREL CORPORATION MOTION FOR JUDGMENT AS A
Defendant MATTER OF LAW THAT MICROSOFT
23 and IS NOT ENTITLED TO
DISGORGEMENT DAMAGES UNDER
24 COREL INC. 35 U.S.C. § 289
Defendant and Counterclaim _________
25 Plaintiff. Ctrm: 4, 5th Floor
26 Judge: Hon. Edward J. Davila

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[PROPOSED] ORDER GRANTING COREL CORP.’S AND COREL INC.’S MOTION FOR JUDGMENT AS A MATTER
OF LAW THAT MICROSOFT IS NOT ENTITLED TO DISGORGEMENT DAMAGES UNDER 35 U.S.C. § 289
– CA #5:15-CV-05836-EJD
 Case 5:15-cv-05836-EJD Document 306-1 Filed 02/07/18 Page 2 of 2

1 Before this Court is Defendants Corel Corporation’s and Corel Inc.’s Motion for Judgment as

2 a Matter of Law that Plaintiff Microsoft Corporation is Not Entitled to Disgorgement Damages

3 under 35 U.S.C. § 289 (“Motion”). Having considered the parties’ submissions, the relevant

4 evidence, and for good cause, the Court finds the Motion should be GRANTED; and it is, therefore,
5 ADJUDGED, ORDERED, and DECREED THAT:
6 Microsoft is not entitled to disgorgement damages under 35 U.S.C. § 289 for U.S. Patent

7 Nos. D550,237, D554,140, D564,532, and D570,865 – the design Ribbon Patents – as a matter of

8 law.

10 IT IS SO ORDERED.
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12 Dated: __________________, 2018

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14 _________________________________
EDWARD J. DAVILA
15 United States District Judge
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[PROPOSED] ORDER GRANTING COREL CORP.’S AND COREL INC.’S MOTION FOR JUDGMENT AS A MATTER
OF LAW THAT MICROSOFT IS NOT ENTITLED TO DISGORGEMENT DAMAGES UNDER 35 U.S.C. § 289
– CA #5:15-CV-05836-EJD