Nordock v. Systems - Appellate Briefs

2014-1762, -1795
United States Court of Appeals

for the Federal Circuit
NORDOCK, INC.,
PlaintiffAppellant,
v.
SYSTEMS INC, DBA PoweRamp, DBA DLM Inc, DBA McGuire,
DefendantCross-Appellant.
Appeals from the United States District Court for the Eastern District of
Wisconsin in Case No. 11-CV-0118, Judge Rudolph T. Randa.
BRIEF FOR PLAINTIFF-APPELLANT

JEFFREY S. SOKOL
SOKOL LAW OFFICE
828 N. Broadway, Suite 400
Milwaukee, WI 53202
Telephone: (414) 272-7200
Facsimile: (414 272-7204
Attorney for Plaintiff-Appellant
NOVEMBER 10, 2014
COUNSELPRESS,LLC
(888)2773259*(202)7837288
UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT

Nordock, Inc. v. Systems, Inc.
No.
2014-1762
CERTIFICATE OF INTEREST
Counsel for Plaintiff-Appellant, Nordock, Inc., certifies the following:
1. The full name of every party represented by me is:
NORDOCK, INC.
2. The name of the real party in interest represented by me is:
NONE
3. All parent corporations and any publicly held companies that own 10
percent or more of the stock of the parties represented by me are:
NONE
4. The names of all law firms and the partners or associates that appeared
for the parties now represented by me in the trial court or are expected to
appear in this court are:
SOKOL LAW OFFICE
JEFFREY S. SOKOL
ONEIL, CANNON, HOLLMAN, DEJONG AND LAING, S.C.
GREGORY W. LYONS
November 10, 2014
/s/ Jeffrey S. Sokol

Jeffrey S. Sokol
Counsel for Appellant
(i)
TABLE OF CONTENTS
Page
CERTIFICATE OF INTEREST .................................................................................i
TABLE OF AUTHORITIES ..................................................................................... v
STATEMENT OF RELATED CASES ..................................................................... 1
JURISDICTIONAL STATEMENT .......................................................................... 1
STATEMENT OF THE ISSUES............................................................................... 1
STATEMENT OF THE CASE .................................................................................. 2
STATEMENT OF FACTS ...................................................................................... 13
SUMMARY OF THE ARGUMENT ..................................................................... .21
ARGUMENT ........................................................................................................... 22
I.
STANDARD OF REVIEW/RULE 59 STANDARDS ................................. 22
II.
DISTRICT COURT ERRED WHEN IT DENIED NORDOCKS

MOTION FOR A NEW TRIAL ON 289 DAMAGES ............................... 25
A.
Legal Standard ..................................................................................... 25
B.
District Court Decision Was Clearly Erroneous ................................. 26

1.
Manifest Weight of Credible Evidence Shows

Systems Total Profits Were Over $600,000....28
a.
Parties Agree Systems Sold Over 1,450

Infringing LHP/LHD Leveler Units...28
b.
Article of Manufacture To Which Patented D754

Design Is Applied And Used Is A Dock Leveler28
(ii)
1. D754 Patent states and shows design is

applied to and used with a Dock Leveler ............. 29
2. Trial evidence and testimony show
patented D754 design is applied to
and used with a Dock Leveler .............................. 30
3. Systems assertion that Article of Manufacture
to which patented D754 design is applied and
used is a Lip And Hinge Plate lacks merit ............. 32
c.
Total Profits Are Based on Gross Revenues .............. 33
d.
Gross Revenues For Systems LHP/LHD Levelers

Were Over $3,600,000.................................................... 34
e.
Systems Total Profits For LHP/LHD Levelers

Were Over $600,000....................................................... 35
2.
Trial Record Does Not Support Finding That

Systems Total Profits Were $0 ................................................ 38
3.
District Court Reliance On Beros Cost Savings

Methodology To Support Finding of $0 Profits Is Erroneous .. 39
a.
District Court Relied on Beros Cost Savings

Methodology ................................................................... 39
b.
Total Profits Are Not Based On Asserted

Cost Savings ............................................................... 40
c.
1.
Beros Cost Savings Methodology is

Contrary to Congress Intent for 289 ................ .42
2.
Beros Cost Savings Methodology is

Contrary to 289 Jury Instructions ....................... 43
Bero Impermissibly Focused on Ornamental

Aspects of Patented D754 Design ................................. 44
(iii)
4.
District Court Misinterpretation of Patent Damages Jury

Instructions Is Error .................................................................. 45
a.
District Court Misconstrued the Jury Instructions ......... 46
b.
The Jury Instructions Conflict Under District Court

Interpretation................................................................... 49
5.
Systems Closing Arguments Misled The Jury ........................ 50
6.
District Court Analysis Is Incongruous .................................... 52
CONCLUSION AND STATEMENT OF RELIEF SOUGHT ............................... 52

ADDENDUM
CERTIFICATE OF SERVICE CERTIFICATE OF COMPLIANCE WITH TYPECOLUMN LIMITATIONS, TYPEFACE REQUIREMENTS, AND TYPE STYLE
REQUIREMENTS
(iv)
TABLE OF AUTHORITIES
CASES
Page(s)
Bergstrom v. Sears, Roebuck and Co.,
496 F. Supp. 476 (D. Minn. 1980 .................................................................37, 47
Bernhardt L.L.C. v. Collezione Europa USA, Inc.,
436 F. Supp. 2d 739 (M.D.N.C. 2006) ............................................................... 47
Boyd v. Tornier, Inc.,
656 F.3d 487 (7th Cir. 2011) .............................................................................. 24
Byrd v. Blue Ridge Rural Elec. Coop., Inc.,
356 U.S. 525 (1958). ........................................................................................... 24
Catalina Lighting, Inc. v. Lamps Plus, Inc.,
295 F. 3d 1277 (Fed. Cir. 2002) ................................................................... 47, 48
Cybor Corp. v. FAS Techs., Inc.,
138 F.3d 1448 (Fed.Cir. 1998) ..................................................................... 22-23
Gasperini v. Ctr. for Humanities, Inc.,
518 U.S. 415 (199624
Henry Hanger & Display Fixture Corp. of America v. Sel-O-Rak Corp.,
270 F.2d 635 (5th Cir. 1959..............................................................23, 33, 37, 47
Javier v. City of Milwaukee,
670 F.3d 823 (7th Cir. 2012) .............................................................................. 49
Junker v. HDC Corp.,
2008 WL 3385819 (N.D. Cal. July 28, 2008) ..............................................26, 29
Mejia v. Cook County, Ill.,
650 F. 3d 631 (7th Cir. 2011) ............................................................................. 24
(v)
Midwest Precision Servs., Inc. v. PTM Industries Corp.,

887 F.2d 1128 (1st Cir. 1989) .......................................................................49, 50
Montgomery Ward & Co. v. Duncan,
311 U.S. 243 (1940) ............................................................................................ 24
Nike, Inc. v. Wal-Mart Stores, Inc.,
138 F.3d 1437 (Fed. Cir.1998) .................... 23, 25, 26, 33, 34, 37, 41, 42, 48, 51
Oiness v. Walgreen Co.,
88 F.3d 1025 (Fed. Cir. 1992)(Unpublished Disposition).................................. 24
Pac. Coast Marine Windshields Ltd. v. Malibu Boats, LLC,
2014 WL 4185297 (M.D. Fla. Aug. 22, 2014) ................................................... 25
Rocket Jewelry Box, Inc. v. Quality Int'l Packaging, Ltd.,
250 F.Supp. 2d 333 (S.D.N.Y. 2003) ................................................................. 37
Romo v. Gulf Stream Coach, Inc.,
250 F.3d 1119 (7th Cir. 2001) ............................................................................ 24
Schnadig Corp. v. Gaines Mfg. Co., Inc.,
620 F.2d 1166 (6th Cir. 1980) ...................................................................... 26, 33
Sheldon v. Metro-Goldwyn Pictures, Inc.,
106 F.2d 45 (2d Cir.1939), aff'd, 309 U.S. 390 (1940) ...................................... 37
Shockley v. Arcan, Inc.,
248 F.3d 1349 (Fed. Cir. 2001) .......................................................................... 23
Sosebee v. Astrue,
494 F.3d 583 (7th Cir. 2007) .............................................................................. 23
United States v. Ford Motor Co.,
463 F.3d 1267 (Fed. Cir. 2006) .......................................................................... 41
(vi)
Weinberg v. Chicago,
310 F.3d 1029 (7th Cir. 2002) ............................................................................ 23
Whitserve, LLC v. Computer Packages, Inc.,
694 F.3d 10 (Fed. Cir. 2012) ........................................................................22, 23
Wordtech Sys., Inc. v. Integrated Networks Solutions, Inc.,
609 F.3d 1308 (Fed. Cir. 2010) .................................................................... 22, 41
STATUTES
28 U.S.C. 1295(a) .................................................................................................... 1
28 U.S.C. 331 ........................................................................................................... 1
28 U.S.C. 1338(a) .................................................................................................... 1
35 U.S.C. 100, et seq................................................................................................ 1
35 U.S.C. 289 ..................................................................................................passim
OTHER AUTHORITIES
H.R. Rep. No. 1966 at 1-3 (1886), reprinted in 18 Cong. Rec. 834 (1887) ............ 52
(vii)
STATEMENT OF RELATED CASES

Defendant-Appellee filed a Cross Appeal No. 14-1795 in this appeal.
JURISDICTIONAL STATEMENT
The District Court had federal question jurisdiction pursuant to 28 U.S.C.
1331 and 1338(a) because this case arises under the patent statutes of the United
States (35 U.S.C. 100, et seq.).
This Court has jurisdiction pursuant to 28 U.S.C. 1295(a), which provides
this Court with exclusive jurisdiction over appeals where the District Courts
jurisdiction was based, in whole or in part, on 28 U.S.C. 1338.
The July 31, 2014 Amended Judgment in a Civil Case (7/31/14 Judgment)
(A18-19) is a final judgment disposing of all parties claims. The Notice of Appeal
was filed on August 19, 2014. (A5742).
STATEMENT OF THE ISSUES
1.
Did the District Court err when it adopted a finding that Systems total
profits under 289 were $0 for sales of over 1,450 infringing dock levelers?
2.
Did the District Court err by denying a motion for new trial to properly
determine 289 damages when the manifest weight of the credible evidence
showed that Systems total profits were over $600,000?
3.
Did the District Court err by relying on a cost savings methodology to
determine total profits contrary to the gross revenue methodology set forth in the
289 jury instruction?
4.
Did the District Court err when it interpreted the jury instructions to mean no
determination of 289 damages was necessary even though the 289 instruction
states that Nordock seeks Systems profits and if you [the jury] find infringement
and validity you are to award Nordock Systems total profits?
STATEMENT OF THE CASE
On January 28, 2011 plaintiff Nordock, Inc. (Nordock), a Canadian
company filed suit against defendant Systems , Inc. (Systems), a Wisconsin
company for infringing U.S. Patent No. D579,754 (D754 Patent). (A42and
6321-26). The Complaint asserted that Systems, without authorization by Nordock,
started making, advertising and selling LMP, LHP, LMD and LHD Series dock
levelers with a lip, lug and header plate design covered by the D754 Patent. (A44).
Systems LHP and LHD levelers are hydraulically operated. Its LMP and LMD
levelers are mechanically operated. 1,2 (A66-73).
Systems hydraulic LHP/LHD levelers are essentially the same. They have
different identifying labels on them. Similarly, its mechanical LMP/LMD levelers
are essentially the same. (A5557-58 and 6598).
PoweRamp and DML are trade names of Systems. (A5799). The H stands for
hydraulic, the M stands for mechanical, the P stands for PoweRamp and the
D stands for the DML. (A5814-15).
(2)
On July 21, 2011, the District Court entered its Scheduling Order for the
case, which reads in part as follows:
7. On or before June 20, 2012, the parties must notify each other of
any expert witnesses they may call at trial, and must submit with that
notice a report containing all the information required by Rule
26(a)(2)(B) of the Federal Rules of Civil Procedure, or the moving
party will be barred from calling such witnesses as experts at trial.
8. On or before July 20, 2012, the parties must notify each other of
any rebuttal expert witnesses they may call at trial, and must submit
with that notice a report containing all the information required by
Rule 26(a)(2)(B) of the Federal Rules of Civil Procedure, or the
moving party will be barred from calling such rebuttal witnesses as
experts at trial. (Emphasis supplied). (A85-87).
On September 8, 2011, a settlement conference was held that did not resolve
the litigation. (A22 DE16).
Although Systems president would not settle the case. (A574 and 579),
Systems, without Nordocks authorization, continued to sell its accused hydraulic
and mechanical dock levelers through trial. (A6684).
On June 14, 2012, Nordock filed a motion to compel the production of
Systems financial and profit records for its accused levelers. Nordocks motion
also sought to supplement its expert report on 289 damages after Systems
produced these records. (A23 DE21and A172-182).
On June 20, 2012, Nordock identified its damages expert, Dr. Stan Smith,
and produced his expert report (Original Smith Report). (A768-779). His report
(3)
included lost profits and reasonable royalty opinions. As Systems had not produced
its financial records, his report did not determine 289 damages.
Systems did not identify a damages expert or submit a damages expert report
by the June 20, 2012 deadline. (A5553). On July 20, 2012, Systems identified its
damages rebuttal expert, Richard Bero, and produced his rebuttal report. (Bero
Rebuttal Report). (A6536-6657). The Bero Rebuttal Report does not state an
opinion for 289 damages, but does provide Schedules 1.0, 2.0-2.2, 5.0-5.4 and 6.0
with the following financial information and a gross revenues methodology for
determining Systems net pretax profits for its hydraulic LHP/LHD and
mechanical LMP/LMD levelers for the years 2009, 2010 and 2011:
LHP/LHD and LMP/LMD Levelers/Units
Quantity/Units Sold
Average Sale Price (ASP)
Gross Revenue/Total Sales Revenue3
Cost of Goods Sold
Gross Profit
Sales, Administration & General Costs (SG&A)
Net Pretax Profit/Operating Profit4
Average Net Pretax Profit/Operating Profit Per Unit
(A6591-95 and 6617-43)
The Bero Rebuttal Report uses sales for gross revenue.
Beros Rebuttal Report uses the term operating profits to indicate these
amounts are net pretax profits. (A5543).
(4)
The Bero Rebuttal Report includes Table 2 and 3 (A6551-52) and Schedule 2.1
(A6593) with the following profit information for Systems LHP/LHD levelers
from May 19, 2009 to October 11, 2011:
LHP/LHD levelers
Quantity/Units Sold
Gross Revenue/Sales Revenue
Net Pretax Profit/Operating Profit
Net Pretax Profit/Average Operating
622
$1,564,952
$269,196
$433
The Bero Rebuttal Report also includes Schedules 2.2 and 6.0 (A6594 and 663943) with the following profit information for the LHP/LHD levelers from 2009 to
2011:
LHP/LHD levelers
Quantity/Units Sold
Gross Revenue/Sales Revenue
Net Pretax Profit/Operating Profit
Net Pretax Profit/Average Operating
908
$2,284,599
$392,986
$714
Conspicuously missing from the Bero Rebuttal Report is any sales

information for a Lip and Hinge Plate sold seperately from the dock levelers.
While the report does include Schedules 4.0 to 4.3 (A6597-6600) with Systems
asserted cost savings to manufacture the accused levelers, the report does not
equate these cost savings to Systems profits for the levelers.
On August 10, 2012, Nordock moved to bar Systems from calling Mr. Bero
as an expert witness for failing to disclose all the facts and information considered
in preparing his expert report, and for failing to timely disclose his report on or
(5)
before June 20, 2012, each pursuant to Paragraph 7 of the Courts Scheduling
Order. (A24-25 DE40, 41 and 55).
On October 5, 2012, the District Court ordered Systems to produce its
financial records for its accused levelers, allowed Nordocks damages claim under
289, and allowed Nordock to supplement the Original Smith Report to include
289 damages. (A27 DE77, A2303-08 and 2325). The Court also allowed Nordock
to conduct a supplemental deposition of Mr. Bero at Systems' expense, but denied
its motion to strike Mr. Bero as an expert witness. (A2318-2322 and 2326).
On November 5, 1012, Nordock produced Dr. Smiths first supplemental
damages report (First Supplemental Smith Report) (A4031-36), which included
289 damages based on a gross revenue methodology using Systems financial
information and the Bero Rebuttal Report. (A6536-6657).
On February 19, 2013, Systems requested that the District Court adopt the
Intellectual Property Owners Association Proposed Design Patent Model Jury
Instructions, Revised November 11, 2009. (A3754, 3760 and 3814-23), which
included the following 289 damages instruction that read in part as follows:
In this case, [the Plaintiff] has elected to seek [the Defendant]s profit.
If you find infringement, and do not find the [abbreviated patent
number] design patent is invalid, you are to award [the Plaintiff] [the
Defendant]s total profit attributable to the infringement.
[The Defendant]s total profit means the entire profit on the sale of
the article to which the patented design is applied, or with which it is
(6)
used and not just the portion of profit attributable to the design or
ornamental aspects of the patent. . . .
[The Plaintiff] is entitled to all profit earned by [the Defendant] that is
attributable to the infringement. Profit is determined by deducting
certain expenses from gross revenue. Gross revenue is all of [the
Defendant]s receipts from using the design in the sale of the
infringing products. [The Plaintiff] has the burden of proving [the
Defendant]s gross revenue by a preponderance of the evidence.
(Emphasis supplied). (A3823)
On February 19, 2013, pursuant to a further Nordock motion, the Court
ordered Systems to supplement its financial records for its accused levelers for the
years 2012 and 2013. (A28 DE127 and A3740-42). The order does not grant
Systems a right to introduce a new damages opinion or a new cost savings
methodology for determining 289 damages.
On March 14, 2013, Nordock produced Dr. Smiths second supplemental
damages report (Second Supplemental Smith Report), which was entered into
evidence at trial, and which includes Systems 2012 and 2013 information in its
gross revenue methodology to determine 289 damages. (A6360-75).
On March 9, 2013, Systems filed its proposed patent damage jury
instructions to the Court (A4165 and 4200-11), including the following 289
instruction that reads in part as follows:
In this case, Nordock has elected to seek Systems profit. If you find
infringement, and do not find the '754 design patent is invalid, you
are to award Nordock Systems total profit attributable to the
infringement. Systems total profit means the entire profit on the
sale of the article to which the patented design is applied, or with
(7)
which it is used and not just the portion of profit attributable to the
design or ornamental aspects of the patent. . . .
Nordock is entitled to all profit earned by Systems that is attributable
to the infringement. Profit is determined by deducting certain
expenses from gross revenue. Gross revenue is all of Systems
receipts from using the design in the sale of the infringing products.
Nordock has the burden of proving Systems gross revenue by a
preponderance of the evidence. (Emphasis supplied). (A4210).
On March 13, 2013, the District Court granted Systems motion to bar
Nordocks expert from giving an opinion on reasonable royalty damages. (A35
DE163, A4213, 4228-31).
A jury trial was held March 18-26, 2013. (A35 DE165, A4481-99). At trial,
Nordocks expert, Dr. Stan Smith, gave testimony (A5994 and 6006-10) regarding
his Second Supplemental Report (A6360-75) and presented a Summary Sheet
(A5760-62 and 6426) for the following asserted damages:
Nordocks Lost Profits
Systems Profits using gross revenue methodology
Systems contested lost profits and willful infringement. Systems expert, Mr.
Bero, gave a Slide Show Presentation (A6680-6717) on the following:
Systems Profits using gross revenue methodology.
Reasonable Royalty using cost savings methodology.
Systems Profits using cost savings methodology.5
(A6684-85)
(A6705-13)
(A6713)
While his gross revenue methodology is for the accused levelers as a whole, Mr.
Beros cost savings methodology is for the Lip and Hinge Plate portion of the
accused levelers.
(8)
Bero testified that Systems gross revenues were $13,778,591 and net profits
were $1,876,344 on sales of 1,457 hydraulic LHP/LHD and 5,255 mechanical
LMP/LMD levelers from 2009 to February 28, 2013. (A5476-77, 5528, 5531-32,
5535-36, 5543-44, 5550, 6684-85). As noted above, Mr. Bero calculated that
Systems had an average profit of at least $433 on every accused hydraulic leveler it
sold. (A6552). Multiplying Systems $433 profit/hydraulic leveler (A6552)6 by the
1,457 hydraulic levelers sold (A6684-85), shows that Systems had net pretax
profits of $630,881 on its LHP/LHD levelers. Nordocks expert, Dr. Smith testified
that Systems had net pretax profits of $912,201 on sales of 1,514 LHP/LHD
levelers. (A6009 and 6373).
Bero also gave a lengthy presentation on determining a reasonable royalty.
(A5514-27, 55-56 and 6705-6713). He used a manufacturing cost savings
methodology to determine a reasonable royalty. Based on asserted cost savings
to manufacture the Lip and Hinge Plate portion of the levelers, Bero determined
the reasonable royalty to be $15/leveler or $91,650 for the 6,110 levelers sold.
During Beros reasonable royalty presentation, he stated his cost savings
methodology could also be used to determine Systems total profits under 289
The Bero Rebuttal Report does not explain why Table 3 lists an average profit of
$433/hydraulic leveler and not the $714/hydraulic leveler of Schedule 6.0. If the
latter were used, Systems profit would be over $1,000,000 from 2009-2011.
(9)
Systems total profit being less than $15/leveler or less than $91,650 in total.
(A5526 and 6713).7
Nordock requested a determination of both Nordocks lost profits and
Systems total profits during closing arguments (A6098-99 and A6426). Nordocks
request for a determination of Systems total profits is further shown in the jury
instructions (A4540) and verdict (A5404). Nordock also requested a determination
of willful infringement relative to 284 damages (A6101-04), but did not request a
determination of reasonable royalty damages under 284.
The District Courts patent damages jury instructions (A4538-51) included a
289 instruction, which reads in part as follows:
In this case, Nordock seeks Systems profits from sales of products alleged
to infringe the 754 Design Patent. If you find infringement, and do not find
the '754 Design Patent is invalid, you are to award Nordock Systems total
profit attributable to the infringement. Systems total profit means the
entire profit on the sale of the article to which the patented design is applied,
or with which it is used and not just the portion of profit attributable to the
design or ornamental aspects of the patent. . . .
Nordock is entitled to all profit earned by Systems that is attributable to the
infringement. Profit is determined by deducting certain expenses from gross
revenue. Gross revenue is all of Systems receipts from using the design in
the sale of the infringing products. Nordock has the burden of proving
Systems gross revenue by a preponderance of the evidence. (Emphasis
supplied). (A4540).
The Bero Rebuttal Report did not discuss this new cost savings methodology,
which was referenced for the first time at the bottom of page 34 of his Slide Show
Presentation during trial. (A6713). Contrary to the source listed on page 34, the
Bero Rebuttal Report does not include a Schedule 1.0a and page 38 of his report
discusses a reasonably royalty, not Systems total profits.
(10)
On March 26, 2013, the jury returned a verdict (A5402-05) finding, inter
alia, that:
Systems LHP/LHD levelers infringed the D754 Patent.

Systems did not prove that the D754 Patent is invalid.
Reasonable royalties: $46,825. 8
Systems profits:
$0.
On March 27, 2013, the District Court entered a Judgment on the jurys
verdict in favor of Nordock and against Systems in the amount of $46,825 for a
reasonable royalty for Systems infringement of Nordocks D754 Patent with
regard to its LHP/LHD Series dock levelers, plus costs. The District Court also
permanently enjoined Systems from making, using, selling or importing its
infringing LHP/LHD Series dock levelers. (A5400-01).
Nordock filed a Rule 59 motion seeking a proper determination of 289
damages or for a new trial on damages given that the manifest weight of the
credible evidence did not show Systems total profits on the infringing LHP/LHD
levelers were $0. (A37 DE 180 and 190, A5575, 78-89 and 5626-34). Nordock also
requested prejudgment and post-judgment interest.
The District Courts July 31, 2014 Decision and Order indicates that the
Burden of Proof Jury Instruction did not require the jury to determine Systems
The Jury may have meant the $46,825 to be half of the $91,650 amount in Mr.
Beros Slide Presentation, as Systems accused LHP/LHD hydraulic levelers were
found to infringe and its accused LMP/LMD mechanical levelers were not found to
infringe, and $91,650 / 2 = $45,825.
(11)
Profits under 289, but also went on to state that Page 69 of Beros trial transcript
supports a finding that Systems Profits for its infringing LHP/LHD levelers were
$0. The Court stated as follows:
Nordocks motion is denied because the jury reasonably based its
verdict on the evidence presented. The jury received extensive
damage instructions. (Jury Instructions, 39-50.) (ECF No. 166.) It was
instructed that it could award Nordock compensatory damages in the
form of its own lost profits or a reasonable royalty, or it could
recover Systems profits as a measure of potential recovery with
respect the sale of each unit of an infringing product. (Id. at 39.) . . .
(Emphasis supplied). (A7).
Bero also testified that royalty was the proper form of damages, that
$15 per allegedly infringing dock lever (sic) was the appropriate
amount of royalty, and that, based on the 6,000 accused units, total
damages were about $91,650. (Id. at 69.) Alternatively, according to
Bero, Systems profit on the accused products was less than $15 per
unit, so lost profits would have been less than $91,650. (Id.)
Although the jury heard testimony regarding lost profits, it chose to
award a reasonable royalty. The jury was free to discredit Smiths
testimony regarding Nordocks lost profits or find that Beros
testimony was more convincing and persuasive. (Emphasis supplied).
(A8).
On July 31, 2014, the District Court entered an Amended Judgment similar
to its March 27, 1013 Judgment, but also awarded Nordock $10,170.09 in
prejudgment interest. (A18-19).
On August 19, 2014, Nordock filed a Notice of Appeal (A5742), followed
by its Federal Circuit Docketing Statement requesting that the case be remanded
for a new trial to properly determine 289 damages.
(12)
STATEMENT OF FACTS
Dock levelers bridge the gap between a loading dock and the bed of a truck
trailer. (A6271, 6289 and 6272-88). The levelers include a deck and a lip. (A6292).
The rear end of the deck is hingably and flushly secured to the floor of the
building. (A6292). The lip is hingably joined to the frontend of the deck. (A6292).
When not in use, the deck is parallel to the building floor and the lip hangs
pendent. (A6292). During use, the deck is raised and the lip is extended before
bringing the deck down so that the lip rests on the bed of the trailer. (A6294-95 and
6272-88). The raising and lowering of the deck and the extension and retraction of
the lip are either mechanically or hydraulically actuated. (A6289).
The loading dock leveler industry is dominated by three companies. Systems
is one of those three companies. (A6687). Systems sold dock levelers with a front
end having a piano style hinge for the past 50 years. (A5809, 6145-53 and 6190).
Dock levelers are sold with a variety of frontend designs as demonstrated in
Nordocks September 20, 2012 motion for partial summary judgment, which
included Exhibits C1-12 showing a variety of frontend designs. (A26 DE59-64,
A1047, 1058, 1067-68). Brochures showing many of these levelers with their
various frontend designs were presented at trial (A6133-84), and several were
displayed as demonstrative exhibits. (A6185-90).
(13)
On December 23, 2002, Denis Gleason, filed U.S. Patent Application No.
10/328,279 (the 279 Application), which issued as U.S. Patent No. 6,834,409
(the 409 Patent). (A6271-96) The 409 Patent shows a dock leveler with a
novel and ornamental lip, lug and header plate frontend design. The 279
Application was published on June 24, 2004 by the U.S. Patent and Trademark
Office (USPTO). (A6271). As shown in Figures 1-9 (A6272-83), the frontend of
the leveler shown in Figures 10A-G (A6284-88) is physically and operationally
integral to the leveler as a whole. The header plate is welded to the deck plate and
deck beams. (A6292). The lip plate is hingably joined to the deck by lugs
extending from the header plate, lugs extending from the lip plate, and a pivot rod
passing through them. (A6292). The deck and lip move in unison during operation.
(A6272-88 and 94-95).The lip and header plate are essential components of a dock
leveler. Without the pivotally joined lip, the dock leveler will not perform its
intended function of bridging the gap between the loading dock and the trailer bed.
(A6272-83).
The 279 Application resulted in the following three patents to Nordock per
an assignment by Mr. Gleason, the president of Nordock. (A1378 and 6328-29).
U.S. Patent No. 6,834,409 issued December 28, 2004.
U.S. Patent No. 7,013,519 issued March 21, 2006.
U.S. Patent No. D579,754 issued November 4, 2008.
(14)
(A6271)
(A6297)
(A6321)
U.S. Design Patent No. D579,754 (theD754 Patent) shows and claims the
ornamental design of a lip and hinge plate for a dock leveler, as shown and
described. (A6321-26). The patent states the article of manufacture to which the
D754 design is applied is a dock leveler. The patent is entitled Lip and Hinge
Plate for a Dock Leveler. (A6321). The claim states the ornamental design is for a
dock leveler. (A6321). The descriptions of Figures 1-7 state the design is for a
dock leveler. (A6321). The patent illustrates and mentions additional components
of a dock leveler, such as the deck, deck frame, drive brackets, drive bar opening
and assist spring mounting bracket. (A6321-26). The patent further states that these
components show the claimed design in its condition of use. (A6321). The patent
also references its parent 409 patent, which is entitled Dock Leveler. (A6271
and 6321).
Systems admits it learned of the 279 Application in the spring or early
summer of 2005 (A5810), and was fully aware of the 409 Patent before it began
selling its accused levelers. (A5815-16). Systems started selling its accused
hydraulic and mechanical levelers on the following dates: 9
LHP:
LMP:
LMD:
LHD:
(A6411)
First Shipped October 21, 2005

First Shipped June 30, 2006
First Shipped July 30, 2008
First Shipped August 13, 2008.
Systems first marketed its accused levelers under the Neutron name. (A5816).
(15)
Systems makes these levelers in the United States. (A5476). Yet, Systems
did not display its LHP/LHD and LMP/LMD levelers on its website until about
2009. (A6096).
Systems average sale price for an LHP/LHD leveler is $2,516. Systems
average profit on the sale of an LHP/LHD leveler is at least $433. (A6552, 6593,
6595 and 6621). Its average sale price and average profit for its LMP/LMD
levelers is $1,840 and $215, respectively. (A6552, 6593, 6595 and 6621).
On May 19, 2009, Nordock notified Systems of its infringement of the
D754 Patent. (A6739-48). Many months of correspondence went unheeded, and
Systems continued to make and sell its accused levelers. (A6684).
On January 28, 2011, Nordock brought suit for design patent infringement.
(A21 DE1).
On June 18, 2012, Systems president said he would not settle the case.
(A574, 579). Still, Systems, without authorization from Nordock, continued
making and selling its accused levelers. (A6684).
On June 20, 2012, Nordocks expert, Dr. Stan Smith, produced his Original
Report (A768-79), which did not include an opinion on Systems profits because
Systems had not produced relevant financial information for the accused levelers.
On July 20, 2012, Systems damages expert, Richard Bero, produced a
rebuttal report (Bero Rebuttal Report). (A6536-6657). Tables 2 and 3 and
(16)
Schedule 2.1 of his report state Systems had gross revenues of $1,564,952 and net
pretax profits of $269,196 on sales of 622 hydraulic LHP/LHD levelers between
May 19, 2009 and October 11, 2011. (A6551-52 and 6593). Schedule 2.2 states
Systems had gross revenues of $2,284,599 and a total net pretax profit of $392,986
on sales of 908 LHP/LHD levelers from 2009 to 2011. (A6594-95). Table 3 and
Schedules 2.1, 2.2 and 5.0 further state that the LHP/LHD levelers had an average
operating/net pretax profit of $433/unit. (A6552, 6593, 6595 and 6621).
The Bero Rebuttal Report improperly deducts $255,698 in general and
administrative expenses (G&A) for the accused hydraulic LHP/LHD levelers
without itemizing these expenses. (A6623 and 6630). Mr. Bero testified that he did
not know the specific items included in G&A. (A5542). Mr. Beros above
revenues, profits and average profits are for the LHP/LHD leveler units as a whole.
The Bero Rebuttal Report does not apportion the revenue, profit and average profit
amounts for the lip and hinge plate design of the levelers.
The Bero Rebuttal Report estimates a reasonable royalty of $15/leveler,
which comes to $51,000 based on the 3,383 levelers sold from May 19, 2009 to
October 11, 2011. (A6551-52 and 6570-79). Beros reasonable royalty
methodology is based on Systems asserted cost savings in manufacturing the
Lip and Hinge Plate portion of the accused levelers. (A6574).
(17)
On March 18-26, 2013, a jury trial was held in the U.S. District Court for the
Eastern District of Wisconsin located in Milwaukee County. (A35 DE165).
Systems witnesses Edward McGuire and Michael Pilgrim testified at trial.
Neither testified that Systems profits on its accused LHP/LHD levelers was $0.
(A39 DE221 and A40 DE222).
Damages experts, Dr. Smith and Mr. Bero, also testified at trial. (A36
DE178, A39 DE220 and A40 DE224-226). Dr. Smiths testimony agreed with his
Second Supplemental Smith Report finding Systems gross revenues of
$14,795,392 and net profits of $2,833,239 on sales of 7,197 LHP/LHD and
LMP/LMD levelers, including gross revenues of $3,978,920 and net profits of
$912,201 on sales of 1,514 hydraulic LHP/LHD levelers. (A6009-10 and 6371-73).
Mr. Beros trial testimony on 289 damages included two conflicting
methodologies to determine Systems profits. His first methodology is based on
Systems gross revenues for its accused levelers. This methodology coincides
with the jury instructions and the Bero Rebuttal Report as it uses gross revenues
less certain expenses to determine net profits. Using this methodology, Mr. Beros
Slide Show Presentation (A6685) and testimony (A5527-28, 5532, 5535-36, 554344 and 5550) stated that Systems had gross revenues of $13,778,591 and net
pretax profits of $1,876,344 on sales of 1,457hydraulic LHP/LHD and 5,255
mechanical LMP/LMD levelers. Multiplying Systems above $433 net pretax
(18)
profit/hydraulic leveler (A6552) by sales of 1,457 hydraulic LHP/LHD levelers10

(A6684-85), Systems had net pretax profits of $630,881.
The Bero Rebuttal Report does not discuss a cost saving methodology to
determine Systems profits. Mr. Beros cost savings methodology was presented
for the first time at trial. The methodology is at the bottom of page 34 of his 37
page Slide Show Presentation. (A6713). As best understood from his vague
description, Mr. Beros cost savings methodology is based on Systems asserted
cost savings for manufacturing the Lip and Hinge Plate portion of its accused
levelers. Using this conflicting methodology, Mr. Bero testified that Systems
profits were less than $15/unit or less than $91,650. As discussed below, Mr.
Beros cost savings methodology conflicts with the Courts jury instruction for
determining 289 damages. (A4540).
The trial record is void of any testimony that Systems profits were $0.
Systems owners and officers did not testify that Systems profits on its LHP/LHD
levelers were $0. (A39 DE221 and A40 DE222). Dr. Smith testified that Systems
profits on its LHP/LHD levelers were $912,201. (A6009-10 and A6371-73). Even
assuming arguendo, that Mr. Beros cost savings methodology is legally proper,
10
Mr. Beros Slide Show Presentation indicates that Systems sold another 470
accused hydraulic levelers in 2012 and another 79 accused hydraulic levelers in
2013 by February 28, 2013. (A6684). Using Beros average profit of
$433/hydraulic unit, these additional infringing sales produced an additional
$237,717 in net pretax profits, for a total net pretax profit of over $600,000.
(19)
Mr. Bero did not testify that Systems profits on its LHP/LHD levelers were $0.
Under Mr. Beros misguided cost savings methodology, the only way Systems
profits on sales of 1,457 LHP/LHD levelers would be $0 is if the jury and District
Court believed Systems asserted cost savings were $0.
Jury Instructions were presented for determining design patent damages.
(A4500 and 4538-51). The Jury Instruction for 289 damages (Additional Remedy
for Design Patent Infringement Defendants Profits) states in part as follows:
In this case, Nordock seeks Systems profits from sales of products
alleged to infringe the 754 Design Patent. If you find infringement,
and do not find the '754 Design Patent is invalid, you are to award
Nordock Systems total profit attributable to the infringement.
Systems total profit means the entire profit on the sale of the article
to which the patented design is applied, or with which it is used and
not just the portion of profit attributable to the design or ornamental
aspects of the patent. . .
The jury found that Nordocks D754 Patent was valid, and that Systems
LHP/LHD Series levelers were infringing. (A5402 and 5405). Notwithstanding
these findings, the jury further found:
Reasonable Royalties:
Systems Profits:
(20)
$46,825
$0.
(A5404)
(A5404)
Judgment was entered on the jurys verdict in favor of Nordock and against
Systems in the amount of $46,6825 for a reasonable royalty. (A5400-01). The
District Court denied Nordocks Rule 59 motion seeking to amend the judgment
regarding 289 damages, or in the alternative, for a new trial to properly determine
289 damages (A5575-89 and 5626-34), but issued an Amended Judgment
awarding Nordock an additional $10,170.09 in prejudgment interest. (A18-19).
Nordock filed its Notice of Appeal. (A5742).
SUMMARY OF THE ARGUMENT
The exceedingly deficient damages award should be vacated and remanded
for a new trial. A new trial must be granted to determine 289 damages as the
District Court decisions adopting a finding that Systems profits are $0 or do not
need to be determined is without factual or legal basis and is against the substantial
weight of the credible evidence.
First, the record is void of any evidence that Systems profits on its sales of
at least 1,457 infringing LHP/LHD levelers was $0.
Second, the manifest weight of the credible evidence, when applying the
appropriate gross revenue methodology as set forth in the 289 jury instruction,
shows Systems profits were over $600,000 for the infringing LHP/LHD levelers.
Third, the District Court relied on Systems legally deficient cost savings
methodology to determine that Systems profits on the Lip and Header Plate
(21)
portion of its infringing levelers are less than $15 per leveler. There is no legal
basis for equating Systems profits to its asserted cost savings for a portion of its
infringing LHP/LHD levelers, and this methodology effectively nullifies Congress
enactment of 289.
Fourth, as the 289 Jury Instruction provides, Nordock seeks to recover
289 damages, and if you [the jury] find infringement you are to award Nordock
Systems total profits, the District Court erred in finding that a determination of
289 damages is not necessary based on its erroneous interpretation of another
patent damages jury instruction.
ARGUMENT
I.
STANDARD OF REVIEW/RULE 59 STANDARDS

When reviewing damages in patent cases, the Federal Circuit applies
regional circuit law to procedural issues and Federal Circuit law to substantive and
procedural issues pertaining to patent law." Whitserve, LLC v. Computer Packages,
Inc., 694 F.3d 10, 26 (Fed. Cir. 2012), citing Wordtech Sys., Inc. v. Integrated
Networks Solutions, Inc., 609 F.3d 1308, 1318 (Fed.Cir. 2010) (internal citations
and quotation marks omitted). A district court abuses its discretion when its
decision is based on clearly erroneous findings of fact, is based on erroneous
interpretations of the law, or is clearly unreasonable, arbitrary or fanciful.
Whitserve at 26, citing Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1460
(22)
(Fed.Cir. 1998) (en banc). On post-trial motions for a new trial, district court
judges must scrutinize the evidence carefully to ensure that the `substantial
evidence' standard is satisfied. Whitserve at 26.
The Federal Circuit reviews the District Court's accounting methodology for
determining patent damages based on an abuse of discretion and whether the
district court's factual findings were clearly erroneous. Nike, Inc. v. WalMart
Stores, Inc., 138 F.3d 1437, 1447 (Fed. Cir., 1998). The Federal Circuit will
remand a patent damage award back to the district court for recalculating or for a
new trial when damages are based on speculative assumptions. Shockley v. Arcan,
Inc., 248 F.3d 1349, 1364 (Fed. Cir. 2001). The Federal Circuit does not need to
defer to a district courts statutory interpretation unless the legal standards are
based on underlying findings of fact, in which case the Court may reverse if the
legal conclusions are clearly erroneous. Id. at 1357. The Seventh Circuit has found
that when a district court reaches its conclusion because of its interpretation of
relevant law, then the Court reviews that question of law de novo because a district
court's application of an erroneous view of the law is by definition an abuse of
discretion. Sosebee v. Astrue, 494 F.3d 583, 586 (7th Cir. 2007).
Where clear and unambiguous, statutory language must be enforced as
enacted, a court may not depart from its plain language. Weinberg v. Chicago, 310
F.3d 1029, 1035 (7th Cir. 2002). An appellate court may overturn a district court
(23)
for an abuse of discretion when the district court misapplies the law. Boyd v.
Tornier, Inc., 656 F.3d 487, 492 (7th Cir. 2011).
When this Court remanded a case for a new trial on lost profit damages due
to a vague jury instruction, the Court reviewed the jurys findings for
reasonableness under the substantial evidence standard of review. Oiness v.
Walgreen Co., 88 F.3d 1025 (Fed. Cir. 1992) (Unpublished Disposition).
In the Seventh Circuit, a motion for a new trial pursuant to Rule 59 simply
requires that the moving party clearly establish that there was a manifest error of
law or fact. Romo v. Gulf Stream Coach, Inc., 250 F.3d 1119, 1121 n. 3 (7th Cir.
2001). The Supreme Court has long recognized that a district court can grant a
motion for a new trial if the verdict is against the weight of the evidence. Mejia v.
Cook County, Ill., 650 F. 3d 631, 633 (7th Cir. 2011) (citing Gasperini v. Ctr. for
Humanities, Inc., 518 U.S. 415, 433 (1996); Byrd v. Blue Ridge Rural Elec. Coop.,
Inc., 356 U.S. 525, 540 (1958); Montgomery Ward & Co. v. Duncan, 311 U.S. 243,
251 (1940)).
(24)
II.
THE DISTRICT COURT ERRED WHEN IT DENIED NORDOCKS

MOTION FOR A NEW TRIAL ON 289 DAMAGES
A.
Legal Standard
Under 35 U.S.C. 289, whoever during the term of a U.S. design patent
applies the patented design to any article of manufacture for the purpose of sale
shall be liable to the owner to the extent of his or her total profit. The statute
provides that:
Whoever during the term of a patent for a design, without
license of the owner,
(1) applies the patented design, or any colorable imitation thereof, to
any article of manufacture for the purpose of sale, or (2) sells or
exposes for sale any article of manufacture to which such design or
colorable imitation has been applied shall be liable to the owner to the
extent of his total profit, but not less than $250, recoverable in any
United States district court having jurisdiction of the parties.
Nothing in this section shall prevent, lessen, or impeach any
other remedy which an owner of an infringed patent has under the
provisions of this title, but he shall not twice recover the profit made
from the infringement. (Emphasis supplied).
The intent of Congress to allow a more expansive recovery for design patent
owners is exhibited in the plain language of the statute, which allows recovery of
total profit from anyone who sells any article of manufacture to which such
design or colorable imitation has been applied. Nike, Inc. v. WalMart Stores,
Inc., 138 F.3d 1437, 1441 (Fed. Cir., 1998); see also Pac. Coast Marine
Windshields Ltd. v. Malibu Boats, LLC, 2014 WL 4185297 (M.D. Fla. Aug. 22,
(25)
2014). Apportioning the infringer's total profits between the patented design and
the article bearing the design is not appropriate. Id. Rather, a patent holder is
entitled to the entire profit obtained by the infringer as a result of sales of the item
with the infringing design. Junker v. HDC Corp., 2008 WL 3385819 (N.D. Cal.
July 28, 2008).
Profits are based on gross revenue after deducting certain allowable
expenses. Henry Hanger & Display Fixture Corp. of America v. Sel-O-Rak Corp.,
270 F.2d 635, 642 (5th Cir. 1959)); Schnadig Corp. v. Gaines Mfg. Co., 620 F.2d
1166, 1173, 206 USPQ 202, 210 (6th Cir. 1980); Nike, Inc. v. WalMart Stores,
Inc., 138 F.3d 1437, 1447 (Fed. Cir., 1998). Total profits are based on net pretax
profits. The statute requires the disgorgement of the infringers profits to the patent
holder such that the infringer retains no profit from their wrong. Nike v. Wal-Mart
at 1448.
B.
The District Court Decision Was Clearly Erroneous

The District Courts reasoning in denying Nordock a new trial to properly
determine 289 damages is flawed for four reasons. First, the trial record contains
no credible evidence that Systems total profits were $0 for its sales of over 1,457
infringing LHP/LHD levelers. Second, the manifest weight of the credible
evidence shows that Systems total profits were over $600,000 for the infringing
LHP/LHD levelers. Third, the District Courts decision relies on Systems experts
(26)
cost savings methodology to determine total profits, which is contrary to the

289 jury instructions stated gross revenue methodology for determining total
profits. Fourth, the District Courts misinterpretation of the patent jury instructions
renders them in conflict and negates the clear intent of the federal statute.
The District Court should have recognized three points set forth in its Jury
Instructions when considering whether or not to grant a new trial. The 289 Jury
Instruction reads in part as follows:
aspects of the patent. . . .
First, the District Court should have recognized that the 289 instruction
states that Nordock seeks Systems profits, and if infringement and validity are
found, the jury is to award Nordock Systems total profits. Second, Systems total
profits under 289 are based on Systems gross revenue less certain allowable
expenses. Third, Systems total profit is the entire profit on the sale of the article to
(27)
which the patented design is applied, or with which it is used and not just the
portion of profit attributable to the design or ornamental aspects of the patent.
1.
Manifest Weight Of Credible Evidence Shows Systems Total Profits

Were Over $600,000
The manifest weight of the credible evidence shows that Systems total
profits were over $600,000 for its infringing LHP/LHD levelers.

a.
Parties Agree Systems Sold Over 1,450 Infringing LHP/LHD Levelers

The parties agree that Systems sold over 1,450 infringing LHP/LHD leveler
units. Mr. Bero found that Systems sold at least 6,712 accused levelers, including
1,457 infringing LHP/LHD levelers. (A6685). Dr. Smith found that Systems sold
7,197 accused levelers, including 1,514 infringing LHP/LHD levelers. (A6363 and
6373).
Quantity of LHP/LHD Levelers Sold
Bero:
1,457
Smith: 1,514
b.
Article of Manufacture To Which Patented D754 Design Is

Applied And Used Is A Dock Leveler
35 U.S.C. 289 bases damages on an infringers total profits for the article
of manufacture to which the patented design is applied. The 289 damages Jury
Instruction mirrors the statues and reads in part as follows:
Systems total profit means the entire profit on the sale of the article to
which the patented design is applied, or with which it is used and not just
the portion of profit attributable to the design or ornamental aspects of the
patent. . . .
(28)
. . . Gross revenue is all of Systems receipts from using the design in the
sale of the infringing products. (Emphasis supplied). (A4540).
Total profits are based on the article of manufacture to which the patented
D754 patent is applied or used, not just a portion of that article of manufacture.
Junker v. HDC Corp., 2008 WL 3385819 (N.D. Cal. July 28, 2008). Based on the
facts of the case, the article of manufacture is clearly a dock leveler, and Systems
total profits should have been based on its sales of over 1,457 infringing LHP/LHD
levelers.
1. Patented D754 Design is applied to a Dock Leveler
The D754 patent clearly states the article to which the patented design is
applied and used is a dock leveler. (A6321-26). The D754 Patent is entitled Lip
and Hinge Plate for a Dock Leveler. The claim for the D754 patent states I
Claim: The ornamental design of a lip and hinge plate for a dock leveler as shown
and described. The descriptions for Figures 1-7 of the D754 Patent state the
patented design is for a dock leveler. (A6321). The D754 Patent also illustrates
that the claimed design is applied to and used with a dock leveler. The patent
clearly shows various additional dock leveler components, such as the deck, deck
frame, drive brackets, drive bar opening and assist spring mounting bracket. The
D754 Patent further states that these components show the claimed design in its
condition of use. (A6321.) In addition, the D754 Patent references its parent
(29)
409 Patent (A6321), which is entitled Dock Leveler. (A6271). In all, the D754
Patent refers to the patented design for a dock leveler nine times, and illustrates
various additional dock leveler components to show its condition of use.
2. Trial evidence and testimony show patented D754 design is applied
to and used with a Dock Leveler
Nordocks brochures for its levelers show the patented D754 design applied
to and used with a dock leveler. (A6718-27). Systems brochures for its infringing
LHP/LHD levelers show the patented D754 design is applied to and used with a
dock leveler. (A6191-95 and 6199-6202). The brochures are for dock levelers. The
brochures show the levelers as an integral finished product with the patented
D754 design as an integral and essential part of that product. The leveler
components are welded together and operate in unison. (A6272-88, 91-92 and 9495). Systems and Nordocks officers testified that the levelers are assembled and
welded together on fixtures and jigs. (A5621-24, 5771, 5781, 5792 and 5802).
Photographs of the LHP/LHD leveler entered into evidence at trial show its
header/hinge plate welded to the deck and deck frame (A6343), as well as the lugs
welded to the header and lip plates, and the deck welded to its frame, side plates
and rear header. (A6331-45). Demonstrative exhibits including these photos were
also entered into evidence and displayed at trial. (A6346-49).
Similarly, Systems presented no testimony that it sold a Lip and Hinge
Plate apart from the leveler as a complete unit. Systems also presented no
(30)
evidence that the frontend of the leveler could be used for some product other than
a dock leveler. Systems own expert, Mr. Bero, even understood that the patented
D754 design is an essential part of the dock leveler. On cross examination, Mr.
Bero said that the sale of a leveler without its frontend (i.e., Lip and Hinge Plate)
would be unusual. Mr. Bero stated as follows:
Q. Let me rephrase. Can a dock leveler manufacturer -- let me frame it
in the form of a question. Do you know if a dock leveler manufacturer
can actually sell a dock leveler without the front end? Just take it off
and sell it. Would they be able to do that?
A. Without any front end?
Q. Yeah. Do you know if they could do that?
A. (No response.)
Q. Would there be a market for it?
A. Maybe as a replacement part. I can't imagine -- I mean, it would
seem a little unusual. (A5568).
Beros Rebuttal Report also makes no mention of any Lip and Hinge Plate
sales apart from the levelers as a finished product. Schedule-after-schedule of the
Bero Rebuttal Report refers to each leveler as a unit. (A6551-52, 6591-93 and
6617-53). Thus, the manifest weight of the evidence, and certainly the substantial
weight of the credible evidence, is that the patented D754 design is applied to and
used with a dock leveler.
(31)
3. Systems assertion that Article of Manufacture to which patented

D754 design is applied and used is a Lip And Hinge Plate
lacks merit
Systems response to Nordocks motion for a new trial on 289 damages
asserts that there is a distinction between the term article of manufacture in 289
statute and the word product in the 289 jury instruction. (A5610 an15-17). As
best understood, Systems seems to assert the article of manufacture is the Lip
and Header Plate and the product is the infringing LHP/LHD levelers. Thus,
according to Systems, Systems total profits should be limited to the portion of the
leveler formed by the Lip and Hinge Plate. Systems assertion lacks merit.
First, Systems assertion contradicts the plain language of the District
Courts 289 jury instruction (A4540), not to mention the model 289 instruction
and the 289 instruction that Systems proposed for this case. (A3823 and 4210).
Each specifically states:
. . . Profit is determined by deducting certain expenses from gross
revenue. Gross revenue is all of Systems receipts from using the
design in the sale of the infringing products. . . (Emphasis supplied).
Thus, even assuming arguendo, that there is a distinction between the term
article of manufacture and the word product, Systems total profits are still
properly based on the gross revenue on all of Systems receipts for the infringing
LHP/LHD levelers.
(32)
Second, Systems assertion flies in the face of its brochures (A66-73, 619195 and 6199-6202) and photographs (A6331-45) of its levelers show them welded
together and sold as a unit. The brochures show and describe finished LHP/LHD
leveler units. The brochures do not indicate that the Lip and Hinge Plate are sold
separately, and Systems presented no evidence indicating that it sold them
separately. Systems assertion is also contrary to its experts report (A6536-6657)
tabulating unit sales, revenue, and profits for the levelers as a whole, and testimony
of its officers describing its levelers as being welded together. (A5792 and 5802).
The Bero Rebuttal Report continually refers to sales of LHP/LHD levelers, but
does not mention separate sales for the Lip and Hinge Plate. Systems officers
did not testify that Systems sold a Lip and Hinge Plate separately. Instead,
Systems vice president of sales and marketing testified that the levelers are sold as
a unit, such as a hydraulic unit, air unit, mechanical unit or competing unit.
(A5854, 97, 99, 5905, 14 and 20). Systems attorney even referred to its levelers as
units at trial. (A5889 and 92).
c.
Total Profits Are Based on Gross Revenues

Profits are properly based on gross revenue after deducting certain
allowable expenses. Henry Hanger & Display Fixture Corp. of America v. Sel-ORak Corp., 270 F.2d 635, 642 (5th Cir. 1959)); Schnadig Corp. v. Gaines Mfg. Co.,
620 F.2d 1166, 1173, 206 USPQ 202, 210 (6th Cir. 1980); Nike, Inc. v. WalMart
(33)
Stores, Inc., 138 F.3d 1437, 1447 (Fed. Cir., 1998). The statute requires the
disgorgement of the infringers profits to the patent holder, such that the infringer
retains no profit from their wrong. Nike v. Wal-Mart at 1448.
The 289 jury instruction properly adopts a gross revenue methodology,
and reads in part as follows:
The District Courts decision ignores Mr. Beros and Dr. Smiths gross
revenue methodology for determining Systems profits under 289. This gross
revenue methodology is found in Beros Rebuttal Report (A6552-53, 6591-95 and
A6617-43), his trial testimony (A5476-77, 5528, 5535-36, 5543-44, 5550), his
Slide Presentation (A6684-85), as well as Dr. Smiths Second Supplemental
Report (A6371-73) and testimony. (A6009-10).
d.
Gross Revenues For Systems LHP/LHD Levelers Were Over

$3,600,000
Gross revenues were determined by both Systems and Nordocks damages
experts. Mr. Bero found that Systems had gross revenues of $13,778,591 on sales
of 1,457 LHP/LHD and 5,255 LMP/LMD levelers. (A6685, 5544 and 5550).
Multiplying Systems average sale price of $2,516 for the hydraulic levelers in
(34)
Beros Rebuttal Report (A6595) and sales of 1,457 LHP/LHD levelers (A668485), Systems had gross revenue of $3,665,812 for the LHP/LHD levelers. Dr.
Smiths found Systems had gross revenues of $14,795,392 on sales of 7,197
LHP/LHD and LMP/LMD levelers, including gross revenues of $3,978,920 on
sales of 1,514 LHP/LHD levelers. (A6009-10 and 6363 and 6373).
Gross Revenues for LHP/LHD levelers
Bero:
$3,665,812
Smith: $3,978,92011
e.
Systems Total Profits For LHP/LHD Levelers Were Over $600,000

The manifest weight of the credible evidence is that Systems total profits on
infringing sales of LHP/LHD levelers were over $600,000. Mr. Bero found that
Systems had gross revenues of $13,778,591 and net pretax profits of $1,876,344 on
sales of 1,457 LHP/LHD and 5,255 LMP/LMD levelers. (A6685, 5528, 5532,
5535-36, 5543-44 and 5550). Multiplying Systems profit of $433/unit (A6552)
and sales of 1,457 LHP/LHD levelers (A6684-85), Systems had net pretax profits
of $630,881 for the LHP/LHD levelers .12 Dr. Smiths testimony and report states
that Systems had gross revenues of $14,795,392 and net profits of $2,833,239 on
sales of 7,197 LHP/LHD and LMP/LMD levelers including gross revenues of
11
The sum of the annual net sales in Table 16S-2 equals $3,978,920. (A6373).
The Bero Rebuttal Report shows that Systems $433 profit/unit on its LHP/LHD
hydraulic levelers is greater than the $215 profit/unit on its LMP/LMD mechanical
levelers. (A6593). The $280 profit/unit in Beros Slide Show Presentation is based
on $1,876,344 total profits for 6,712 total accused units sold, and thus is a
weighted average for the hydraulic and mechanical levelers.
12
(35)
$3,978,920 and net pretax profits of $912,201 on sales of 1,514 LHP/LHD

levelers. (A6373 and 6009-10).
Total Profit for LHP/LHD levelers
Bero:
$630,881
Smith: $912,201
The difference in total profit is largely due to the larger amount of general
and administrative (G&A) deducted by Mr. Bero. For example, Mr. Bero
deducted $1,519,427 in SG&A or about 11% of gross revenue (A6685), while Dr.
Smith deducted $825,965 in sales and general and administrative (SG&A)
expenses or about 5.5% of gross revenue. (A6373). Contrary to Systems burden of
establishing the appropriateness of the deductions (A4540), Mr. Bero did not know
what the specific G&A deductions were. The following passage is insightful:
Q. And do you know if in your calculation of G&A is Mr. McGuire's salary
included in that?
A. I don't know.
Q. Do you know if his secretary's salary is included in G&A in your
calculations?
A. I don't know.
Q. Do you know if legal fees are included in the G&A in your
calculations?
A. I don't know. It's not broken out in detail.
Q. Do you know if office supplies are included in the G&A of your
calculation?
A. I would assume so but I don't know. (A5542).
Systems carried the burden of proof to establish the nature and amount
of G&A to be appropriately deducted from the total profits of its infringing LHP
(36)
and LHD levelers. 13 Bergstrom, 496 F. Supp. at 497 (D. Minn. 1980); Henry
Hanger & Display Fixture Corp. of America v. Sel-O-Rak Corp., 270 F.2d 635,
643 (5th Cir. 1959)).
This Court has held that overhead expenses (e.g. G&A) should not be
deducted when the defendant failed to present any supporting evidence and
merely sought to deduct these expenses on a pro rata basis as a percentage. Nike,
138 F.3d at 1447. Courts have noted that district courts must carefully consider the
deduction of overhead expenses, since, for design patent cases, authority on the
calculation of fixed expenses is scant. Rocket Jewelry Box, Inc. v. Quality Int'l
Packaging, Ltd., 250 F.Supp. 2d 333, 341 (S.D.N.Y. 2003). Courts have held that
it is the proper role of the district court to determine the categories of fixed
expenses that are deductible and to fairly allocate a portion of the fixed expenses to
the infringing item. Id. at 341 (citing Sheldon v. Metro-Goldwyn Pictures, 106 F.2d
45, 54 (2d Cir.1939), aff'd, 309 U.S. 390 (1940)). Courts routinely resolve any
doubts regarding an infringers failure to present adequate proof of its fixed
overhead costs in favor of the plaintiff. Id. Thus, a new trial on 289 damages is
appropriate because the manifest weight of the credible evidence establishes that
Systems total profits on its infringing LHP/LHD levelers is over $600,000.
13
The District Courts reliance on Beros cost savings methodology to determine

Systems profits, and its finding that the jury instructions do not require a
determination of Systems profits, renders a review of the appropriateness of
Systems expenses all but meaningless.
(37)
2.
Trial Record Does Not Support Finding That Systems Total Profits
Were $0
The trial record is void of any legitimate basis for finding Systems total
profits on its sales of 1,457 LHP/LHD levelers were $0.14
Bero did not say $0 total profits.

(A36 DE178)
Smith did not say $0 total profits.
(A39-41 DE220, 224-226)
Systems officers did not say $0 total profits.
(A39-40 DE221-222)
Systems closing arguments do not assert $0 total profits. (A41 DE228)
Even assuming arguendo, that Mr. Beros cost savings methodology for
determining total profits is credible, Mr. Bero testified that Systems saved about
$5 (A6707-08) on the manufacture of the levelers with an average sale price of
$2,516. (A6595). Even if the jury disregarded both Mr. Beros and Dr. Smiths
gross revenue methodologies, and believed Systems had cost savings and relied
on Mr. Beros cost savings methodology, then the jury still should have found
Systems had some profits on its infringing LHP/LHD levelers. It did not. (A5404).
Furthermore, a total profit of $0 lacks common sense and reason. Systems
officers and Mr. Bero did not testify that the accused levelers were a loss leader.
(A36 DE178, A39 DE221 and A40 DE222). To the contrary, Mr. Bero repeatedly
testified that Systems profits on the accused levelers were $1,800,000. (A5528,
14
For reasons discussed below, Mr. Beros cost savings methodology to

determine that Systems total profits on the accused levelers were less than $91,650
is not credible evidence.
(38)
5532, 5535-36 and 5550). Accordingly, there is simply no credible evidence that
Systems total profits on sales of over 1,450 infringing LHP/LHD levelers were $0.
3.
District Court Reliance On Beros Cost Savings Methodology

To Support Finding of $0 Profits Is Erroneous
The District Courts denial of a new trial is erroneous because its decision
relied on Mr. Beros erroneous determination of 289 damages.

a.
District Court Relied on Beros Cost Savings Methodology

The District Courts following statement relied on Mr. Beros legally
deficient cost saving methodology to determine Systems total profits were $0:
$15 per allegedly infringing dock lever was the appropriate amount of
royalty, and that, based on the 6,000 accused units, total damages
were about $91,650. (Id. at 69.) Alternatively, according to Bero,
Systems profit on the accused products was less than $15 per unit,
so lost profits would have been less than $91,650. (Id) (Emphasis
supplied). (A8)
The District Courts decision cites to Page 69 of Mr. Beros trial testimony
regarding Systems profits being less than $15/unit. Yet, the only portion of Mr.
Beros trial testimony on Page 69 pertaining to Systems profits reads as follows:
. . . So a royalty is a proper form of damages. The accused units: 6,000
units; royalty rate: $15 a unit; total damages are about $91,650.
The alternative is the profits attributable to that Systems
earned on its lip and hinge plate ornamental design. And the cost
savings that Systems received as a result of using that design are
something again less than $15 per unit. So on that lip and hinge plate
design the profitability attributable that Systems earned this is
defendant's profits was something less than $15 per unit. It's the
same number as the royalty damages. It's actually less than that.
(39)
Now again, I understand Nordock's position is that it should get

the entire dock leveler, and to the extent that's the case the number
would be, you know, higher obviously. (Emphasis supplied). (A5526).
The District Court relied on Mr. Beros improper cost savings
methodology on page 69 of his trial transcript (A5526) to find something in the
record to support a finding that Systems total profits on sale of over 1,457
infringing LHP/LHD levelers were $0. Yet, even this statement does not establish
a profit of $0; it merely establishes an upper limit of Systems profits. Accordingly,
the District Courts reliance on this methodology to deny Nordocks request for a
new trial on 289 damages cannot stand, and must be remanded. Mr. Beros cost
savings methodology is contrary to the 289 jury instruction and flies in the face
of Congress intent when enacting 289.
b.
Total Profits Are Not Based On Asserted Cost Savings

Beros cost savings methodology undermines the federal statute. Under
this cost saving methodology, every infringer that asserts it had no cost savings
in adopting an infringing design would have free reign to avoid 289 damages,
even when that infringer made $1,000,000 or $10,000,000 in total profit on the
sales of its infringing goods. Beros cost saving methodology completely
undermines the Congressional intent of 289 and renders the statute meaningless.
A methodology that defeats the very intent of Congress in enacting a federal statue
is contrary to law and does not give rise to credible evidence. A District Courts
(40)
reliance on such a methodology is an abuse of discretion. United States v. Ford

Motor Co., 463 F.3d 1267, 1285 (Fed. Cir. 2006) (holding that the trial court's
determination may be overturned if it is based upon an erroneous construction of
the law, based upon fact findings that are clearly erroneous, or if the record
contains no evidence upon which the trial court could have rationally based its
decision).
In addition, Bero Rebuttal Report (A6536-6657) and Systems proposed jury
instructions (A3823 and A4210) never pose that Systems total profits are or could
be determined by Systems asserted cost savings in manufacturing its accused
levelers. Therefore, the jury was not instructed on this novel theory and any award
of damages on this basis would be improper. Wordtech Sys., Inc. v. Integrated
Network Solutions Inc., 609 F.3d 1308, 1318-22 (Fed. Cir. 2010). Even if properly
asserted, Systems and its damages expert cited no legal authority for this cost
savings methodology. Indeed, the concept of such an award is contrary to the
fundamental purpose of 289 damages to put the patent owner in the position of
the infringer. Nike v. WalMart, at 1441. There being no support in the law or
evidence (let alone substantial evidence) for Systems cost savings methodology
for determining its total profits, the District Court erred in relying on this
methodology in denying Nordocks motion for a new trial on 289 damages.
(41)
1. Beros Cost Savings Methodology is Contrary to

Congress Intent for 289
The statute requires the disgorgement of the infringers profits to the patent
holder, such that the infringer retains no profit from their wrong. Nike v. Wal-Mart,
at 1448. Yet, Mr. Bero gave the following testimony:
And then the actual -- next bar is "Systems' accused dock
leveler profits." What did Systems actually earn on the entire dock
levelers? My number as I showed I think on Slide Number 6 was
about $1.8 million from 2009 through February of this year.
Dr. Smith, by not including any variable general and
administrative expenses, has a number that's about a million dollars
higher than mine when he looks at it from that perspective.
And then the sliver on the right is approximately that $100,000
for the profit associated with the lip and hinge plate design that
Systems earned. . . . (Emphasis supplied). (A5528).
The alternative damages, defendants profits are again
approximately 90,000 to 105,000 depending on when you start.
Again, Nordock's position is it's a whole machine, whole dock
leveler. In that case my number would be higher. It would be in the
$1.8 million range, something like that. (Emphasis supplied).
(A5532).
On cross examination, Mr. Bero stated Systems should get to keep the profit
on the sale of its infringing levelers. The following two passages are insightful:
Q.
How much profit did you calculate that Systems made on the
sale of its accused levelers?
A.
On the levelers?
Q.
Yes.
A.
I believe on my Chart Number 6 it was approximately $1.8

million. But, that is from the period of 2009, January of 2009
(42)
through February of 2013. So if you add a couple of months or

subtract a couple of months that number would move a little bit.
Q.
Okay. Of that total $1.8 million you think that Nordock is

entitled to $91,000 of that, correct?
A.
Exactly.
Q.
Who gets to keep the rest?
A.
Who gets to keep the rest?
Q.
Of the 1.8 million profits you calculated.
A.
I would presume that would be Systems.

(A5535-36).
Q.
And your bottom line position is that Systems sold

approximately $14 million of product; is that correct?
A.
It's approximately $14 million, that's correct.
Q.
And made $1.8 million in profits, correct?
A.
Operating profits, that's correct. (A5550).
2. Beros Cost Savings Methodology is Contrary to Jury Instructions

Mr. Beros cost savings methodology adopted by the District Court
conflicts with the Courts 289 jury instruction. (A4540). First, instead of using
Systems gross revenue as a starting point, Mr. Bero used Systems asserted
cost savings as a starting point. Second, his cost savings methodology is
limited to the Lip and Hinge Plate portion of the levelers, thereby reducing
profits by a factor of twenty.15 The Bero Rebuttal Report and his testimony provide
no legitimate basis to effectively apportion away 95% of the leveler profits. Mr.
Beros cost savings methodology fails to consider the fact that the Lip and
15
$1,8,76,344 divided by $91,650 equals 20.47.

(43)
Hinge Plate is an integral and essential part of a dock leveler. The Lip and Hinge
Plate are physically welded to and operates in unison with the entire leveler.
(A6272-88, 94-95 and 6331-45). Mr. Beros cost savings methodology also flies
in the face of his own Rebuttal Report, which provides Tables 2 and 3 and
schedule-after schedule identifying the entire leveler as a unit. (A6551-52, 6591-93
and 6617-53). The Bero Rebuttal Report, Slide Presentation, and trial testimony
provide no data regarding the Lip and Hinge Plate being sold separately, or an
accused leveler being sold without a Lip and Hinge Plate. Mr. Bero admitted on
cross examination that it would be unusual to sell the accused levelers without a
frontend including the Lip and Hinge Plate. (A5568). Instead, the Bero Rebuttal
Report is replete with references to the unit sales, unit revenues and unit profits.
(A6551-52, 6591-93 and 6617-53).
c.
Bero Impermissibly Focused on Ornamental Aspects of

Patented D754 Design
Mr. Beros following testimony on page 69 of his trial transcript
impermissibly focuses on the ornamental aspects of the lip and hinge plate.
The alternative is the profits attributable to that Systems earned on its lip
and hinge plate ornamental design. (Emphasis supplied). (A5526).
This statement runs counter to the following direction in the 289 jury instruction:
not just the portion of profit attributable to the design or
ornamental aspects of the patent. (Emphasis supplied). (A4540).
(44)
Although the jury instruction specifically prohibits focusing the

determination of Systems total profits on the ornamental aspects of the patented
design, Mr. Bero testified that he did just that. A District Courts reliance on a
legally baseless methodology that runs contrary to the jury instruction is an abuse
of discretion.
4.
District Courts Misinterpretation of Patent Damages Jury Instructions

Is Error
Responsive to Nordocks motion for a new trial, the District Court found
there was no need to determine 289 damages due to its misinterpretation of the
Patent Damages Burden of Proof Jury Instruction. The District Court stated as
follows:
Nordocks motion is denied because the jury reasonably based
its verdict on the evidence presented. The jury received extensive
form of its own lost profits or a reasonable royalty, or it could recover
Systems profits as a measure of potential recovery with respect the
sale of each unit of an infringing product. (Id. at 39.) (Emphasis
supplied). (A7).
The Patent Damages Burden of Proof instruction reads in part as follows:
For design patents, Nordock can prove either actual damages,
known as compensatory damages, or it may prove Systems 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 Systems profits on the same sale. (Emphasis supplied). (A4538).
(45)
The 289 damages instruction reads in part as follows:

(Emphasis supplied). (A4540).
a.
District Court Misconstrued the Jury Instructions

The District Court erroneously interpreted the Patent Damages Burden of
Proof instruction to mean that if there was a determination of compensatory

damages under 284, then there need be no determination of damages under 289.
The plain meaning of the Patent Damages Burden of Proof instruction is that
Nordock can prove compensatory damages and/or Systems total profits. The title
of the instruction states its purpose. It is a burden of proof instruction. Nordock
had the burden to prove compensatory and/or Systems total profits damages.
Nordock did not have to prove both.
Still, Nordock could not collect for both on the same sale. This is made plain
by the sentence stating that Nordock is not entitled to recover both compensatory
damages and Systems profits on the same sale. Although the Totaling the
Damage Award instruction is silent on this point (A4551), the concept is repeated
in the Design Patent Damages Lost Profits instruction, which reads in part as
follows:
(46)
As previously explained, Nordock may not recover both Systems

profits and compensatory damages on each sale of an infringing
product. (A4542).
The 289 instruction clearly requires a determination of Systems total profits. The
other patent instructions clearly allow the jury to determine Systems total profits
and compensatory damages, but do not allow Nordock to collect twice for the same
sale.
Owners of U.S. design patents are entitled to collect damages for the greater
of the amount found under 284 and 289. Catalina Lighting, Inc. v. Lamps Plus,
Inc., 295 F. 3d 1277, 1290-91 (Fed. Cir. 2002); Henry Hanger & Display Fixture
Corp. of America v. Sel-O-Rak Corp., 270 F.2d 635, 642 (5th Cir. 1959));
Bergstrom v. Sears, Roebuck and Co., 496 F. Supp. 476, 493-95 (D. Minn. 1980);
Bernhardt v. Collezione, 436 F. Supp. 2d 739, 740-42 (M.D.N.C. 2006). Nordock
is entitled to Systems total profits for the infringing LHP and LHD levelers under
289 because these profits are greater than the amount found under 284 and are in
excess of the minimum fixed by 289. In Catalina, this Court reversed the award
of a reasonable royalty and allowed the plaintiff to recover the infringers profits
under 289 because it was more than the reasonable royalty under 284. Catalina,
295 F. 3d at 1291-92. In accordance with Catalina, Nordock is, as a matter of law,
entitled to Systems profits for the LHP and LHD levelers under 289 because this
amount is greater than the reasonable royalty determined by the jury under 284.
(47)
Id. In accordance with Catalina, Nordock does not seek both Systems total profits
under 289 and a reasonable royalty under 284.
Further confirmation of the meaning of the jury instruction is found in the
289 damages instruction. The Additional Remedy for Design Patent
Infringement Defendants profit instruction reads in part as follows:
If you find infringement, and do not find the D754 Patent is
invalid, you are to award Nordock Systems total profit attributable
to the infringement. (Emphasis supplied). (A4540).
This instruction does not state you [the jury] may award Nordock Systems total
profit. This instruction also does not state the jury is only to award Nordock
Systems profits if you do not award any compensatory damages. Nor does this
instruction state that the jury is only to award Nordock Systems profits if it does
not award Nordock the smaller reasonable royalty requested by Systems. In the
present case, it was Systems, not Nordock, that requested a reasonable royalty
award. (A6122).
The District Courts interpretation of the jury instruction is contrary to
Congress intent in enacting 289. The statute requires the disgorgement of the
infringers profits to the patent holder, such that the infringer retains no profit from
his or her wrong. Nike v. Wal-Mart, at 1448. The District Courts interpretation of
the jury instructions run particularly afoul to Congress intent for 289 given the
facts of this case. Here, a determination needs to be made whether Nordock should
(48)
be allowed to seek recovery of over $600,000 for Systems profits on sales of over
1,457 infringing levelers as Congress intended, or whether its recovery will be
limited to the $46,825 reasonable royalty Systems asserted for those infringing
levelers. As Congress intent should be paramount. this case must be remanded for
a new trial to determine 289 damages. If the District Courts interpretation is
allowed to stand, it will eliminate Nordocks request for 289 damages and
effectively negate the federal statute.
b.
The Jury Instructions Conflict Under District Court Interpretation

The District Courts interpretation of the Jury Instructions renders them in
conflict. Assuming arguendo that the Patent Damages Burden of Proof

instruction allows the jury to avoid a determination of Systems total profits, then
the 289 instructions express statement that if you find infringement and validity,
then you are to award Nordock Systems total profits is in clear conflict with the
other patent damages instruction.
When a jury is given conflicting jury instructions, a new trial is appropriate.
Javier v. City of Milwaukee, 670 F.3d 823, 828 (7th Cir. 2012). In Javier, the
Seventh Circuit found the damages instructions conflicting, and remanded the case
back to the trial court to properly determine damages. Id., at 833. Similarly, in
Midwest Precision v. PTM Industries, the Court was reviewing a damages award
for breach of contract and tortuous interference. Midwest Precision Servs., Inc. v.
(49)
PTM Industries Corp., 887 F.2d 1128, 1137 (1st Cir. 1989).The Court found the
damages instructions conflicting, and remanded the case back to the trial court to
properly determine damages. Id. at 1137. According to the Court, [a] jury cannot
be expected to apply mutually conflicting jury instructions, where each set makes
sense independent of the other. Id.
5.
Systems Closing Arguments Misled the Jury

Systems closing statements continued to mislead the jury apportioning the
lip and hinge plate from the dock leveler as a whole and on properly determining
Systems total profits based on a gross revenue methodology. Systems argued as
follows:
Second point. I think this one is very, very important here.
Alternative damages. Defendant's profits. Defendant's profits. Now,
unlike Dr. Smith, Mr. Bero asked the question profits on what? Not
simply Systems' profits on anything. It's profits on what? The answer
to that question is provided by the ornamental patent itself. It's not an
entire dock leveler. It's the ornamental design of a lip and hinge
plate. A lip and hinge plate. That's what you see here. A lip and hinge
plate. Not entire dock leveler. And again, stating the obvious -- been
through this many times -- there's no dock leveler shown in here. Mr.
Bero made proper calculations. Said what were Systems' profits on the
lip and hinge plate? Not on the entire dock leveler. He made an effort
to make that calculation. Doesn't really matter because that comes up
to be less than $15 per unit. So whether you go on the $15 per unit
reasonable royalty, or the dock leveler--the profits on the lip and
hinge plate, which comes out to less than that, you still wind up
with around 90-some Thousand Dollars. We talked a little bit
there's (indiscernible) earlier. Fine. You add 10, 15,000 bucks to that.
Get up into the hundred thousand and change. But Mr. Bero did the
calculation properly. (A6122-23).
(50)
Nordock pointed out the above discrepancy in its closing statement.

(A6104). In Nike, this Court explained the rule that the patentee could recover
only the proportionate amounts that were proven to be attributable to the patented
feature no longer applies to design patents. Nike v. Walmart at 1441-42. This is
because Congress provided a separate remedy for design patent infringement. Id. A
House of Representatives Report explained that [i]t is expedient that the
infringer's entire profit on the article should be recoverable, for it is not
apportionable, and it is the design that sells the article. H.R.Rep. No. 1966 at 23 (1886), reprinted in 18 Cong. Rec. 834 (1887). The Act of 1887, specific to
design patents, removed the apportionment requirement when recovery of the
infringer's profit was sought. Nike v. Walmart at 1441-42.
Systems closing argument is also contrary to the 289 jury instruction
requiring the total profit to be determined by gross revenue. Systems consented
to the Courts adoption of this gross revenue methodology. Yet, the $91,650 to
which Mr. Bero testified on page 69 of his trial transcript is not based on gross
revenue. (A5526). Thus, contrary to the jury instruction the District Court just
adopted and Systems just accepted, Systems continued to assert its cost savings
methodology.
(51)
6.
District Courts Analysis Is Incongruous

Finally, as best understood, the District Courts analysis appears incomplete.
(A8). The decision does not find that Systems profits were less than $91,650.
Instead, the decision finds that Systems lost profits were less than $91,650.
While the amount of Nordocks lost profits are relevant in determining whether to
award a reasonable royalty or lost profits under 284, Nordocks lost profits are
irrelevant when determining the amount of Systems profits on its infringing
LHP/LHD levelers under 289, provided Nordock does not collect twice - once
under 284 and once under 289 for the same infringing sale.
CONCLUSION AND STATEMENT OF RELIEF SOUGHT
For the forgoing reasons, this case should be remanded to the District Court
for a new trial on damages to determine Systems total profits for the sales of its
over 1,450 infringing LHP/LHD levelers.
Dated this 10th day of November, 2014.
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)
(52)
ADDENDUM
UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF WISCONSIN
NORDOCK, INC.,
Plaintiff/Counterclaim-Defendant,
v.
Case No. 11-C-118
SYSTEMS, INC.,
Defendant/Counterclaimant.
DECISION AND ORDER

On March 27, 2013, a jury returned a special verdict finding that Defendant
Systems, Inc. (Systems) infringed on Plaintiff Nordock, Inc.s (Nordock) U.S.
Design Patent Number D579,754 (the 754 Patent) for a lip, lug, and hinge plate for
dock levelers, with respect to Systems hydraulic dock levelers (the LHP and LHD
levelers). The jury awarded Nordock $46,825 as a reasonable royalty for the sale of
the infringing LHP and LHD levelers. The jury also found that Systems mechanical
dock levelers (the LMP and LMD levelers) did not infringe on Nordocks patent.
Both parties filed motions for amendment of the judgment pursuant to Rule 59(e) of
the Federal Rules of Civil Procedure (ECF Nos. 179 & 180) and motions for orders to
show cause (ECF Nos. 195 & 199). The motions are addressed herein.
Rule 59(e) Standard
The Federal Court of Appeals applies regional circuit law in reviewing the
denial of a motion for a new trial. Silicon Graphics, Inc. v. ATI Techs., Inc., 607 F.3d
Case 2:11-cv-00118-RTR Filed 07/31/14 Page 1 of 17 Document 206
A1
784, 798 (Fed. Cir. 2010). To prevail on a Rule 59(e) motion, a party must clearly
establish (1) that the court committed a manifest error of law or fact, or (2) that newly
discovered evidence precluded entry of judgment. Blue v. Hartford Life & Accident
Ins. Co., 698 F.3d 587, 598 (7th Cir. 2012) (internal quotation marks omitted). The
Seventh Circuit has defined manifest error as the wholesale disregard,
misapplication, or failure to recognize controlling precedent. Oto v. Metro. Life Ins.
Co., 224 F.3d 601, 606 (7th Cir. 2000) (internal quotation marks omitted).
A Rule 59(e) motion is not a fresh opportunity to present evidence that could
have been presented earlier. Edgewood Manor Apartment Homes, LLC v. RSUI
Indem. Co., 733 F.3d 761, 770 (7th Cir. 2013). In other words, Rule 59(e) does not
allow a party to introduce new evidence or advance arguments that could and should
have been presented to the district court prior to judgment. Moro v. Shell Oil Co., 91
F.3d 872, 876 (7th Cir. 1996).
Rule 59(e) permits a court to amend a judgment. However, it is not a proper
vehicle through which to amend the answers provided by a jury on a verdict form
because the verdict form is not part of the judgment entered by the Clerk of Court.
See Frazier v. Boyle, 206 F.R.D. 480, 491-92 (E.D. Wis. 2002).
Rule 59(a), in a bit of a circular way, allows new trials in cases where new
trials have been traditionally allowed at law. ABM Mktg., Inc. v. Zanasi Fratelli,
S.R.L., 353 F.3d 541, 543 (7th Cir. 2003) (citing Fed. R. Civ. P. 59(a)). A motion for
a new trial should succeed only if the verdict is against the manifest weight of the
-2-
A2
evidence. Id. at 545 (quotation and citation omitted); see also Aero Prods. Intl, Inc.
v. Intex Recreation Corp., 466 F.3d 1000, 1016-17 (Fed. Cir. 2006) (In the Seventh
Circuit, a trial court may grant a new trial where the verdict is against the clear
weight of the evidence, while the courts ruling on a motion for a new trial is
reversed only where there is a clear abuse of discretion.) (citation omitted).
To satisfy this standard, the movant must demonstrate that no rational jury
could have rendered a verdict against it. See King v. Harrington, 447 F.3d 531, 534
(7th Cir. 2006). When making this evaluation, the Court views the evidence in a light
most favorable to the non-movant and cannot re-weigh the evidence or make
credibility determinations. Id. The Court will sustain the verdict where a reasonable
basis exists to support the jurys verdict. Id. A new trial may be granted only if the
jurys verdict is against the manifest weight of the evidence, id., or if the trial was
unfair to the moving party. Miksis v. Howard, 106 F.3d 754, 757 (7th Cir. 1997).
Systems
Systems seeks amendment of the judgment contending that no evidence was
presented at trial regarding its accused 6-foot dock levelers and therefore the jurys
finding of infringement as to those dock levelers is unsupported by any evidence and
must be discounted.
Having considered the testimony and evidence submitted at trial, the Court
denies Systems motion because, viewed in the light most favorable to Nordock, the
trial testimony and exhibits support the jurys finding that Systems 6-, 6-, and 7-foot
-3-
A3
wide LHP/LHD levelers infringed Nordocks 754 Patent.

Nordocks 754 Patent pertains to the front end of a dock leveler. (Trial Exs.
18, 35, 36 and 85.) The jury was shown views of the front end of Systems 6- and 7foot wide LHP/LHD levelers and compared those views to the corresponding views
and overall appearance of the 754 Patent. (Trial Exs. 12-13, 31-37, 85, 1004 and
1009.) The jury was also shown evidence (Trial. Ex. 12, Tab 1, Bates No. BERO
0532.) and heard testimony from Denis Gleason (Gleason), the president and CEO of
Nordock, that the 6-foot leveler and the middle 6-foot portion of the 6- and 7-foot
levelers are the same. (Oppn to Systems Mot. Alter or Amend, Ex. A (Gleason Trial
Tr.) 4:19 to 5:9.) (ECF No. 189-1.) This is because the three different widths of
levelers are made on the same welding fixture. One set of fixtures is used for the
entire range of dock leveler sizes and capacities for a particular model. (Gleason
Trial Tr. 3:14-16). Thus, the middle 6-foot portion of a 7-foot wide leveler is identical
to a 6-foot leveler. (Gleason Trial Tr. 4:24-25 and Tr. 6:3-9). Systems offered no
evidence to the contrary, and the jury could reasonably infer from the use of the same
welding fixtures that there is no significant difference between the 6-, 6- and 7-foot
wide levelers.
Systems brochures showed 6- and 7-foot LHP/LHD levelers, but not its 6foot levelers. (See Trial Exs. 12-14.) In addition, Nordock and other manufacturers
had brochures showing their 6- and 7-foot levelers (See Trial Exs. 1-11), and none of
them showed a 6-foot leveler. The jury could reasonably infer from the omission of
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A4
the 6-foot leveler from Nordocks, Systems and third party brochures that the 6foot levelers are substantially similar to the 6- and 7-foot levelers.
Circumstantial evidence can support a finding of infringement. Golden Blount,
Inc. v. Robert H. Peterson Co., 438 F.3d 1354, 1362 (Fed. Cir. 2006) (citing
Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 1272 (Fed. Cir. 1986) (holding
that circumstantial evidence of extensive sales and dissemination of an instruction
sheet can support a finding of direct infringement by the customer); Alco Standard
Corp. v. Tenn. Valley Auth., 808 F.2d 1490, 150203 (Fed. Cir. 1986) (Although the
evidence of infringement is circumstantial, that does not make it any less credible or
persuasive.)). Thus, the Court concludes that a reasonable basis exists to support the
jurys verdict of infringement with respect to the 6-foot dock levelers. Systems
motion for Rule 59 relief is denied.
Nordock
Nordock seeks amendment of the judgment pursuant to Rule 59(e) to include
35 U.S.C. 289 damages resulting from Systems unauthorized infringement of the
754 Patent or, in the alternative, a new trial on damages. Nordock contends that the
jury verdict failed to compensate Nordock for its 289 damages. Nordock also
requests an award of pre- and post-judgment interest as sought by its Complaint.
Damages
With respect to damages in patent cases, regional circuit law applies to
procedural issues and Federal Circuit law applies to substantive and procedural issues
-5-
A5
pertaining to patent law. Wordtech Sys., Inc. v. Integrated Networks Solutions, Inc.,
609 F.3d 1308, 1318 (Fed. Cir. 2010) (citing Aero Prods. Intl, 466 F.3d at 1016; see
also Fiskars, Inc. v. Hunt Mfg. Co., 279 F.3d 1378, 1381 (Fed. Cir. 2002) (noting that
Federal Circuit law controls the distinctive characteristics of patent damages law)).
Upon finding for the claimant the court shall award the claimant damages
adequate to compensate for the infringement, but in no event less than a reasonable
royalty for the use made of the invention by the infringer, together with interest and
costs as fixed by the court. Catalina Lighting, Inc. v. Lamps Plus, Inc., 295 F.3d
1277, 1289 (Fed. Cir. 2002) (quoting 35 U.S.C. 284 (1994)). A design patentee may
recover damages under 35 U.S.C. 284 or under 35 U.S.C. 289, entitled Additional
remedy for infringement of design patent, which states:
Whoever during the term of a patent for a design,
without license of the owner, (1) applies the patented
design, or any colorable imitation thereof, to any article of
manufacture for the purpose of sale, or (2) sells or exposes
for sale any article of manufacture to which such design or
colorable imitation has been applied shall be liable to the
owner to the extent of his total profit, but not less than
$250, recoverable in any United States district court
having jurisdiction of the parties.
Nothing in this section shall prevent, lessen, or
impeach any other remedy which an owner of an infringed
patent has under the provisions of this title, but he shall
not twice recover the profit made from the infringement.
Id. at 1290.
A reasonable royalty is the statutory floor for damages in an infringement case.
See 35 U.S.C. 284. Versata Software, Inc. v. SAP Am., Inc., 717 F.3d 1255, 1267
-6-
A6
(Fed. Cir. 2013) cert. denied, 134 S. Ct. 1013 (2014). A reasonable royalty may be
calculated using one of two baselines: an established royalty, if there is one, or if not,
upon the supposed result of hypothetical negotiations between the plaintiff and
defendant. Id. (citations omitted). The hypothetical negotiation seeks to determine
the terms of the license agreement the parties would have reached had they negotiated
at arms length when infringement began. Id.
Nordocks motion is denied because the jury reasonably based its verdict on
the evidence presented.
The jury received extensive damage instructions.
(Jury
Instructions, 39-50.) (ECF No. 166.) It was instructed that it could award Nordock
compensatory damages in the form of its own lost profits or a reasonable royalty, or it
could recover Systems profits as a measure of potential recovery with respect the sale
of each unit of an infringing product. (Id. at 39.) The jury was also informed that
Nordock was entitled to recover no less than a reasonable royalty (Id. at 40) and
instructed: [i]n determining a reasonable royalty, you should assume that Nordock
would have been willing to allow System [sic] to make; use; or sell the patented
invention and that Systems would have been willing to pay Nordock to do so. (Id. at
49.) (Emphasis added.)
The jury heard testimony from Nordocks damages expert, Dr. Stan V. Smith
(Smith), and Systems damages expert, Richard Bero (Bero). Smith testified that
Systems profits on the sale of the infringed lug and pin design were $845,954. (See
also Trial Ex. 49.) Bero testified that because Nordock had not established that it
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incurred lost profits, they were not applicable damages. (See e.g. Bero Trial Tr., 1415) (ECF 178.) Bero also testified that royalty was the proper form of damages, that
$15 per allegedly infringing dock lever was the appropriate amount of royalty, and
that, based on the 6,000 accused units, total damages were about $91,650. (Id. at 69.)
Alternatively, according to Bero, Systems profit on the accused products was less than
$15 per unit, so lost profits would have been less than $91,650. (Id.) Although the
jury heard testimony regarding lost profits, it chose to award a reasonable royalty. The
jury was free to discredit Smiths testimony regarding Nordocks lost profits or find
that Beros testimony was more convincing and persuasive.
After finding that half of the accused products (the LHP and LHD levelers)
were infringed upon, the jury made an approximate calculation of half the amount of
reasonable royalties to which Bero had testified, and awarded that sum. The jurys
verdict was consistent with the instructions, and a reasonable basis exists in the
testimony and evidence presented at trial to support the jury verdict.
Interest
Nordock also seeks an award of prejudgment and post-judgment interest.
Nordock seeks an award of $69,288 in prejudgment interest for May 2009 through
March 2013 on its claimed lost profits of $845,954. Nordocks calculations are based
on the corporate composite bond rate with monthly compounding.
Nordock has
provided charts showing prejudgment interest amounts based on the corporate

composite bond rate, the prime rate, and variations of the prime rate. (Ex B to
-8-
A8
Nordocks Mem. Amend. J.) (ECF No. 181-2.) Systems did not respond to the interest
portion of Nordocks motion.
Under 35 U.S.C. 284, prejudgment interest ensures adequate compensation
for the infringement. Oiness v. Walgreen Co., 88 F.3d 1025, 1033 (Fed. Cir. 1996)
(citing General Motors Corp. v. Devex Corp., 461 U.S. 648, 655-56 (1983);
Underwater Devices, Inc. v. MorrisonKnudsen Co., 717 F.2d 1380, 1389, (Fed. Cir.
1983)). Prejudgment interest has no punitive, but only compensatory, purposes. Id.
Interest compensates the patent owner for the use of its money between the date of
injury and the date of judgment. Id. The question of the rate at which such an award
should be made is a matter left to the sound discretion of the trier of fact.
Studiengesellschaft Kohle, m.b.H. v. Dart Indus., Inc., 862 F.2d 1564, 1580 (Fed. Cir.
1988). The question of whether it is appropriate to compound prejudgment interest is
also a matter within a district courts discretion. Gyromat Corp. v. Champion Spark
Plug Co., 735 F.2d 549, 557 (Fed. Cir. 1984).
Nordock indicates that if it had to borrow money it would have been required
to pay at least the corporate composite bond rate. Nordock also states that it typically
re-invests its profits into the company.
Nordocks requests are not outside the
parameters of rates or compounding that have been allowed by district courts. Thus,
as a matter of discretion, the Court will allow Nordock to recover prejudgment
interest from May 2009 through March 2013 at the corporate composite bond rate
compounded monthly. However, such interest will be calculated on the damage
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A9
award amount of $46,825.

Nordock also requests post-judgment interest. As noted in Transmatic, Inc. v.
Gulton Indus., Inc., 180 F.3d 1343, 1347 (Fed. Cir. 1999), 28 U.S.C. 1961, the postjudgment interest provision states that [i]nterest shall be allowed on any money
judgment in a civil case recovered in a district court. . . . Such interest shall be
calculated from the date of the entry of the judgment. Id. (quoting 28 U.S.C.
1961). An award of post-judgment interest is required by 1961. Transmatic held
that the determination of the correct dividing line for calculating pre- and
postjudgment interest is governed by regional circuit law and 1961 because it is not
a question unique to patent law. Id. at 1347-48.
Nordocks motion requests amendment of the judgment to include an award of
post-judgment interest. However, Goodwall Const. Co. v. Beers Const. Co., 991 F.2d
751, 759 (Fed. Cir. 1993) and Mathis v. Spears, 857 F.2d 749, 760 (Fed. Cir. 1988),
cases cited by Nordock in support of its request, do not address whether the award of
post-judgment interest should be included in the judgment and whether regional or
circuit law applies to the issue. The Courts research did not disclose any decisions of
the Federal Circuit Court of Appeals addressing the issues. However, the composition
of a judgment is not an issue unique to patent cases. See Transmatic, 180 F.3d at
1347-48. Therefore, this Court will apply regional circuit law.
The Court of Appeals for this circuit has observed, [c]ivil litigants who win
money judgments in district courts are entitled to post judgment interest by statute.
- 10 -
A10
Consequently, a judgment awarding post-judgment interest is redundant. See Pace

Commcns, Inc. v. Moonlight Design, Inc., 31 F.3d 587, 591 (7th Cir. 1994).
Based on the foregoing, while Nordock is entitled to and has been paid some
post-judgment interest (see Systems Tender to Nordock of Satisfaction of J. [ECF No.
193]), in accord with the case law of this circuit the judgment will not be amended to
provide for post-judgment interest. Nordocks Rule 59(e) motion is granted as to
prejudgment interest in the amount of $10,170.09 and its entitlement to post-judgment
interest and denied in all other respects.
Motions for an Order to Show Cause
Although each party requests an order to show cause regarding contempt,
neither party addresses the law relating to contempt proceedings. Regional circuit law
governs contempt proceedings that do not raise issues unique to patent law. Energy
Recovery, Inc. v. Hauge, 745 F.3d 1353, 1356 (Fed. Cir. 2014) (citing Schaefer Fan
Co., Inc. v. J & D Mfg., 265 F.3d 1282, 1289 (Fed. Cir. 2001)). The proponent of the
civil contempt motion has the following burden:
To prevail on a request for a contempt finding, the moving
party must establish by clear and convincing evidence that
(1) a court order sets forth an unambiguous command; (2)
the alleged contemnor violated that command; (3) the
violation was significant, meaning the alleged contemnor
did not substantially comply with the order; and (4) the
alleged contemnor failed to make a reasonable and
diligent effort to comply.
Nat'l Spiritual Assembly of Bahais of U.S. Under Hereditary Guardianship, Inc. v.
- 11 -
A11
Nat'l Spiritual Assembly of Bahais of U.S., Inc., 628 F.3d 837, 847 (7th Cir. 2010)
(quoting S.E.C. v. Hyatt, 621 F.3d 687, 692 (7th Cir. 2010)).1 Additionally, with
respect to non-parties, the movant has the burden of showing that the non-parties were
bound by the injunction. Id.
Systems Request
Systems seeks an Order directing Nordock to show cause why it should not be
held in contempt for: (1) misrepresenting the terms of the Courts March 27, 2013,2
injunction to Systems distributors, (2) harassing Systems distributors by falsely
accusing them of being in violation of that injunction and demanding information from
them; and (3) interfering with Systems business relationships with its distributors.
Systems provides copies of six letters sent by Nordock. (Pilgrim Decl., Exs. A-F.)
(ECF Nos. 198, 198-1 to 198-6.) The company names of the six distributors to whom
Nordock sent letters include the name Fairborn.
The six letters are similar in content.
Each states that the Court has
permanently enjoined Systems from selling its infringing LHP and LHD dock levelers,
that a copy of the Courts order and the patent are enclosed, and informs the distributor
that the order is binding on them. The letter also asserts that the distributor continues
S.E.C. v. First Choice Management Services, Inc., 678 F.3d 538, 544-45 (7th Cir. 2012),
questioned the use of the clear and convincing standard in civil contempt, but declined to try to solve
that puzzle. Absent further binding decisions on the issue, the clear and convincing standard
remains applicable.
2
The Court has corrected Systems typographical error. 2013 is the year the injunction
issued.
- 12 -
A12
to offer the infringing LHP leveler, encloses copies of Fairborns website pages
listing the infringing LHP leveler, demands that the distributor confirm in writing that
the information has been or will be promptly removed from the website. Lastly, the
letter requires the distributor to provide information regarding any post-March 27,
2013 LHP leveler sales, shipments, and customer requests, regardless of whether or
not sales were made.
The injunction issued in this case states, Systems, Inc., is PERMANENTLY
ENJOINED from making, using, selling or importing its LHP and LHD Series dock
levelers. (J.) (ECF No. 171.) The injunction does not require that Systems give
notice of the injunction. The injunction does not bar any conduct by Nordock.
Nordock could have contacted Systems with its concerns about the distributors
or sought modification of the permanent injunction to require that Systems give notice
of the injunction to its distributors. While Nordock had options other than its direct
contact with Systems distributors, it is not in violation of any command of the
injunction.
Furthermore, Nordocks inclusion of the judgment provided the
distributors with the exact provisions of the injunction.

Systems has not shown that the alleged contemnor, Nordock, violated an
unambiguous command of the injunction. See Natl Spiritual Assembly of Bahais,
628 F.3d at 847. Thus an order to show cause against Nordock for misrepresenting the
injunction and wrongfully contacting Systems distributors is not warranted. Based
on the foregoing, Systems request for an order to show cause is denied.
- 13 -
A13
Nordocks Counter-Request
Nordocks counter-motion asserts that the Court should issue an order to show
cause why Mike Pilgrim (Pilgrim), an officer and owner of Systems, Fairborn USA
and Fairborn Equipment, should not be held in contempt of the Courts permanent
injunction. It asserts that Systems and Pilgrim used their longstanding relationship
with Fairborn USA and Fairborn Equipment to continue marketing the infringing
LHP levelers by Exhibit H to its motion, a printout of material posted on the website of
Fairborn Equipment Company Inc. that shows five categories of information
regarding the LHP levelers: literature; spec sheets; pit details; architectural details;
and the owners manual.
Pilgrim is responsible for marketing dock levelers manufactured by Systems.
Pilgrim has a longstanding relationship with the two Fairborn companies and is an
officer of both companies. With respect to Exhibit H, Gleason avers that the first four
categories listed would be used only for marketing the infringing LHP dock levelers
and not for anything else. (Gleason Decl. dated June 20, 2014, 5.) (ECF No. 205-1.)
Because Nordock seeks an order to show cause against three non-parties, the
first issue is whether the injunction is binding on Pilgrim Fairborn USA and Fairborn
Equipment.
Rule 65(d) of the Federal Rules of Civil Procedure, which governs
injunctions and temporary restraining orders, codifies both the general principle that an
injunction binds only the parties, and the exceptions to that principle. Natl Spiritual
Assembly of Baha'is, 628 F.3d at 847. The Rule provides: (2) Persons Bound. The
- 14 -
A14
order binds only the following who receive actual notice of it by personal service or
otherwise: (A) the parties; (B) the parties officers, agents, servants, employees, and
attorneys; and (C) other persons who are in active concert or participation with anyone
described in Rule 65(d)(2)(A) or (B). Fed. R. Civ. P. 65(d)(2).
By its terms Rule 65(d) makes injunctions binding on the parties to the
underlying action and their officers, agents, servants, employees, and attorneys, even
if those officers, agents, etc. are not named as parties to the litigation, provided that
they have actual notice of the injunction by personal service or otherwise. Fed. R. Civ.
P. 65(d)(2)(B). This is based on the idea that [a]n order issued to a corporation is
identical to an order issued to its officers, for incorporeal abstractions act through
agents. Natl Spiritual Assembly of Bahais, 628 F.3d at 848 (citation omitted). Thus
Pilgrim, an officer of Systems who had actual notice of the injunction, is bound by the
injunction. Pilgrim was also an officer of Fairborn USA and Fairborn Equipment, and
he knew or should have known about exhibit H. (See Gleason Decl. 6.) Thus,
Fairborn USA and Fairborn Equipment are arguably bound by the injunction. See
Natl Spiritual Assembly of Bahais, 628 F.3d at 848.
However, the injunction prohibits Systems from making, using, selling or
importing its LHP and LHD Series dock levelers. Neither Fairborn USA nor Fairborn
Equipment make, use, sell, or import Systems LHP and LHD Series dock levelers.
The uncontroverted declarations of Pilgrim and Edward McGuire (McGuire),
Systems president, also establish that upon hearing the jurys verdict, the two men
- 15 -
A15
immediately contacted Systems manufacturing personnel and instructed them to

substitute a piano-style hinge for the lug-hinge structure in all LHP and LHD levelers
to be manufactured and/or shipped from that date forward. (ECF Nos. 197 & 198.)
McGuire and Pilgrim also contacted buyers who had placed orders for LHP or LHD
levelers and informed them that the levelers they had ordered would be supplied, at no
extra cost, with piano-style hinges rather than lug-style hinges. Furthermore, at no
time between March 26, 2013, and the May 2, 2014, date of the declarations has
Systems made, sold, offered for sale or shipped an LHP or LHD leveler having a lugstyle hinge. Since March 26, 2013, every LHP and LHD leveler made, sold, offered
for sale or shipped has included a piano-style hinge rather than a lug-style hinge.
Furthermore, Pilgrim has not made, used, sold, or imported Systems LHP and LHD
Series dock levelers.
In its own filings Nordock stated that the first four categories of documents
shown in Exhibit H could only be used for marketing, but Nordock has not shown that
the injunction unambiguously prohibits marketing. As such, Nordock has not shown
that any of the alleged contemnors, Pilgrim, Fairborn USA, and Fairborn Equipment,
violated an unambiguous command of the injunction. See id at 847. Therefore,
Nordocks motion for an order to show cause why Pilgrim, Fairborn USA, and/or
Fairborn Equipment should not be held in contempt is denied. Additionally, the Court
notes that according to a January 23, 2014, letter from outside counsel to Fairborn
USA and Fairborn Equipment, the infringing material was ordered removed from
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A16
Fairborn Equipments website. (ECF No. 199-10.)

NOW, THEREFORE, BASED ON THE FOREGOING, IT IS HEREBY
ORDERED THAT:
Systems Rule 59(e) motion (ECF No. 179) is DENIED;
Nordocks Rule 59(e) motion (ECF No. 180) is GRANTED with respect to
pre-judgment interest in the amount of $10,170.09 and its entitlement to post-judgment
interest under 28 U.S.C. 1961, and DENIED in all other respects;
The Clerk of Court is DIRECTED TO ENTER an amended judgment stating
that Nordock shall recover $10,170.09 from Systems in prejudgment interest;
Systems motion for an order to show cause (ECF No. 195) is DENIED; and
Nordocks motion for an order to show cause (ECF No. 199) is DENIED.
Dated at Milwaukee, Wisconsin, this 31st day of July, 2014.
BY THE COURT:
__________________________
HON. RUDOLPH T. RANDA
U.S. District Judge
- 17 -
A17
AO 450 (Rev. 5/85) Judgment in a Civil Case q
United States District Court

EASTERN DISTRICT OF WISCONSIN
NORDOCK, INC.,
Plaintiff-Counterclaim Defendant,
AMENDED
JUDGMENT IN A CIVIL CASE
v.
CASE NUMBER: 11-C-118
SYSTEMS, INC.,
Defendant-Counterclaimant.
:
:
Jury Verdict. This action came before the Court for a trial by jury. The issues have been
tried and the jury has rendered its verdict.
Decision by Court. This action came on for consideration and a decision has been rendered.
IT IS ORDERED AND ADJUDGED
Nordock, Inc.s motion for partial summary judgment as to the validity and enforceability
of its design patent, United States Patent No. D579,754, is GRANTED as to the following
defenses: anticipation; obviousness; prosecution estoppel; laches; equitable estoppel; and
unclean hands.
Systems, Inc.s motion for summary judgment dismissing all of Nordock, Inc.s claims is
DENIED.
Nordock, Inc.s claims for unfair competition and unfair trade practices are withdrawn and
therefore DISMISSED WITH PREJUDICE.
Judgment is entered on the jurys verdict in favor of Nordock, Inc. and against Systems,
Inc. in the amount of $46,825.00 for reasonable royalties for Systems non-willful
infringement of Nordock, Inc.s D579,754 patent with regard to Systems LHP and LHD
Series dock levelers, plus costs.
Nordock, Inc. shall recover from Systems, Inc. $10,170.09 in prejudgment interest.
A18
Systems, Inc., is PERMANENTLY ENJOINED from making, using, selling or importing

its LHP and LHD Series dock levelers.
The jury determined that Systems, Inc. did not prove that Nordock, Inc.s D579,754 patent
is invalid. Therefore, Systems, Inc.s, declaratory judgment counterclaim is DISMISSED
WITH PREJUDICE.
This action is hereby DISMISSED.
July 31, 2014
JON W. SANFILIPPO
Clerk
Date
s/ Linda M. Zik
(By) Deputy Clerk
APPROVED:
Hon. Rudolph T. Randa

U.S. District Judge
A19

Nordock, Inc. v. Systems Inc., 14-1762, -1795
CERTIFICATE OF SERVICE
I, Elissa Matias, being duly sworn according to law and being over the age
of 18, upon my oath depose and say that:
Counsel Press was retained by NELSON KINDER + MOSSEAU PC
SOKOL LAW OFFICE, Attorneys for Appellant to print this document. I am an
employee of Counsel Press.
On November 10, 2014 counsel for Appellant has authorized me to
electronically file the foregoing Brief for Plaintiff-Appellant with the Clerk of
Court using the CM/ECF System, which will serve via e-mail notice of such filing
to all counsel registered as CM/ECF users, including any of the following:
John Whitaker
Whitaker Law Group
1218 Third Avenue, Suite 1809
Seattle, WA 98101
206-436-0900
[email protected]
Philip P. Mann
(principal counsel)
Mann Law Group
1218 3rd Avenue, Suite 1809
Seattle, WA 98101
206-436-0900
[email protected]
Paper copies will also be mailed to the above principal counsel at the time paper
copies are sent to the Court.
Upon acceptance by the Court of the e-filed document, six paper copies will
be filed with the Court, via Federal Express, within the time provided in the
Courts rules.
November 10, 2014
/s/ Elissa Matias

Counsel Press
CERTIFICATE OF COMPLIANCE WITH TYPE-VOLUME

LIMITATION, TYPEFACE REQUIREMENTS AND TYPE STYLE
REQUIREMENTS
1. This brief complies with the type-volume limitation of Federal Rule of
Appellate Procedure 32(a)(7)(B).
X The brief contains 12,496 words, excluding the parts of the brief
exempted by Federal Rule of Appellate Procedure 32(a)(7)(B)(iii),or
The brief uses a monospaced typeface and contains
lines of
text, excluding the parts of the brief exempted by Federal Rule of
Appellate Procedure 32(a)(7)(B)(iii).
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The brief has been prepared in a proportionally spaced typeface using

MS Word 2013 in a 14 point Times New Roman font or
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in a ___ characters per inch_________ font.
November 10, 2014

Date
/s/Jeffrey S. Sokol________________
Jeffrey S. Sokol
Counsel for Appellant, Nordock, Inc.
2014-1762, -1795

NORDOCK, INC.,
Plaintiff Appellant,
v.
SYSTEMS INC, DBA POWERAMP, DBA DLM Inc, DBA McGuire,

Defendant Cross - Appellant.
Appeal from the United States District Court from the Eastern District of
Wisconsin in Case No.11-CV-0118, Judge Rudolph T. Randa.
BRIEF FOR DEFENDANT APPELLEE CROSS-APPELLANT
PHILIP P. MANN
TIMOTHY J. BILLICK
MANN LAW GROUP
Seattle, Washington 98101
(206) 436-0900
JOHN WHITAKER
WHITAKER LAW GROUP
(206) 436-8500
Attorneys for Defendant-Cross-Appellant
SYSTEMS INC.
January 21, 2015
Spade & Archer Printing
(206) 508-0159
Counsel for Defendant Cross-Appellant SYSTEMS, INC., certifies the
following:
1.
The full name of every party or amicus represented by me is:
Systems, Inc.
2.
The name of the real party in interest (if the party named in the
caption is not the real party in interest) represented by me is:

Systems Inc.
3.
The
parent
companies,
subsidiaries
(except
wholly-owned
subsidiaries), and affiliates that have issued shares to the public, of the
party or amicus represented by me are:
None
4.
The name of all law firms and the partners or associates that
appeared for the party or amicus now represented by me in the trial court or
agency or are expected to appear in this court are:
Philip P. Mann
Timothy Billick
MANN LAW GROUP
Seattle, WA 98101
206-436-0900
John Whitaker
WHITAKER LAW GROUP
Seattle, WA 98101
206-436-8500
TABLE OF CONTENTS
I.
STATEMENT OF RELATED CASES......................................................1
II.
APPELLATE JURISDICTIONAL STATEMENT....................................2
III.
STATEMENT OF THE ISSUES...............................................................3

A.
Nordock's Appeal..............................................................................3
B.
Systems Cross Appeal.....................................................................3
IV.
INTRODUCTION......................................................................................4
V.
STATEMENT OF THE CASE..................................................................6
VI.
STATEMENT OF THE RELEVANT FACTS...........................................9
VII. SUMMARY OF THE ARGUMENT........................................................15

VIII. ARGUMENT............................................................................................18
A.
Standard of Review........................................................................18
B.
Applicable Legal Standards...........................................................18
C.
More Than Substantial Evidence Was Presented At Trial To

Support The Jurys Damages Award.............................................21
1.
The Jury Did, In Fact, Compensate Nordock For The Alleged

Infringement..............................................................................21
2.
The Damages Awarded By The Jury Fall Within The Range

Established By The Competing Experts...................................23
3.
Substantial Evidence Was Provided At Trial To Support The

Jury's Damage Award...............................................................24
4.
The Jury's Damage Award Actually Exceeds Mr. Bero's

Estimate.....................................................................................25
5.
Mr. Bero's Opinion Was Well Supported And Properly

ii
Received......................................................................................27
D.
The Jury Clearly And Properly Credited Mr. Bero's Testimony

Over That Of Dr. Smith.................................................................32
1.
Nordock Had Ample Opportunity To Cross-Examine Mr. Bero

And, In Fact, Did So..................................................................33
2.
Mr. Bero Correctly Calculated Profits Based On The Article

Of Manufacture Claimed In The 754 Design Patent............34
3.
Mr. Bero Properly Relied On The Actual Article Of

Manufacture Claimed In The '754 Design Patent...................38
4.
Dr. Smith Never Even Reviewed The '754 Design Patent In

Suit, Much Less Calculate Systems' Profits On The Actual
Article Of Manufacture To Which The Design Was Applied...40
5.
Based On The Trial Testimony Of The Opposing Experts, The

Jury Was Free To Discount The Opinion Of Dr. Smith And
Adopt That Of Mr. Bero.............................................................43
E.
Nordock Has Waived Any Objections It Might Have Had To The

Courts Jury Instructions...............................................................45
F.
Nordock Has Waived Any Challenge To The Closing Argument

Delivered By Systems' Counsel.....................................................48
G.
The District Court Erred By Declining To Rule the 754 Design

Patent Invalid As A Matter Of Law..............................................48
1.
The 754 Design Patent Is Invalid As Purely Functional........49
2.
Prosecution History Shapes The Scope Of The 754 Design

Patent.........................................................................................52
3.
The 754 Design Patent Is Purely Functional..........................53

(a)
The 754 Design Patent Itself Admits That It Is Primarily

Functional..............................................................................53
(b)
Prosecution History Estoppel Bars The Ornamental Claim

iii
55
IX.
Nordocks Own Advertising Touts The Functionality Of The

754 Design Patent................................................................56
(d)
Nordocks Own Witnesses Admit The Lug Hinge/Header

Plate Design Is Functional...................................................57
4.
The Availability of Alternatives Does Not Eliminate

Functionality..............................................................................59
5.
The Overwhelming Weight Of The Evidence Proves The 754

Design Patent Is Invalid As Being Functional.........................61
Nordock Failed To Prove That Systems 6 1/2 Foot Dock Leveler

Infringes...................................................................................................61
A.
X.
(c)
No Evidence Regarding Systems 6 1/2 Foot Dock Leveler Was

Presented At Trial..........................................................................63
CONCLUSION........................................................................................66
TABLE OF CASES
ABM Mktg., Inc. v. Zanasi Fratelli, S.R.L., 353 F.3d 541, 543 (7th Cir. 2003)
...........................................................................................................................19
Aero Prods. Intl, Inc. v. Intex Recreation Corp., 466 F.3d 1000, 1016-17 (Fed.
Cir. 2006)...........................................................................................................20
Amini Innovation Corp. v. Anthony California, Inc., 439 F.3d 1365, 1371
(Fed. Cir. 2006).................................................................................................59
Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986).....................................43
Australia Vision Servs. v. Diopitcs Medical Prods., 29 F.Supp.2d 1152 (C.D.
Cal., 1998).........................................................................................................52
Berry Sterling Corp. v. Prescor Plastics, Inc., 122 F.3d 1452, 1456 (Fed. Cir.
iv
1997)..................................................................................................................56
Blue v. Hartford Life & Accident Ins. Co., 698 F.3d 587, 598 (7th Cir. 2012)
...........................................................................................................................18
Brooktree Corp. v. Advanced Micro Devices, Inc., 977 F.2d 1555, 1580 (Fed.
Cir. 1992)...........................................................................................................20
Chrysler Workers Ass'n v. Chrysler Corp., 834 F.2d 573, 578 (6th Cir.1987) 43
Coal Resources, Inc. v. Gulf & Western Indus., Inc., 865 F.2d 761, 775 (6th
Cir. 1989)...........................................................................................................44
Contessa Food Products v. Conagra Inc., 282 F.3d 1370, 1381 (Fed. Cir.
2002)..................................................................................................................62
Cybor Corp. v. FAS Technologies., Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998)
...........................................................................................................................21
Edgewood Manor Apartment Homes, LLC v. RSUI Indem. Co., 733 F.3d 761,
770 (7th Cir. 2013)............................................................................................19
Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 980 (Fed. Cir. 1999).............52
Frazier v. Boyle, 206 F.R.D. 480, 491-92 (E.D. Wis. 2002).............................19
Johnson & Johnston Associates, Inc. v. R.E. Service Co., 285 F.3d 1046 (Fed.
Cir. 2002)...........................................................................................................55
King v. Harrington, 447 F.3d 531, 534 (7th Cir. 2006)...................................20
La Montagne v. American Convenience Products, Inc., 750 F.2d 1405, 1410
(7th Cir. 1984)...................................................................................................62
Miksis v. Howard, 106 F.3d 754, 757 (7th Cir. 1997).....................................20
Moro v. Shell Oil Co., 91 F.3d 872, 876 (7th Cir. 1996)..................................19
Nike, Inc. v. Wal-Mart Stores, Inc., 138 F.3d 1437 (Fed. Cir. 1998)...............39
Oto v. Metro. Life Ins. Co., 224 F.3d 601, 606 (7th Cir. 2000)........................18
Perfetti v. First Nat. Bank of Chicago, 950 F.2d 449, 450 (7th Cir. 1991).....62
v
Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 893 (Fed. Cir.
1984)..................................................................................................................21
PHG Technologies v. St. John Companies, Inc., 469 F.3d 1361, 1366-1367
(Fed. Cir. 2006)...........................................................................................51, 59
Power Controls Corp. v. Hybrinetics, Inc., 806 F.2d 234, 238 (Fed. Cir. 1986)
...........................................................................................................................51
Richardson v. Stanley Works, Inc., 597 F.3d 1288 (Fed. Cir. 2010)...............49
Rosco, Inc. v. Mirror Lite Co., 304 F.3d 1373, 1378 (Fed. Cir. 2002)..............59
Silicon Graphics, Inc. v. ATI Techs., Inc., 607 F.3d 784, 798 (Fed. Cir. 2010)
...........................................................................................................................18
United States v. Brown, 7 F.3d 648, 655 (7th Cir. 1993)................................44
United States v. Jackson, 688 F.2d 1121, 1126 (7th Cir. 1982)......................43
United States v. Mansoori, 304 F.3d 635, 654 (7th Cir. 2002), cert. denied 538
U.S. 967 (2003)..................................................................................................43
United States v. Serafino, 281 F.3d 327, 330-331 (1st Cir. 2002)...................44
United States v. Stormer, 938 F.2d 759, 762 (7th Cir. 1991)..........................43
United States v. Towns, 913 F .2d 434, 445 (7th Cir. 1990)...........................43
United States v. White, 639 F.3d 331 (7th Cir. 2011)......................................43
Whitserve, LLC v. Computer Packages, Inc., 694 F.3d 10, 26 (Fed. Cir. 2012).
...........................................................................................................................18
TABLE OF STATUTES
28 U.S.C. 1338(a).............................................................................................2
28 U.S.C. 1295(a).............................................................................................2
Fed. R. App. P. 4.................................................................................................2
Fed. R. Civ. P. 59(a)..........................................................................................19
vi
I.
STATEMENT OF RELATED CASES
Counsel is unaware of any other appeal in or from the same civil

action or proceeding as this matter that was previously before this or
any other appellate court.
There are no other cases known to counsel pending in this or any
other court that will directly affect or be directly affected by this Courts
decision in the pending appeal.
II.
(a)
APPELLATE JURISDICTIONAL STATEMENT

Jurisdiction
in
the
District
Court
was
based
upon
28 U.S.C. 1338(a).
(b)
This Court's jurisdiction is based on 28 U.S.C. 1295(a), this
being an appeal from a final decision of a District Court having

jurisdiction under 28 U.S.C. 1338(a).
(c)
This appeal is timely under Fed. R. App. P. 4. A final
judgment was entered by the District Court on July 31, 2014. A timely
Notice of Appeal to this Court was filed on August 19, 2014, and a
timely Notice of Cross-Appeal to this Court was filed on August 29,
2014.
III. STATEMENT OF THE ISSUES

A.
NORDOCK'S APPEAL
The Statement of The Issues offered by Plaintiff/Appellant
Nordock, Inc. (Nordock) is misleading. Indeed, Nordock's Statement

glosses over the fact that this action was tried to a jury a jury that
resolved key factual issues in favor of Defendant/Cross-Appellant,
Systems, Inc. (Systems). A more accurate statement of the only actual
issue presented in Nordock's appeal is as follow:
1.
Was substantial evidence presented at trial to support the
jurys award of $46,825 to Nordock for infringement of Nordocks U.S.

Design Patent No. D579,754 (the 754 Design Patent)?
B.
SYSTEMS CROSS APPEAL

2.
Is the 754 Design Patent invalid as a matter of law because
it discloses nothing except purely functional elements?

3.
Was substantial evidence presented at trial to support the
jurys finding that the Systems 6 1/2 foot hydraulic dock leveler
infringed the 754 Design Patent?
IV.
INTRODUCTION
This case comes to this Court following a six-day jury trial

conducted between March 18-26, 2013 before a twelve person jury in the
District Court for the Eastern District of Wisconsin. In the proceedings
below, Appellant Nordock claimed that six separate models of dock
levelers manufactured and sold by Systems infringed Nordocks 754
Design Patent. In a form of split decision, the jury found that three
separately
sized
mechanical
style
dock
levelers
accused
of
infringement did not infringe the 754 Design Patent, but that three
separately sized hydraulic style dock levelers did infringe that patent.
Clearly discounting the opinion of Nordock's damages expert Dr. Stan
Smith that an appropriate damages award would be in excess of
$22,000,000, the jury awarded Nordock $46,825 as compensation for the
infringement it found. This figure is squarely within the range that
Systems own damages expert Richard Bero testified at trial would be
appropriate if infringement were found.
Dissatisfied with the jurys monetary award, Nordock appeals to
this Court seeking a second bite of the damages apple.
4
Because substantial evidence was presented at trial to support the

damages award returned by the jury, Nordock's appeal is not well
taken, and the District Court correctly denied Nordock's post-trial
motion seeking a new trial on damages. Accordingly, that aspect of the
District Courts judgment should be affirmed, and a new trial on
damages should not be ordered.
The District Court did err, however, in two respects that are the
subject of Systems cross-appeal.
First, the District Court erred by failing to hold, as a matter of
law, that the design patent at issue in this case is invalid as being
directed to purely functional features present in a purely functional and
utilitarian dock leveler.
Second, the District Court erred in failing to set aside the jury's
determination that one of the subject accused dock levelers, (referred to
herein and elsewhere as the 6 1/2 foot hydraulic dock leveler)
infringed the subject design patent. At trial, no evidence concerning
how the 6 1/2 foot leveler actually appears was presented. Indeed, the
6 1/2 foot hydraulic leveler was never shown to the jury, whether by
5
way of actual sample, photograph, drawing or otherwise. Instead, the

jury was shown two different levelers and was asked to mentally
interpolate between them to form a mental impression (i.e., a guess) as
to how such a leveler might look. Based on such a guess, the jury was
asked to then determine whether such an imaginary leveler had the
same appearance as the leveler shown in the subject design patent.
Because no evidence, substantial or otherwise, was presented to
the jury regarding the actual appearance of the 6 1/2 foot leveler, and
because appearance is of critical importance in determining whether a
design patent is infringed, the jury's finding of infringement as to the
6 1/2 foot leveler should be reversed.
V.
STATEMENT OF THE CASE
Nordocks Statement of the Case emphasizes the irrelevant while

ignoring
the
important.
Accordingly,
Systems
supplements
the
Statement of the Case with the following:

Appellant Nordock brought this action for design patent
infringement in the Eastern District of Wisconsin on January 28, 2011.
On May 11, 2011 Systems counterclaimed for a declaratory judgment of

non-infringement and patent invalidity.
On December 20, 2012, the parties filed cross motions for
summary judgment as to various issues. In its motion, Systems sought,
among other things, summary judgment that the 754 Design Patent
was invalid as being directed to purely functional, as opposed to
ornamental, features.
On January 30, 2013, and prior to ruling on the pending motions
for summary judgment, the District Court conducted a claim
construction hearing wherein the parties set forth their respective
positions as to what ornamental design, if any, is shown and claimed
in the 754 Design Patent.
On February 26, 2013, the District Court issued an omnibus order
that, inter alia, addressed the various issues raised in the cross-motions
for summary judgment and construed the claim of the 754 Design
Patent. (A3903-3967). Among other things, that Order denied Systems'
motion that the 754 Design Patent be declared invalid as being directed
to functional, not ornamental, features.
7
The case was tried to a twelve person jury in the District Court for
the Eastern District of Wisconsin, the Honorable Rudolph T. Randa
presiding. Trial began on March 18, 2013, and closing arguments were
made to the jury on March 25, 2013.
During the trial, Nordock and Systems each called an expert
witness to address the issue of what damages should be awarded if
infringement was found. Dr. Stan V. Smith testified on behalf of
Nordock, while Mr. Richard F. Bero testified on behalf of Systems.
At both the conclusion of Nordock's case in chief and at the
conclusion of all trial testimony, Systems made timely oral motions for
judgment as a matter of law that, among other things, the '754 Design
Patent is invalid as being functional, and that no infringement could be
found with respect to Systems 6 1/2 foot hydraulic dock leveler as no
evidence concerning that leveler was presented at trial. The District
Court denied these motions and allowed the case to go to the jury.
Systems orally renewed each of these motions following the jury verdict.
On March 26, 2013 the jury rendered a verdict that some, but not
all of the Systems products at issue infringed the subject 754 Design
8
Patent. The jury also rendered a verdict that $46,825 was the total
amount of money...Nordock [is] entitled to receive from Systems for
Systems' infringement of the 754 Design Patent.
Following the jury verdict, Nordock moved that the damages
award of $46,825 be set aside and that a new trial be granted with
respect to damages. Systems opposed that motion and moved that the
finding of infringement with respect to the 6 1/2 foot hydraulic dock
leveler be set aside, given that no actual picture, sample or other image
of such a leveler was ever presented at trial. The District Court denied
both motions holding that substantial evidence was presented at trial
sufficient to uphold the jury verdict in all respects. Following the
District Courts denial of all post-trial motions, Nordock filed the
instant appeal with this court. Systems thereafter filed its instant
cross-appeal.
VI.
Nordock
STATEMENT OF THE RELEVANT FACTS

and
Systems
are
competitors
in
the
field
of
manufacturing, selling, and distributing dock levelers. Dock levelers are

mechanical devices installed at loading docks in warehouses and
9
similar facilities and function to bridge the gap between a high-bed

truck trailer and a loading dock at which the truck is to be loaded or
unloaded. As so used, dock levelers permit forklifts and similar vehicles
to transition between the facility and the truck trailer to facilitate
loading and unloading the truck.
The '754 Design Patent at issue issued on November 4, 2008 based
on a design patent application filed May 31, 2007. (A6321). The 754
Design Patent ultimately claims priority to a utility patent application
originally filed December 23, 2002. (A6321). In the originally filed
utility patent application, Nordock attempted to obtain utility patent
claims covering a so-called lug hinge structure that pivotally connects
a lip to the front header plate of a dock leveler. (A2175-A2177).
Figure 1 of the 745 Design Patent, reproduced below, provides a
general perspective view of such a lug hinge structure located at the
front end of a dock leveler.
10
(A6322).
Throughout the parent patent application filed December 23,
2002, the structural and mechanical advantages of the lug hinge
structure are touted and emphasized. For example, in its originally filed
utility patent application upon which Nordock based the later filed 754
Design Patent, Nordock states:
A still further problem with [existing] dock levelers is
the integrity and durability of the hinge that joins the
lip plate to the deck frame. This connection is a
critical part of the leveler as it must withstand
11
concentrated stresses as the fork lift and the load it is

carrying traverse from the building to the trailer, or
visa versa. Conventional dock leveler designs, weld a
tubular hinge to the lip plate and to the header plate.
The header plate is welded to the deck plate and deck
support beams. The concentrated stresses on the
tubular hinge traditionally result in stress cracks in
the plates and their welds. A second design uses lip
plate lugs to lessen these stresses. In lieu of a header
plate, cooperating lugs are also welded to the support
beams and deck plate. A problem with this design is
that the unsupported front edge of the deck plate is
more easily bent and dished between the support
beams. (emphasis added).
(A2225-A2226).
In that same utility patent application, Nordock further said of its
own lug hinge structure:
A still further advantage of the [Nordock] dock leveler
is its solid and durable attachment of the lip to the
deck and deck frame. A header plate is used to support
the front edge of the deck plate across its full width.
This header plate is combined with a lip plate lug type
hinges to reduce the concentrated stresses on the
tubular hinge to provide a longer structural life
for the dock leveler. (emphasis added).
(A2225-A2226).
After several years of prosecution and unsuccessful attempts to
secure utility patent claims covering the lug hinge structure, Nordock
12
switched gears and sought to obtain design patent coverage for the
structure instead. At no point prior to May 31, 2007 had Nordock ever
indicated it considered the appearance of the lug hinge structure
ornamental.
Nordock's own marketing materials tout the structural and
operational advantages of the lug hinge structure. For example,
Nordock's marketing materials claim that the lug hinge structure,
ensures maximum strength and is self-cleaning. (A2245-A2246).
Nowhere in its materials does Nordock claim that the appearance of the
lug hinge structure is of concern.
In its case, Nordock claimed that various dock levelers
manufactured and sold by Systems infringed the 754 Design Patent. In
particular, Nordock alleged that three different sizes of mechanically
operated dock levelers, and three different sizes of hydraulically
operated dock levelers, incorporated the supposed ornamental design
claimed in the 754 Design Patent. The sizes are based on the width of
the levelers, which are available in nominal widths of 6 feet, 6 1/2 feet,
and 7 feet.
13
At trial, Nordock called its damages expert Dr. Stan V. Smith to

testify
regarding
the
compensation
Nordock
should
receive
if
infringement were found. Dr. Smiths testimony was bizarre on its face,
and there is little surprise that the jury found it unpersuasive. Indeed,
prior to trial, the District Court properly struck Dr. Smiths opinion
regarding a reasonable royalty and precluded Dr. Smith from
testifying as to a reasonable royalty at trial. (A4228-30). During trial,
Dr. Smith, despite the Courts prior order, did testify as to a reasonable
royalty, resulting in the Court thereafter instructing the jury to
disregard the testimony. (A5989-90).
Systems damages expert Mr. Richard F. Bero testified as to the
proper measure of damages should infringement be found, and
calculated
such
damages
on
both
a reasonable royalty
and
defendants profits basis. As to a reasonable royalty, Mr. Bero, unlike

Dr. Smith, did a proper legal analysis and properly took into account
the various factors required under Georgia Pacific and Panduit. With
respect to a reasonable royalty, Mr. Bero testified that, assuming
infringement was found with respect to all of the dock levelers accused
14
of infringement (i.e., the mechanical as well as hydraulic levelers), a

reasonable royalty based on the number of units sold by Systems would
be $91,650. With respect to Systems profits, Mr. Bero testified that
such profits would be no greater than $91,650 and provided ample
testimony to explain his opinion in that regard. (A5458-A5573).
At trial, Nordock made no objections whatsoever with regard to
the instructions adopted by the District Court and delivered to the jury.
In particular, Nordock made no objection to the instructions the District
Court adopted concerning Defendants profits as a measure of damages
for design patent infringement. (A4538-4541). Similarly, Nordock made
no objection to the jury verdict form adopted by the District Court and
provided to the jury. Nor did Nordock make any objection to the closing
argument delivered by Systems trial counsel at the conclusion of the
case.
VII. SUMMARY OF THE ARGUMENT
The
jury's
award
of
$46,825
as
the
total
amount
of
money...Nordock is entitled to receive in the case below is supported by

substantial evidence and should not be disturbed. Accordingly, the
15
District Court properly denied Nordock's motion for a new trial on

damages.
Dr. Smith's testimony at trial was incredible on its face and the
jury properly discounted his testimony in its entirety. Dr. Smith
revealed during cross-examination that he was unfamiliar with the
legally proper standards applicable in patent cases, that he did not
perform the necessary steps in formulating a proper opinion, and
provided an opinion regarding reasonable royalties despite the District
Court's prior order in limine barring just such testimony. This resulted
in the self-inflicted indignity of having the District Court properly
instruct the jury to disregard Dr. Smith's testimony. Given such
damage to his credibility, the jury was perfectly free to disregard Dr.
Smith's testimony in its entirety.
In contrast to Dr. Smith, Mr. Beros testimony and opinion
regarding damages were amply supported by evidence and credible
reasoning. Accordingly, the jury properly relied on Mr. Beros testimony
in reaching its verdict. Nordock had a full and fair opportunity to crossexamine Mr. Bero as to any purported deficiency in his opinion or direct
16
testimony, and Mr. Bero emerged from such cross-examination

unscathed. Accordingly, the jury was free to adopt Mr. Beros opinions
and conclusions over those of Dr. Smith. Again, the District Court did
not err in declining to grant Nordock another opportunity to prove its
case.
Nordock failed to make timely objections to the relevant jury
instructions, to the verdict form provided to the jury, or to any supposed
improprieties in the closing argument delivered by Systems' trial
counsel. Accordingly, Nordock's challenges in these regards are
untimely, waived and legally frivolous.
As to Systems cross-appeal, the jurys verdict is inconsistent with
the facts and evidence presented at trial. The overwhelming weight of
the evidence demonstrates that nothing about the 754 Design Patent is
ornamental, and it should be held invalid as purely (or at least
primarily) functional.
Finally, Nordock failed to present any evidence whatsoever
regarding Systems 6 1/2 foot dock leveler. Accordingly, Nordock failed
17
to prove infringement and the jurys verdict cannot be sustained as

there is a complete absence of any evidence on this point.
VIII. ARGUMENT
A.
STANDARD OF REVIEW
This Court reviews the denial of a Rule 59 motion for a new trial
on an abuse of discretion standard. Whitserve, LLC v. Computer

Packages, Inc., 694 F.3d 10, 26 (Fed. Cir. 2012). In doing so, this Court
applies the relevant regional circuit law, in this case that of the Seventh
Circuit. Silicon Graphics, Inc. v. ATI Techs., Inc., 607 F.3d 784, 798
(Fed. Cir. 2010).
B.
APPLICABLE LEGAL STANDARDS

In the Seventh Circuit, a party seeking a new trial under Rule 59,
must clearly establish (1) that the court committed a manifest error of
law or fact, or (2) that newly discovered evidence precluded entry of
judgment. Blue v. Hartford Life & Accident Ins. Co., 698 F.3d 587, 598
(7th Cir. 2012) (internal quotation marks omitted). The Seventh Circuit
has
defined
manifest
error
as
the
wholesale
disregard,
misapplication, or failure to recognize controlling precedent. Oto v.
18
Metro. Life Ins. Co., 224 F.3d 601, 606 (7th Cir. 2000) (internal
quotation marks omitted).
As noted by the District Court below, a Rule 59(e) motion is not a
fresh opportunity to present evidence that could have been presented
earlier. Edgewood Manor Apartment Homes, LLC v. RSUI Indem. Co.,
733 F.3d 761, 770 (7th Cir. 2013). In other words, Rule 59(e) does not
allow a party to introduce new evidence or advance arguments that
could and should have been presented to the district court prior to
judgment. Moro v. Shell Oil Co., 91 F.3d 872, 876 (7th Cir. 1996).
Rule 59(e) permits a court to amend a judgment. However, it is
not a proper vehicle through which to amend the answers provided by a
jury on a verdict form because the verdict form is not part of the
judgment entered by the Clerk of Court. See, Frazier v. Boyle, 206
F.R.D. 480, 491-92 (E.D. Wis. 2002).
Rule 59(a), in a bit of a circular way, allows new trials in cases
where new trials have been traditionally allowed at law. ABM Mktg.,
Inc. v. Zanasi Fratelli, S.R.L., 353 F.3d 541, 543 (7th Cir. 2003) (citing
Fed. R. Civ. P. 59(a)). A motion for a new trial should succeed only if
19
the verdict is against the manifest weight of the evidence. Id. at 545
(quotation and citation omitted); see also, Aero Prods. Intl, Inc. v. Intex
Recreation Corp., 466 F.3d 1000, 1016-17 (Fed. Cir. 2006).
To satisfy this standard, the movant must demonstrate that no
rational jury could have rendered a verdict against it. See, King v.
Harrington, 447 F.3d 531, 534 (7th Cir. 2006). When making this
evaluation, the Court views the evidence in a light most favorable to the
non-movant and cannot re-weigh the evidence or make credibility
determinations. Id. The Court will sustain the verdict where a
reasonable basis exists to support the jurys verdict. Id. A new trial
may be granted only if the jurys verdict is against the manifest weight
of the evidence, id., or if the trial was unfair to the moving party.
Miksis v. Howard, 106 F.3d 754, 757 (7th Cir. 1997).
With respect to overturning a jury verdict awarding damages in a
patent case, this Court has held that such an award, must be upheld
unless the amount is grossly excessive or monstrous, clearly not
supported by the evidence, or based only on speculation or guesswork.
20
Brooktree Corp. v. Advanced Micro Devices, Inc., 977 F.2d 1555, 1580
(Fed. Cir. 1992).
On appeal from a judgment denying a motion for JMOL of invalidity,
this Court uses the standards used by the District Court in ruling on the
motion. See, Cybor Corp. v. FAS Technologies., Inc., 138 F.3d 1448, 1454
(Fed. Cir. 1998) (en banc). To prevail on a motion for JMOL following a
jury trial, a party must show that the jury's findings, presumed or express,
are not supported by substantial evidence or, if they were, that the legal
conclusion(s) implied [by] the jurys verdict cannot in law be supported by
those findings. Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d
888, 893 (Fed. Cir. 1984) (citation omitted).
C.
MORE THAN SUBSTANTIAL EVIDENCE WAS

PRESENTED AT TRIAL TO SUPPORT THE JURYS
DAMAGES AWARD
1.
The Jury Did, In Fact, Compensate Nordock For The

Alleged Infringement
The thrust of Nordock's argument is that it was somehow shortchanged by the jury that heard its case. The simple fact, however, is
that Nordock had its day in court, had ample opportunity to present its
evidence and arguments to the jury, had ample opportunity to cross-
21
examine Systems damages expert Mr. Bero and even succeeded in

persuading the jury that approximately twenty percent of the accused
products infringed its design patent.
Nordock hangs its entire appellate hat on the hook that the jury
entered the amount 0 in the space on the verdict form pertaining to
Systems' profits. (A5504). This ignores that the very same jury entered
the amount, $46,825 in the space asking, What total amount of
money is Nordock entitled to receive from Systems for Systems'
infringement on the products that you answered 'Yes' to in Question 1.
(A5503). This question is not broken down by the particular
methodology used to make the calculation and goes to the very heart of
what the jury was called upon to decide, namely, the compensation to be
awarded Nordock for the infringement the jury determined. Where, as
here, the total compensation awarded by the jury falls squarely within
the range established by the trial testimony and exhibits of both
testifying damages experts, the award, almost by definition, is
supported by substantial evidence and should not be disturbed.
22
Nordock's principal complaint is that the jury believed Mr. Bero,

not Dr. Smith. It is elementary law that factual determinations, such as
the credibility of testifying witnesses, is solely the province of the jury
and are not to be set aside merely because a reviewing judge might
harbor some disagreement.
2.
The Damages Awarded By The Jury Fall Within The

Range Established By The Competing Experts
At trial, both parties called respective damages experts to render

opinions regarding damages. Indeed, damages testimony occupied a
significant portion of the trial itself.
Systems damages expert Mr. Bero ultimately opined that a
reasonable royalty under the subject patent would be $15 per unit,
while Systems profits would, in fact, be less than $15. (A6714). Based
on these figures, Mr. Bero testified that, if all 6110 accused dock
levelers were found to infringe, Nordock's award should be $91,650,
under either measure of damages. Given the 1457 units that the jury
found to infringe, Mr. Bero's testimony and opinion supported a damage
award to Nordock of $21,855, again under either measure.
23
In stark contrast to Mr. Bero, Nordock's damages expert Dr.

Smith opined that an appropriate award would be over $22,012,097.
(A6426). This figure reached by Dr. Smith greatly exceeded, by almost a
factor of two, Systems overall gross revenues for sales of the 6110
accused levelers. (A5544, A6685).
Ultimately the jury awarded Nordock $46,825 with respect to the
1457 (out of 6110 accused) units it found to infringe. Clearly, the jury
found Mr. Beros testimony and opinion more credible than those of Dr.
Smith, and the amount awarded by the jury is not outside the range of
the testimony it heard and the evidence it considered.
3.
Substantial Evidence Was Provided At Trial To

Support The Jury's Damage Award
At trial, Systems damages expert Mr. Bero testified for nearly

four hours on both direct and cross examination. During his testimony,
he addressed three principal approaches for awarding damages should
infringement be found. (A5460-5571). In addition, Mr. Bero prepared a
series of slides (A6680-6717) that summarized his testimony and
opinions and that were received into evidence with no objection.
24
First, Mr. Bero testified that lost profits were not applicable
(A5471-2). In particular, Mr. Bero testified that Nordock has not
established in any way, shape or form that it has actually incurred lost
profits in this matter. (A5471).
Second, Mr. Bero testified that royalty damages are the proper
form of damages. (A5472). In particular, Mr. Bero testified that a
reasonable royalty in an amount of $15 per allegedly infringing dock
leveler is the proper form of damages. (A5472).
Finally, and with respect to Systems' profits as a measure of
damages, Mr. Bero testified that, [I]t's my opinion, that based on -- as
an alternative form of damages, the profits associated with the lip and
hinge plate -- the ornamental design of the lip and hinge plate is
approximately $15 or less per dock leveler. (A5472).
4.
The Jury's Damage Award Actually Exceeds Mr. Bero's

Estimate
At trial, Mr. Bero testified that, should infringement be found

with respect to all of the accused levelers, Nordocks lost profits would
be zero, while a reasonable royalty would be $15 per unit. (A6680).
Given that 6,110 dock levelers of both mechanical and hydraulic
25
operation were accused of infringement, Mr. Bero testified that, at a

reasonable royalty of $15 per unit, the overall award would be $91,650
if infringement were found as to all of the accused products. (A6714).
Mr. Bero also testified that, because the profit on the dock leveler
front end to which the design was applied was less than $15 per unit,
under an award of Systems' profits, the overall award would be no more
than $91,650, assuming all of the accused products infringed. (A6714).
At trial, however, the jury did not find that all of the accused
products infringed. Instead, the jury found infringement only with
respect to the hydraulic style levelers and not with respect to the far
more popular mechanical style levelers. In other words, only 1457 out
of 6110 accused levelers were found to infringe. Accordingly, applying
$15 per unit to these 1457 units results in damages of $21,855.
Given that the jury actually awarded Nordock more than what
Mr. Bero's testimony established would be an appropriate damages
amount as to the products actually found to infringe, the jury award
falls between the lower limit established by Mr. Bero and the upper
limit testified to by Dr. Smith. It is simply untrue that the verdict is
26
somehow outside the range established by the sworn testimony and

received exhibits of the experts involved.
5.
Mr. Bero's Opinion Was Well Supported And Properly

Received
Systems' damages expert Mr. Bero is a well-respected, highly

experienced expert in the field of patent damages. Indeed, at trial, no
objection was made regarding Mr. Beros right and ability to testify as
an expert, and his qualifications to serve as an expert were thoroughly
explored and brought out before the court and jury. (A5460-66).
After outlining his conclusions regarding damages, i.e., that lost
profits were unavailable and that $15 per infringing unit was
appropriate whether under a reasonable royalty or defendant's profits
analysis (A5471-72), Mr. Bero testified extensively as to how each of his
conclusions and opinions was reached.
With respect to lost profits, Mr. Bero presented six slides (A6699A6705) outlining why Dr. Smith's report and testimony were unreliable
and why lost profits would not be available to Nordock. In particular,
Mr. Bero testified that the Entire Market Value Rule was an
appropriate consideration in determining lost profits and required that,
27
in order to obtain lost profits on the entire dock leveler, Nordock would
need to establish that, the patented feature creates the basis for
customer demand or substantially creates the value of the component
parts. (A5503). Mr. Bero testified that Dr. Smith made no attempt to
do this and even, Dr. Smith said something along the lines of it doesn't
apply to his analysis. (A5503).
Continuing, Mr. Bero pointed out that considerable evidence
existed to show that the purported ornamental design of a lip and
hinge plate was not, and could not be the basis for customer demand:
Okay. So with the Entire Market Value Rule in mind,
we look at the basis for customer demand, and in this
case how does it apply? Well we know that the lip and
hinge plates represent just one of many dock leveler
components and features. Is it the reason customers
are buying? Well, if it was, I would presume that there
would be an awful lot more customers that were
actually buying it in the market.
The second item is "Dock levelers with patented
ornamental lip and hinge design represent a minimal
portion of the market," which is basically what I just
said.
And the third item is they're "primarily sold for
usefulness." I think we saw that in the video and Mr.
Pilgrim talked about it yesterday.
28
We also heard that from some of the Nordock folks,

including Mr. Gleason and some of the others. People
are buying dock levelers so they can use them. They
want to be a bridge. I think Mr. Ward originally was
the one that talked about it being a bridge.
And certainly Systems sells far more dock levelers
without the lug hinges than they do with the lug hinge.
So is it the basis for customers demanding that
particular product, or is it one of the many other
factors that go into play? And so that's -- you know,
from a damages perspective that's relevant. It's very
important, in fact. (A5504-5).
Testifying still further, Mr. Bero pointed out the many reasons
other than the purported ornamental design that people would choose
the Systems dock leveler over that of Nordock:
Why are customers buying? Quality of materials;
quality of welding; strength of the bridge; the
warranty; the entirety of the dock leveler; all of the
components; the workmanship; the availability;
serviceability;
salesman
knowledge;
durability;
reliability; clean -- you know, it's gotta be clean; the
paint; and, of course, the price, that's an important
factor to consider as well. I'm sure I didn't get all of
them, but those are some that I jotted down as I was
going through listening this week. (A5505-6).
Reaching his conclusion that lost profits were unavailable to
Nordock, Mr. Bero concluded:
Of course, understand that Nordock's position it's the
29
look of the front end that is the reason -- in order for

them to get lost profits damages it has to be the reason,
the basis for -- lost profits damages on the entire dock
leveler, it has to be the reason and the basis for
customer demand of the entire dock leveler. And we
haven't seen that. At least I haven't. (A5506).
Summarizing his position with respect to lost profits, Mr. Bero
presented a slide (A6702) outlining in detail why such profits were
unavailable to Nordock and testified extensively thereto. (A5507-11).
Such reasons included Nordock's failure to show (1) demand for the
patented product (A5507), (2) lack of non-infringing substitutes (A5508),
(3) Nordock's capacity and capability to meet the market demand for
the sales made by Systems (A5509) and (4) Nordock's failure to quantify
the lost profits (A5510-14).
With respect to both a reasonable royalty and Systems' profits Mr.
Bero presented an additional ten slides (A6705-6714) and testified
extensively regarding them. (A5514-27). First Mr. Bero testified that a
proper reasonable royalty assessment begins with a hypothetical
negotiation. (A5514-15). He further testified as to the three approaches
commonly used to obtain a royalty rate, namely the income approach,
the market approach and the cost approach. (A5515-17).
30
Using the cost approach, Mr. Bero concluded that the cost savings
to Systems in using the lug style hinge would be, according to a
weighted average, $2.13. (A5518).
Using the income approach, Mr. Bero concluded that the
additional profitability provided by this particular lug hinge...in 2004
was about $4.84. (A5518). Taking into account the passage of time and
updating the figure to 2012, Mr. Bero testified that the cost savings
would be, well, a maximum of $13 in 2012. (A5519)
With respect to the market approach, Mr. Bero was unable to
locate any existing, comparable prices and therefore could not use this
as a basis of calculation. (A5519).
Taking all these factors into account, Mr. Bero testified that [t]he
starting point that I use is $5 per unit in this hypothetical negotiation.
(A5519). Continuing, Mr. Bero testified, Then what we have to do is we
have to take into account additional considerations, qualitative
considerations that come from -- or largely come from a case from 1970
called Georgia-Pacific. They're referred to as the Georgia-Pacific
factors. (A5519-20). Taking such considerations into account, Mr. Bero
31
concluded that a hypothetical negotiation conducted in 2008 when the

754 Design Patent issued would have resulted in a royalty of $15 per
unit. (A5521-25)
With respect to Systems purported profits, Mr. Bero testified that
these would be less than $15 per unit. (A5526). Accordingly, the overall
figure he reached if infringement were found as to all of the accused
levelers would be $91,650, whether calculated on a reasonable royalty
basis or a profits basis. (A5526).
Based on the foregoing, ample evidence was presented at trial to
support the jury's award of $46,825 as total compensation to Nordock
for the partial infringement that the jury found. Indeed, and as noted
above, given that only roughly 20% of the accused levelers were found to
be infringing, the jury's award is actually more generous than the
figure that would result from Mr. Beros testimony and opinion, i.e.,
$21,855 based on $15 per unit as applied to 1457 infringing units.
D.
THE JURY CLEARLY AND PROPERLY CREDITED MR.

BERO'S TESTIMONY OVER THAT OF DR. SMITH
Given the widely divergent views of the damages experts called by
the parties, it is clear that the jury favored the opinion of Systems'
32
expert Mr. Bero over that offered by Nordock's expert Dr. Smith.
Nothing unfair, untoward or otherwise improper took place in this
regard, and the jury was free, as it was charged, to make credibility
determinations and elect whose testimony was more persuasive.
1.
Nordock Had Ample Opportunity To Cross-Examine

Mr. Bero And, In Fact, Did So
The purpose of a trial is, in part, to test the soundness of

witnesses testimony and find any weaknesses therein. Nordock, of
course, was given a more than fair opportunity to cross-examine Mr.
Bero and definitely took advantage of that opportunity.
For reasons that are not clear, Nordock mostly sought to attack
Mr. Bero on pre-trial procedural matters, such as irrelevant discovery
disputes and responses to subpoenas, rather than the substance of his
testimony. (A5545-49). Nevertheless, Nordock cross-examined Mr. Bero
for nearly one hour and never succeeded in forcing any change in Mr.
Beros testimony, opinions or conclusions. At all times Mr. Bero
continued to express the opinions he stated during his direct testimony
and successfully deflected any attempts by Nordock to make him
change his testimony, opinions and conclusions.
33
2.
Mr. Bero Correctly Calculated Profits Based On The

Article Of Manufacture Claimed In The 754 Design
Patent
During his direct examination, Mr. Bero properly noted that the
'754 Design Patent includes a single claim reading, The ornamental
design of a lip and hinge plate for a dock leveler, as shown and
described. (A60). Indeed, during cross-examination, Mr. Bero was
asked:
Q.
Now, is this case about a lug? Is this a design patent

case for a lug?
A.
Well, it's a design patent case for an ornamental design

of a lip and hinge plate which I understand
incorporates a lug. (A5536).
Despite Nordock's counsel's attempts to get Mr. Bero to testify to

the contrary, Mr. Bero continued to correctly note that the article of
manufacture to which the ornamental features of the '754 design is
applied is not a dock leveler, but, rather, only a lip and hinge plate:
Q.
Okay. I just want to be clear because you're showing

slides that say the "patented lug hinge," and we're
actually talking about the lip and header plate for a
dock leveler, correct?
A.
Yeah, absolutely --
34
Q.
It's the whole thing. You're clear on that, right?
A.
Well, you asked me multiple questions. When you say

"the whole thing," are you referring to --
Q.
The whole front end design.
A.
It's the lip and hinge plate. The ornamental design of

the lip and hinge plate.
Q.
The front end design.
A.
Yeah, but when you say "the whole thing" I want to

make clear we're not talking about the whole dock
leveler. (A5537)
Continuing the attack, Nordock's counsel on cross examination

tried to trip up Mr. Bero by asking about another design patent case
Mr. Bero had been involved with wherein a design patent directed to a
drill bill (6659-61) was involved:
Q.
Now, you rendered a damages report in this case,

didn't you? Regarding the drill bit, didn't you?
A.
I provided two damages reports in this case, yes.

(A5539).
In response to further questioning regarding that prior case, Mr.

Bero testified:
A.
In that case I think this is what you're getting at

is I quantified the defendant's profits on the entire drill
bit in that case. Because as you can see here, it says
35
the 'ornamental design for a drill bit.' That's a

whole product. (A5540)(emphasis supplied).
On redirect, Mr. Bero was asked the obvious question Nordock's
counsel was apparently afraid to, namely, why Mr. Bero testified that
profits were recoverable on the entire drill bit in the earlier case while,
in the instant case, profits on the entire dock leveler were not. Mr. Bero
answered clearly and succinctly:
Q.
Okay, Mr. Bero, Mr. Sokol asked you why in respect to

[the drill bit] case it was your opinion that damages
should be awarded on the entire -- profits on the entire
drill bit.
A.
Well, the reason was because it says in the claim, it's

says "the ornamental design for a drill bit." It's
different than --so -- well, the drill bit was sold.
That's the product that was sold. There's a
picture, you can see the drill bit. It's the whole
drill bit.
And that's different than the case we have here
where we have -- I don't know if you can put it up there
-- but an ornamental design of a lip hinge plate and it
says "for a dock leveler." I understand it, is the lip and
hinge plate. It doesn't cover an entire dock leveler.
It's just a part of the product. So that's a big
difference in those two cases.
Q.
And were you present in the courtroom when it's been

repeatedly pointed out that what we see in dotted lines
here are not considered part of what is supposedly
36
patented here?
A.
Yes.
Q.
So, in other words, the lip and hinge plate, which is

actually covered by this ornamental patent, does not
include what you see here in the dotted lines?
A.
Well, again, I'm not a technical expert but that's my

understanding.
Q.
Okay. I'm going to page through the drawings of this

entire ornamental patent which is the subject of this
lawsuit. Do you see an entire dock leveler there?
A.
No.
Q.
Do you see an entire dock leveler here?
A.
No.
Q.
Do you see an entire dock leveler there?
A.
No.
Q.
Do you see an entire dock leveler there?
A.
No.
Q.
Okay. Are there any figures in this patent that you're

aware of that show an entire dock leveler?
A.
No. (A5562-64)(emphasis supplied).
37
3.
Mr. Bero Properly Relied On The Actual Article Of

Manufacture Claimed In The '754 Design Patent
Nordock repeatedly claims that it is entitled to Systems' profits on

the entire dock leveler sold by Systems, rather than on the lip and
hinge plate actually shown and described in the '754 Design Patent. In
each and every case cited by Nordock, wherein profits were awarded,
the design patent showed the entire article to which the design was
applied and for which profits were determined.
Here, a simple examination of the figures in the 754 Design
Patent show two clear things: First, an entire dock leveler is never
shown in any of the figures. Second, the small portion of a dock leveler
that is shown is shown in dotted lines, indicating that does not form
part of the article of manufacture to which the design is applied and to
which 35 U.S.C. 289 authorizes profits. Indeed, the '754 Design Patent
expressly states:
The deck and deck frame shown in broken lines in
FIGS. 1 and 3-7, the drive brackets shown in FIGS. 1-5, the
drive bar opening shown in FIGS. 1-3, and the assist
spring mounting bracket shown in FIG. 1 represent
environmental structure in order to show the claim in a
condition of use and form no part of the claimed
design. (A6321)(emphasis supplied).
38
Indeed, during his direct testimony and cross-examination, Mr. Bero

relied on these important facts to distinguish the other cases in which he
rendered opinions and to explain how he determined Systems' profits.
The authority cited by Nordock is inaposite. In Nike, Inc. v. WalMart Stores, Inc., 138 F.3d 1437 (Fed. Cir. 1998) the parties were in
agreement that the infringing products (i.e., that the article of
manufacture to which the patented design was applied) were shoes, and
the only damages dispute was with respect to what deductions should be
made against gross revenues. The infringer never claimed that relevant
article of manufacture was other than the shoes themselves. Here, by the
clear language, figures and disclaimer of the 754 Design Patent itself, the
article of manufacture is the lip and hinge plate, not the entire dock
leveler.
Under Nordock's view of 289, the holder of a design patent on, for
example, a hub cap for a car would be entitled to profits on an entire
automobile should an infringing hub cap be included in a sale. Under
Nordock's view, the holder of a design patent on an architectural window
would be entitled to the profit on an entire residential or commercial
property in which the window is installed.
39
Significantly, at trial, Nordock never presented any testimony

contrary to that presented by Mr. Bero, nor did Nordock otherwise
challenge Mr. Bero's testimony in this regard.
4.
Dr. Smith Never Even Reviewed The '754 Design

Patent In Suit, Much Less Calculate Systems' Profits
On The Actual Article Of Manufacture To Which The
Design Was Applied
Unlike Mr. Bero who actually read the '754 Design Patent at issue
and took into critical account what the patent actually covered, Dr.
Smith testified that he could not even be bothered to look at the patent:
Q.
Could you take a look at [Exhibit 18 Copy of 754

Design Patent]?
A.
What about it?
Q.
Go ahead and open it up.
A.
Yes.
Q.
Is that Nordocks patent on its lug hinge -- lug and

hinge plate design?
A.
This is the first time I've seen this, so why don't you
tell me what it is? (A6027-8)(emphasis supplied).
Nor was this any slip of the tongue or momentary lapse. Days
later, during rebuttal cross examination, Dr. Smith confirmed that he
40
neither reviewed the 754 Design Patent nor made a profits calculation
on what it actually covered:
Q.
Thank you. Dr. Smith. Do you recall when Mr.

Whitaker cross-examined you on Wednesday and
showed you Plaintiff's Exhibit 18? That's the patent in
suit?
A.
And what does this have to do with
*** [Evasive answers and colloquy with the Court omitted] ***
Q.
Okay. You recall that this is the patent in suit?
A.
I thought there were several patents. And I haven't

paid attention to patent numbers.
*** [Objections and colloquy with Court omitted] ***
Q.
Have you paid any attention to the patent in this case?
A.
I understood there were several patents. Aren't there

more Exhibits there? I was shown three Exhibits.
Q.
Are you aware that none of those patents have been

raised as a basis of the lawsuit?
A.
All I am telling you is that there are three patents on

that table, am I right? And I have not paid attention to
the patent claims...
Q.
Okay, fair enough. Now, you were supposedly

calculating damages on patents in this case, and you do
not even know, by your own testimony, which patents
are in the case. You do not know whether its this
patent?
41
*** [Objections and colloquy with Court omitted] ***

Q.
Mr. Whitaker showed you [the 754 Design Patent]?
A.
Yes.
Q.
Asked if you had seen this before. You said, quote, this
is the first I've seen it. And that was Wednesday of last
week.
A.
Correct.
Q.
You confirm that testimony?
A.
Yes. (A6065-68).
Finally, during rebuttal cross-examination, Dr. Smith confirmed

that he made no attempt to consider profits on what the '754 Design
Patent actually covered but, instead, looked at the entire dock leveler:
Q.
The jury has seen this many times. We all know what
it covers. Your answer is that you did not calculate
profits, System' profits, on what is actually covered by
this patent. That's your testimony?
A.
Not on the patent. On the leveler. (A6608-9)
The undeniable truth is that, unlike Mr. Bero who made a proper
analysis of the relevant issues and made a proper calculation as to
damages, Dr. Smith had never even seen the '754 Design Patent until
cross-examination at trial. Significantly, he purported to calculate
42
System's profits based on an entire dock leveler, rather than the actual
article of manufacture, namely a lip and hinge plate to which the
supposed ornamental design is applied.
5.
Based On The Trial Testimony Of The Opposing

Experts, The Jury Was Free To Discount The Opinion
Of Dr. Smith And Adopt That Of Mr. Bero
It is axiomatic that the jury is free to disregard the testimony of a

witness based on a lack of credibility. See, Jury Instructions, page 16,
Testimony of Witnesses (Deciding What To Believe). (A4515). See also
United States v. White, 639 F.3d 331 (7th Cir. 2011) (The jury was free
to believe or disregard [the witnesss] testimony citing United States v.
Jackson, 688 F.2d 1121, 1126 (7th Cir. 1982); United States v. Towns,
913 F .2d 434, 445 (7th Cir. 1990); United States v. Stormer, 938 F.2d
759, 762 (7th Cir. 1991); Chrysler Workers Ass'n v. Chrysler Corp., 834
F.2d 573, 578 (6th Cir.1987) ("credibility determinations ... are jury
functions"), cert. Denied, 486 U.S. 1033 (1988) (quoting Anderson v.
Liberty Lobby, Inc., 477 U.S. 242 (1986)).
The fact that Nordock offered Dr. Smith as a supposed expert does
not change that rule. See, United States v. Mansoori, 304 F.3d 635, 654
43
(7th Cir. 2002), cert. denied 538 U.S. 967 (2003) (approving instruction
to jury that the fact an expert has given an opinion does not mean that
it is binding upon you); United States v. Serafino, 281 F.3d 327, 330331 (1st Cir. 2002) (court mitigated whatever special aura the jury
might otherwise have attached to the term expert by instructing that
expert testimony should be considered just like other testimony);
United States v. Brown, 7 F.3d 648, 655 (7th Cir. 1993) (recognizing
that in close case danger of unfair prejudice may be heightened by aura
of special reliability of expert testimony, but concluding that
instruction to jury that expert opinion was not binding and that jury
should consider expert opinion in light of all evidence mitigated any
danger of unfair prejudice); Coal Resources, Inc. v. Gulf & Western
Indus., Inc., 865 F.2d 761, 775 (6th Cir. 1989) (no error in failing to give
jury instruction regarding speculative testimony by expert witness
where jury was instructed that it must decide how much weight and
credibility to give to expert opinion).
Here, there were ample grounds for the jury to disregard the
testimony of Dr. Smith and accept the opinion of Mr. Bero. Unlike Dr.
44
Smith, Mr. Bero provided a careful analysis of the deficiencies in Dr.

Smith's opinion and presented them to the jury. (A6704-4, 5527-31).
Indeed, Dr. Smith discredited himself and destroyed his own credibility
by attempting to testify regarding reasonable royalties despite the
District Courts prior ruling that his opinion in this regard was
unreliable and should be excluded. (A4228-30). This resulted in the
jury being expressly instructed to disregard Dr. Smith's testimony in
this regard. (A5989-90).
If one thing is clear it is that the jury did not believe Dr. Smith. A
simple review of the jurys verdict form (A5402-05) reveals that the jury
rejected everything that Dr. Smith said, and disregarded (as it was free
to do) all of Dr. Smiths testimony. Nordock has no one to blame but
itself. Nordock should certainly not be rewarded with a new trial based
on the incredible and disbelieved testimony of its own witness.
E.
NORDOCK HAS WAIVED ANY OBJECTIONS IT MIGHT

HAVE HAD TO THE COURTS JURY INSTRUCTIONS
Nordock makes the claim that the District Court somehow failed
to follow its own instructions regarding damages, and that the
45
instructions somehow compelled the jury (and District Court) to award

Nordock Systems' profits. Again, the actual facts show otherwise.
Aside from the fact that the jury, not the District Court, made the
determination as to what damages should be awarded, Nordock ignores
that the very first damages instruction given to the jury expressly
provides the jury with the option of awarding a reasonable royalty or
Systems profits.
In particular, the instruction entitled, Design Patent Damages
Burden Of Proof, expressly states, 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 Systems profits on the same sale.
(A4538). Under the plain language of this instruction, the jury had the
option of awarding either a reasonable royalty or Systems' profits, but
not both.
Given that the jury unequivocally elected to award Nordock a
reasonable royalty (i.e., compensatory damages), the instruction
expressly barred the jury from also awarding Systems' profits on the
46
same sale. Thus, the jury's election to award Nordock reasonable

royalties necessarily precluded the jury from awarding Systems'
profits. The District Court did not abuse its discretion in upholding a
jury verdict that is fully consistent with the instructions actually given.
Significantly, Nordock never voiced an objection to this instruction
given to the jury. Indeed, while reviewing the proposed instruction in
open court, Nordock's counsel stated That would be acceptable,
That's fine, and That's fine for us when this instruction was
discussed and adopted by the court. (A6080-83).
Given Nordock's failure to make any formal objection to this
instruction before it was read to the jury, Nordock is barred from now
complaining that the jury adhered to the instruction as delivered.
Similarly, Nordock never objected to what it now claims are
conflicting jury instructions. Again, Nordock's failure to raise a timely
objection, namely before the instructions were given to the jury, waives
any claim at this late date that there was a problem with the
instructions. Again, Nordock cannot rely on its own failure to take
47
timely action as a basis for seeking another chance before a different

jury.
F.
NORDOCK HAS WAIVED ANY CHALLENGE TO THE

CLOSING ARGUMENT DELIVERED BY SYSTEMS'
COUNSEL
Nordock complains that the closing argument delivered by
Systems counsel was somehow improper and tainted the outcome of the
trial. A simple review of the transcript indicates that at no time, either
during or after delivery of the argument, did Nordock voice any
objection to the argument or request that the argument be stricken. As
with Nordocks failure to object to the jury instructions, any argument
or claim based on supposed improprieties in Systems closing argument
is waived.
G.
THE DISTRICT COURT ERRED BY DECLINING TO RULE

THE 754 DESIGN PATENT INVALID AS A MATTER OF
LAW
The District Court should have entered Judgment as a Matter Of
Law in favor of Systems that the 754 Design Patent is invalid. For the
reasons that follow, the jurys verdict that the 754 Design Patent
48
discloses any ornamentation is simply not supported by substantial

evidence.
Both at the close of Nordocks evidence and again at the close of
trial, Systems moved for JMOL of invalidity of the 754 Design Patent
as being purely functional. Substantial evidence was presented during
trial that nothing claimed by the 754 Design Patent is ornamental, and
indeed every individual feature was purely functional as well as the
design as a whole. The 754 Design Patent is invalid at least because
every aspect of the 754 Design Patent is purely or at least primarily
functional and therefore it contains no protectable ornamental features.
1.
The 754 Design

Functional
Patent
Is
Invalid
As
Purely
A design patent protects only ornamental features. [W]hen the

design also contains ornamental aspects, it is entitled to a design patent
whose scope is limited to those aspects alone and does not extend to any
functional elements of the claimed article. Richardson v. Stanley
Works, Inc., 597 F.3d 1288 (Fed. Cir. 2010). Functional features cannot
be protected with a design patent. In determining whether a design is
primarily functional, the purposes of the particular elements of the
49
design necessarily must be considered. Id. at 240. Richardson

establishes the framework for a proper legal analysis of the claim of a
design patent that must be undertaken when determining what the
claim covers.
The claim of the 754 Design Patent must be construed to exclude
any functional elements. Richardson, 597 F.3d at 1288. The 754 Design
Patent includes at least two elements that are purely functional and
should be excluded from the claim. In fact, the 754 Design Patent
includes only two material elements, both of which are purely
functional. Figure 1 of the 754 Design Patent is reproduced below and
shows that the claimed design, illustrated in solid line, includes only
two elements: A so-called lug hinge and a header plate. Practically
every other element of the entire figure is illustrated in dashed line,
which eliminates those elements from the claim.
50
(Figure 1 of the 754 Design Patent (annotated). (A0100).
Lug Hinge
Header
Plate
As was demonstrated by uncontroverted evidence at trial, those

two elements are purely functional, which leaves no protectable content
in the design. Accordingly, the 754 Design Patent is invalid as purely
functional and non-ornamental. If the patented design is primarily
functional rather than ornamental, the patent is invalid. PHG
Technologies v. St. John Companies, Inc., 469 F.3d 1361, 1366 (Fed. Cir.
2006); Power Controls Corp. v. Hybrinetics, Inc., 806 F.2d 234, 238 (Fed.
Cir. 1986).
51
2.
Prosecution History Shapes The Scope Of The 754

Design Patent
Prosecution history estoppel applies with equal force to a design

patent as a utility patent. Australia Vision Servs. v. Diopitcs Medical
Prods., 29 F.Supp.2d 1152 (C.D. Cal., 1998); see also, 1 CHISUM,
DONALD S., CHISUM ON PATENTS 1.04[4], n. 2 (1998) ([F]ile
Wrapper
estoppel
applies
to
design
patents
in
determining
infringement.). The 754 Design Patent was filed as a divisional

application claiming priority to U.S. Utility Patent Application No.
10/328,279, filed on December 23, 2002, and which ultimately issued as
U.S. Utility Patent No. 6,834,409. (A0098).
In addition, the prosecution history of an earlier patent applies
with equal force to subsequently issued child patents. Elkay Mfg. Co. v.
Ebco Mfg. Co., 192 F.3d 973, 980 (Fed. Cir. 1999). Accordingly,
representations made to the U.S. Patent Office during the prosecution
of Nordocks 6,834,409 patent (the 409 Patent) apply equally to the
scope of the 754 Design Patent.
52
3.
The 754 Design Patent Is Purely Functional
As analyzed in careful detail in the Expert Report of Adam

Brookman, the lug hinge and header plate design is a purely functional
component that serves the purpose of allowing the horizontal deck plate
to pivot or swivel with respect to the header plate, which is a necessary
function of all dock levelers. (A2221-A2275). Everything about the
appearance of Nordocks design is driven by function, and there is no
added creativity to support any ornamental protection. Accordingly, the
lug hinge and header plate design is purely functional and cannot
support patentability of the claim of the 754 Design Patent.
(a)
The 754 Design Patent Itself Admits That It Is

Primarily Functional
The scope of the claim of the 754 Design Patent is tempered by

Nordocks representations made during the prosecution of the parent of
the 754 Design Patent, the 409 Patent. In the 409 Patent, Nordock
admits that the lug hinge and header plate design is functional. For
example, Nordock represents that with conventional dock levelers [t]he
connection [of the lip plate to the deck frame] is a critical part of the
leveler as it must withstand concentrated stresses as the fork lift and
53
the load it is carrying traverse from the building to the trailer, or visa
versa. 409 Patent, at col. 2, lines 51-56 (emphasis added) (A2083,
A2065-A2090). More specifically, Nordock represented that
a [prior art dock leveler] design uses lip plate lugs to
lessen these stresses. In lieu of a header plate,
cooperating lugs are also welded to the support beams
and deck plate. A problem with this design is that the
unsupported front edge of the deck plate is more easily
bent and dished between the support beams.
409 Patent, at col. 2, lines 60-65. (A2083)(emphasis added).
Nordock purported to overcome those problems in the prior art by
providing a durable combined lip lug and header plate hinge
construction. 409 Patent, at col. 3, lines 15-16 (emphasis added)
(A2084). Nordock went on to state:
A still further advantage of the dock leveler is its solid
and durable attachment of the lip to the deck and deck
frame. A header plate is used to support the front edge
of the deck plate across its full width. This header
plate is combined with a lip plate lug type hinges to
reduce the concentrated stresses on the tubular
hinge to provide a longer structural life for the
dock leveler.
409 Patent at col. 4, lines 26-32. (A2084)(emphasis added).
54
(b)
Prosecution History Estoppel Bars The

Ornamental Claim
Nordock is estopped from relying on the lug hinge shown in the

drawings of the 754 Design Patent as a patentable feature. As stated
earlier, the 754 Design Patent issued from originally-filed utility patent
application number 10/328,279 (the 279 Application). However, in
divisional application number 11/179,941, Nordock attempted to seek
utility patent protection on precisely its lug hinge and header plate
design. More specifically, in the 941 Application, Nordock presented to
the Patent Office a set of utility patent claims that sought to protect a
dock leveler comprising . . . a header plate . . . a set of header lugs . . .
[and] a set of lip lugs. (A2131). The Patent Office refused to grant
Nordock utility patent protection on those elements and cited
substantial prior art in opposition. (A2093-A2097).
After having insisted that its lug hinge and header plate design
was not only functional, but far superior to existing designs, Nordock
apparently declined to push its position in the utility patent and
allowed it to go abandoned, thus forever dedicating the lug hinge and
header plate design to the public. (A2091-A2092). See, Johnson &
55
Johnston Associates, Inc. v. R.E. Service Co., 285 F.3d 1046 (Fed. Cir.
2002)(failure to claim disclosed subject matter dedicates it to the
public).
By dedicating the utilitarian functions of the lug hinge and header
plate design to the public, Nordock is estopped from trying to recapture
protection over those elements by improperly extending design patent
protection far beyond its intention. In other words, Nordock cannot
improperly
secure
utility-like
patent
protection
over
functional
components for which it was unable to obtain a utility patent by merely

filing a design patent and claiming that the elements are ornamental.
For at least this additional reason, all the essential elements of the 754
Design Patent are not properly protectable as ornamental design, and
the 754 Design Patent is invalid.
(c)
Nordocks Own Advertising Touts The

Functionality Of The 754 Design Patent
Touting the specific utility of design features in advertising is one

of the earmarks of functionality. See Berry Sterling Corp. v. Prescor
Plastics, Inc., 122 F.3d 1452, 1456 (Fed. Cir. 1997). As set forth
thoroughly in the Brookman Report, Nordock advertises that its
56
"[e]xclusive lip lug and header plate design ensures maximum

strength and durability." (A2230-A2231)(emphasis supplied). Also,
on its Web site, Nordock advertises that the lug hinge design is self
cleaning, does not allow debris to collect in this critical area, and
provides the strongest front hinge and deck support. (A2230-A2231)
(emphasis supplied). In fact, Nordock does not apparently ever refer to
the ornamental features of its lug hinge design anywhere except in this
litigation.
Nordock cannot have it both ways. Either its lug hinge and header
plate design is entirely functional, as it has repeatedly and consistently
represented to the world, or it is merely window dressing, as it is
attempting to assert in this case. This Court is correct to examine
Nordocks advertising, as it is the best indication of Nordocks true
intention, unaltered by the self-serving motivations of litigation.
(d)
Nordocks Own Witnesses Admit The Lug

Hinge/Header Plate Design Is Functional
Practically every witness who provided testimony, including

Nordocks own inventor, stated that the lug hinge and header plate
design is driven purely by function and cost. For example, Mr. Adam
57
Brookman, Systems technical expert, testified at length that the 754

Design Patent was purely functional. (A5965-66, A5972).
In addition, and perhaps most compellingly, Mr. Denis Gleason,
Nordocks own CEO, was presented with a copy of Figure 1 of the 754
Design Patent and asked to identify any ornamental features. Mr.
Gleason was unable to do so, and instead indicated that every single
element of the 754 Design Patent was purely functional. For example,
at the claim construction hearing held in this matter, Mr. Gleason was
unable to identify even a single aspect of the 754 Design Patent that
was ornamental. (A4284-A4341). And again at trial, when presented
with Figure 1 of the 754 Design Patent, Mr. Gleason was asked which
of the disclosed features was functional and Mr. Gleason was forced to
admit that every single feature shown in the figures of the 754 Design
Patent was functional. See Trial Exhibits 1042, 1044. (included in the
Addendum to this brief at pages 1-2).
Accordingly, all the witnesses admitted that the lug hinge and
header plate design, individually and collectively, is limited to purely
functional elements driven by performance, not ornamentation.
58
4.
The Availability of Alternatives Does Not Eliminate

Functionality
Although one factor to consider in the functionality analysis is the

availability of alternative designs, this Court has cautioned that a full
inquiry with respect to alleged alternative designs includes a
determination as to whether the alleged alternative designs would
adversely affect the utility of the specified article, such that they are
not truly alternatives within the meaning of the law. PHG
Technologies v. St. John Companies, Inc., 469 F.3d 1361, 1367 (Fed. Cir.
2006)(citing Rosco, Inc. v. Mirror Lite Co., 304 F.3d 1373, 1378 (Fed.
Cir. 2002)). An element is functional if it is essential to the use or
purpose of the article or if it affects the cost or quality of the article.
Amini Innovation Corp. v. Anthony California, Inc., 439 F.3d 1365, 1371
(Fed. Cir. 2006).
For example, at trial Mr. Edward McGuire, Systems CEO, was
questioned about the decisions to use the header plate and the lug hinge
rather than other alternatives. Mr. McGuire testified that the lower
cost of the using the header plate and the lug hinges make those
decisions necessary. More specifically, Mr. McGuire testified as follows:
59
Q.
And what would be the advantage of [using the header

plate and lug hinge]?
A.
Well, number one, it would be -- it would be a lot

easier, easier in many aspects from an engineering
standpoint. Again, if you take that -- if you take the
front header off you're going to have to test that
product probably, you know, two, three years because
you're changing the whole dynamics of the platform. A
lot of testing.
So we eliminated that issue. From a manufacturing
standpoint we always had built a platform with a front
header. And our people on the manufacturing floor
knew how to do it. And they felt very confident in doing
it. And we decided to go ahead with it.
Q.
What advantage, if any, would you get by switching

from the piano-style hinge to the header with lugs?
A.
Couple advantages. One, it helped our throughput.

What I mean by throughput is, we could make -- at
that time some of the people in the meeting felt that,
you know, we possibly could get one or two dock
levelers more a week.
Q.
Would that save you money?
A.
Well, if you get one dock leveler a week that's 52 dock

levelers more a year. And that definitely saves you
money.
(A5796, A5788-A5798)
Accordingly, the availability of possible alternative designs to the
one depicted in the 754 Design Patent does not, of itself, render the
60
design ornamental. For example, the use of glue to adhere two objects
together rather than tape does not make the glue ornamental. Nor does
it make the two objects ornamental. Alternatives that are the product of
cost rather than functional compromises are not driven by ornamental
features.
5.
The Overwhelming Weight Of The Evidence Proves

The 754 Design Patent Is Invalid As Being Functional
As set out above, the overwhelming weight of the evidence proves

that the 754 Design Patent is invalid as purely functional. All of the
evidence presented to the jury proves that the patent is invalid, and no
evidence presented contradicts that conclusion. Accordingly, the 754
Design Patent should be held invalid as a matter of law.
IX.
Nordock Failed To Prove That Systems 6 1/2 Foot Dock

Leveler Infringes The 754 Design Patent
Nordock failed to put forth any evidence at all, certainly not
substantial evidence, that Systems 6 1/2 foot dock leveler infringes the
754 Design Patent. Accordingly, the District Court erred by denying
Systems motion for JMOL of non-infringement of the 6 1/2 foot dock
leveler.
61
A jury verdict must be supported by substantial evidence. Perfetti

v. First Nat. Bank of Chicago, 950 F.2d 449, 450 (7th Cir. 1991)(citing
La Montagne v. American Convenience Products, Inc., 750 F.2d 1405,
1410 (7th Cir. 1984)). A mere scintilla of evidence will not suffice to
support a jury verdict. Id. This matter concerns the alleged
infringement of a design patent, which, of course, protects the
ornamental design shown in the figures of the patent. Under the
applicable ordinary observer test, the jury must perform an actual
visual comparison of all of the figures of the design patent to the
accused product. The overall features of the top, side and underside
of the accused products must be compared with the patented design as a
whole as depicted in all of the drawing figures to determine
infringement. Contessa Food Products v. Conagra Inc., 282 F.3d 1370,
1381 (Fed. Cir. 2002). In the absence of any evidence regarding what
the 6 1/2 foot dock leveler looks like, a finding of infringement simply
cannot stand.
62
A.
NO EVIDENCE REGARDING SYSTEMS 6 1/2 FOOT DOCK

LEVELER WAS PRESENTED AT TRIAL
At trial, Nordock presented zero evidence regarding the 6 1/2 foot
dock leveler. The Court need not parse the record to determine whether
the evidence Nordock presented rises to the level of substantial.
Regardless of how much evidence is required to reach substantial,
zero clearly does not qualify. Nordock did not present even one picture
of a 6 1/2 foot dock leveler. At no time did Nordock present any evidence
at all that the jury could have used to conduct the requisite comparison
to all the drawings of the 754 Design Patent.
At trial, Nordock's technical expert Professor Steven C. Visser
testified as to the infringement analysis contained in his report.
However, Prof. Visser admitted that he did not review any actual
Systems dock leveler in preparing his report and instead relied on
Systems own sales brochures. (A0346). In addition, Prof. Visser
admitted that the sales brochures he did review contained only pictures
of the 6 foot and 7 foot dock levelers. Importantly, they did not depict
the 6 1/2 foot dock leveler. (A0350). Prof. Visser never testified that he
63
even saw (much less analyzed) an actual 6 1/2 foot Systems dock leveler
either in person or in picture.
By the close of Nordocks case, Nordock had presented absolutely
no evidence regarding Systems 6 1/2 foot dock leveler. Indeed, when
Systems Vice President Mike Pilgrim later took the stand and testified,
he was asked that specific question:
Q:
Have you been here for the whole trial?
A:
Yes.
Q.
Have you seen anyone show during the course of this

trial a 6 1/2 foot version of either a hydraulic or a
mechanical dock leveler?
A.
No, I havent.
(A5910).
Then, when Mr. Pilgrim was asked whether the 6 1/2 foot dock
leveler appears similar to either Systems 6 foot or its 7 foot dock
levelers, he stated emphatically that it did not. More specifically, he
testified as follows:
Q:
Do these the hydraulic and mechanical dock levelers

with lugs, does the six-foot, the 6 1/2 foot and the
seven-foot all look the same?
64
A:
Not at all.
(5909-A5910).
Mr. Pilgrim then testified extensively about the differences in
construction which make the dock levelers all look different. For
example, instead of having paired-legs as claimed in the 754 Design
Patent, the 6 1/2 foot Systems dock leveler uses single lugs that are
attached to the lip. (A5910). Accordingly, the jury could not possibly
have found infringement of a dock leveler which it had never seen and
which the only testimony conclusively establishes looks different than
the 754 Design Patent drawings.
Nordock argued to the District Court that there was trial
testimony to the effect that the middle six foot portion of the 6, 6 1/2
and 7 wide levelers is the same. However, the testimony that Nordock
relies on is that of Denis Gleason, Nordocks CEO, testifying about
Nordocks own dock levelers, not Systems dock levelers. (A5621A5623). Mr. Gleason was even explicit: Well, briefly how we make
dock levelers is we first . . . (A5621)(emphasis added). Nothing in Mr.
Gleasons testimony ever discussed how Systems makes dock levelers.
65
As a point of fact, Mr. Pilgrim testified to several ways in which

Systems designed its 6 1/2 foot dock leveler to look different than its 6
and 7 foot dock levelers. In short, how Nordock makes its dock levelers
is completely irrelevant to the question of whether Systems 6 1/2 foot
dock leveler infringes.
Again, the simple fact is that Nordock offered no evidence
whatsoever regarding what the Systems 6 1/2 foot dock leveler looks
like. Accordingly, there is simply no evidence to support the jury's
finding of infringement as to the 6 1/2 foot dock leveler. Because there is
no evidence whatsoever to support the jury's finding of infringement as
to the 6 1/2 foot hydraulic dock leveler, that finding by the jury must be
set aside.
X.
CONCLUSION
For the foregoing reasons, Nordocks appeal is without factual or

legal basis, and this Court should deny Nordocks requested relief.
Systems respectfully requests that this Court enter the following relief
in Systems favor: (1) that Nordocks motion for a new trial be denied, (2)
that the 754 Design Patent be declared invalid as a matter of law, and
66
(3) that the finding of infringement with respect to Systems 6 1/2 foot
dock leveler be reversed.
Dated: January 21, 2014
Respectfully submitted
______________________
Philip P. Mann
Timothy J. Billick
MANN LAW GROUP
John Whitaker
WHITAKER LAW GROUP
(206) 436-0900
[email protected]
[email protected]
Attorney for Defendant-CrossAppellent Systems, Inc.
67
ADDENDUM

No. 2013-1680
---------------------------------------------------------NORDOCK, INC.
Plaintiff Appellant,
v.
SYSTEMS INC.,
Defendant Appellee Cross-Appellant.
---------------------------------------------------------I, Anne K. Smart, being duly sworn according to law and being
over the age of 18, upon my oath depose and say that:
On the date indicated below, I electronically filed the foregoing
with the Clerk of the Court for the United States Court of Appeals for
the Federal Circuit by using the appellate CM/ECF system.
I certify that all participants in the case are registered CM/ECF
users and that service will be accomplished by the appellate CM/ECF
system.
/s/ Anne K. Smart
CERTIFICATE OF COMPLIANCE
I hereby certify that this brief complies with the type-volume
limitation of Federal Rule of Appellate Procedure 32(a)(7)(B).
This brief contains 11,962 words, excluding the parts of the brief
exempted by Federal Rule of Appellate Procedure 32(a)(7)(B)(iii) and
Federal Circuit Rule of Appellate Procedure 32(b).
This brief complies with the typeface requirements of Federal
Rule of Appellate Procedure 32(a)(5) and the type style requirements of
Federal Rule of Appellate Procedure 32(a)(6).
This brief has been prepared in a proportionally spaced typeface
using LibreOffice in a 14 point Century Schoolbook font.
Respectfully submitted,
/s/ Philip P. Mann
Philip P. Mann
MANN LAW GROUP
Seattle, WA 98101
(206) 436-0900
[email protected]
Attorney for Appellee-CrossAppellant Systems, Inc.
2014-1762, -1795

NORDOCK, INC.,
PlaintiffAppellant,
v.
SYSTEMS INC,
DBA PoweRamp, DBA DLM Inc, DBA McGuire,
DefendantCross-Appellant.
Appeals from the United States District Court for the Eastern District of
Wisconsin in Case No. 11-CV-0118, Judge Rudolph T. Randa.
RESPONSE AND REPLY BRIEF FOR PLAINTIFF-APPELLANT

JEFFREY S. SOKOL
SOKOL LAW OFFICE
828 N. Broadway, Suite 400
Milwaukee, WI 53202
Telephone: (414) 272-7200
Facsimile: (414 272-7204
Attorney for Plaintiff-Appellant
FILED: MARCH 19, 2015
CORRECTED: JUNE 15, 2015
COUNSEL PRESS, LLC
(888) 277-3259 * (202) 783-7288
UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT

Nordock, Inc. v. Systems, Inc.
Nos.2014-1762, -1795
Counsel for Plaintiff-Appellant, Nordock, Inc., certifies the following:
1. The full name of every party represented by me is:
NORDOCK, INC.
2. The name of the real party in interest represented by me is:
NONE
3. All parent corporations and any publicly held companies that own 10
percent or more of the stock of the parties represented by me are:
NONE
4. The names of all law firms and the partners or associates that appeared
for the parties now represented by me in the trial court or are expected to
appear in this court are:
SOKOL LAW OFFICE
JEFFREY S. SOKOL
ONEIL, CANNON, HOLLMAN, DEJONG AND LAING, S.C.
GREGORY W. LYONS
June 15, 2015
/s/ Jeffrey S. Sokol

Jeffrey S. Sokol
Counsel for Appellant
(i)
TABLE OF CONTENTS
Page
CERTIFICATE OF INTEREST ................................................................................ i
TABLE OF CONTENTS .......................................................................................... ii
TABLE OF AUTHORITIES ................................................................................... vi
I.
STATEMENT OF ADDITIONAL FACTS ......................................................1

A. Systems' Post Judgment Motion Under Rule 50 and Rule 59 Do
Not Contest the Validity of the D754 Patent ............................................ 1
1. Systems Did Not File a Rule 50(b) Motion .......................................... 1
2. Systems Rule 59 Motion Only Contested Infringement of 6-1/2
Foot Wide Levelers ............................................................................... 1
B. Systems Cross Appeal Challenges the Sufficiency of the Evidence
Regarding the Ornamentality of the D754 Patent ..................................... 1
1. During the First Three Days of Trial, Nordock Witness
Testimony and Evidence Overwhelmingly Established the
Ornamentality of the D754 Patent ....................................................... 2
2. Systems Cross Appeal Asserts Prosecution History Estoppel,
But Fails to Challenge the District Courts Grant of Summary
Judgment to Nordock on Prosecution History Estoppel ....................... 2
a. Motions for Summary Judgment Raised Prosecution History
Estoppel ............................................................................................ 2
b. Systems Failed to Comply with Local Rule 56 ............................... 3
c. Nordocks Proposed Statement of Material Facts
Demonstrate No Prosecution History Estoppel ............................... 3
d. Nordocks Proposed Statement of Material Facts Was
Deemed Admitted As Systems Failed to Comply with Local
Rule 56 ............................................................................................. 5
e. District Court Granted Summary Judgment for Nordock on
Prosecution History Estoppel ........................................................... 6
(ii)
C. During Trial, Systems Cross-Examined Denis Gleason Regarding

Statements in Parent 279 Application Attempting to Show a Lack
of Ornamentation ........................................................................................ 7
II.
SUMMARY OF THE ARGUMENT ................................................................8
III. ARGUMENT: REPLY TO RESPONSE TO APPEAL ..................................16

A. Federal Statute (35 U.S.C. 289) ............................................................ 16
B. Systems Consented to 289 Jury Instruction Requiring Gross
Revenue Methodology To Determine Systems Profits ......................... 18
C. The 289 Jury Instruction Requires Systems Profits Be
Determined Based on Systems Gross Revenue for Its Sales of
Over 1,450 Infringing LHP/LHD Levelers Products ........................... 18
D. Expert Reports of Both Parties Use a Gross Revenue Methodology
to Determine that Systems Profits Were Over $630,000 ........................ 19
E. District Court Decision and Order Relied on Beros Erroneous
Cost Saving Methodology .................................................................... 20
F. Systems Response Brief Cites No Trial Record Showing Mr.
Beros Testimony and/or Slide Show Presentation Uses a Proper
Gross Revenue Methodology to Determine Systems Profits
Under 289 .............................................................................................. 21
G. Systems Response Brief Needlessly Discusses and Cites Trial
Record Regarding 284 Lost Profits and Reasonable Royalty
Evaluations, Which Are Not At Issue ...................................................... 22
H. 35 U.S.C. 289 and its Jury Instruction Do Not Require the
Patented Design to be the Entire Product or Article of
Manufacture .............................................................................................. 23
I. Systems Consented to the Verdict Form with Question No. 1,
Which Identifies Systems LHP/LHD Levelers as the
Accused/Infringed Leveler Products .................................................... 25
J. Systems Contention that 289 Damages Do Not Involve Its
Whole Leveler Because the D754 Patent Does Not Show a Whole
Leveler Lacks Merit ................................................................................. 26
(iii)
K. Systems Hub Cap and Window Analogies Exaggerate and

Distort Systems Infringement Situation .................................................. 28
L. Burden of Proof Jury Instruction (Page 39 Instruction) Does Not
Negate 289 Jury Instruction ................................................................... 30
M. Undisputed Facts ...................................................................................... 31
IV. ARGUMENT: RESPONSE TO CROSS-APPEAL ........................................34
A. Systems Ornamentality Arguments Are Legally Inaccurate .................. 34
B. Systems Did Not Challenge Validity in a Rule 50 or Rule 59
Motion, And Thus Forfeited the Right to Challenge Validity on
Cross-Appeal ............................................................................................ 36
C. Systems Cross-Appeal Is Procedurally Inadequate ................................ 38
D. Systems Cross-Appeal Asserts Invalidity Based on Prosecution
History Estoppel, But Fails to Mention That This Assertion Was
Denied On Summary Judgment, or Argue that the District Courts
Summary Judgment Order Was Incorrect ................................................ 38
1. Systems Prosecution History Estoppel Assertion on CrossAppeal Restates its Same Assertion to the District Court................... 39
2. Nordocks Proposed Statements of Fact Were Found Admitted
Due to Systems Failure to Follow District Court Local Rules .......... 39
3. District Court Found Systems Failed to Support its Prosecution
History Estoppel Assertion.................................................................. 39
4. Systems Improperly Raises Prosecution History Estoppel
Without Challenging the District Court Summary Judgment
Order ....................................................................................................40
5. U.S. Law Permits Design Patents to be Continuations or
Divisionals of Utility Patents, Even If Utility Patent Abandoned ...... 40
E. Cross Appeal Blatantly Ignores and Mischaracterizes Witness
Testimony During First Three Days of Trial ........................................... 41
(iv)
F. Substantial Evidence of Ornamentality Was Presented at Trial .............. 44

1. Nordock Intended its D754 Design to Be Distinctive and
Ornamental .......................................................................................... 44
2. Alternate Designs ................................................................................ 46
3. Design Options Selection, Size, Shape and Arrangement of
Various Component Parts Not Dictated by Function.......................... 48
4. Overall Appearance Is Not Dictated By Function .............................. 49
5. Marketing Literature Is Not Dispositive ............................................. 50
6. Systems Asserted Cost Savings ......................................................... 53
7. Systems Nonsensical Cross Examination of Nordock
Witnesses ............................................................................................. 54
8. Professor Visser Provided Credible Testimony .................................. 54
G. Systems Cross-Appeal Challenges Jurys Finding That Systems
6-1/2 LHP/LHD Levelers Infringe the D754 Patent ............................. 54
CONCLUSION AND STATEMENT OF RELIEF SOUGHT ...............................58
ADDENDUM
CERTIFICATE OF COMPLIANCE WITH TYPE-VOLUME LIMITATION,
TYPEFACE REQUIREMENTS AND TYPE STYLE REQUIREMENTS
(v)
Page(s)
Cases
Berry Sterling Corp. v. Pescor Plastics, Inc.,
122 F.3d 1452 (Fed. Cir. 1997)............................................................................35
Bettcher Indus., Inc. v. Bunzl USA, Inc.,
661 F.3d 629 (Fed. Cir. 2011)..............................................................................14
CardSoft v. Verifone, Inc.,
769 F.3d 1114 (Fed. Cir. 2014)............................................................................40
Catalina Lighting, Inc. v. Lamps Plus, Inc.,
295 F. 3d 1277 (Fed. Cir. 2002)...........................................................................31
Chemetall GMBH v. ZR Energy, Inc.,
320 F.3d 714 (7th Cir. 2003) ...............................................................................36
Consumer Products Research v Jensen,
572 F.3d 436 (7th Cir. 2009).................................................................................36
Des Vignes v. Dept of Transp., Fed. Aviation Admin.,
791 F.2d 142 (Fed. Cir. 1986)..............................................................................43
Fisher-Price, Inc. v. Safety 1st, Inc.,
279 F. Supp. 2d 530 (D. Del. 2003),
revd in part on other grounds, 109 F. Appx 387 (Fed. Cir. 2004) ....................26
Gonzales v. Def. Logistics Agency,
772 F.2d 887 (Fed. Cir. 1985)..............................................................................43
Henry Hanger & Display Fixture Corp. of America v. Sel-O-Rak Corp.,
270 F.2d 635 (5th Cir. 1959) ...............................................................................17
High Point Design LLC v. Buyers Direct, Inc.,
730 F.3d 1301 (Fed. Cir. 2013)............................................................... 35, 36, 37
Hupp v. Siroflex of Am., Inc.,
122 F.3d 1456 (Fed. Cir. 1997)............................................................................47
(vi)
John O. Butler Co. v. Block Drug Co., Inc.,

620 F. Supp. 771 (N.D. Ill. 1985) ........................................................................26
Junker v. HDC Corp.,
No. C-07-05094, 2008 WL 3385819 (N.D. Cal. July 28, 2008) .........................17
L.A. Gear Inc. v. Thom McAn Shoe Co.,
988 F.2d 1117 (Fed. Cir. 1993)..................................................................... 35, 47
Liquid Dynamics Corp. v. Vaughan Co.,
449 F.3d 1209 (Fed. Cir. 2006)............................................................................57
Nike, Inc. v. WalMart Stores, Inc.,
138 F.3d 1437 (Fed. Cir. 1998)................................................... 17, 23, 24, 26, 27
Ortiz v. Jordan,
562 U.S. 180 (2011) .............................................................................................36
Pac. Coast Marine Windshields Ltd. v. Malibu Boats, LLC,
No. 6:12-cv-33-Orl-28DAB, 2014 WL 4185297 (M.D. Fla. Aug. 22, 2014) .....17
PHG Technologies v. St John Companies
469 F.3d 1361 (Fed. Cir. 2006)............................................................................48
Schnadig Corp. v. Gaines Mfg. Co.,
620 F.2d 1166, 206 USPQ 202 (6th Cir. 1980) ...................................................17
Sciele Pharma Inc. v. Lupin Ltd.,
684 F.3d 1253 (Fed. Cir. 2012)............................................................................14
SmithKline Beecham Corp. v. Apotex Corp.,
439 F.3d 1312 (Fed.Cir.2006)..............................................................................40
Unitherm Food Syst., Inc. v. Swift-Eckrich, Inc,
546 U.S. 394 (2006) .............................................................................................36
Untermeyer v. Freund,
58 F. 205 (2d Cir. 1893).......................................................................................26
Victor Stanley, Inc. v. Creative Pipe, Inc., No. MJG-06-2662,
2011 WL 4596043, 2011 U.S. Dist. LEXIS 112846 (D. Md. Sept. 30, 2011)....26
(vii)
Waller v. Department of the Army,

178 F.3d 1307 (Fed. Cir. 1998)............................................................................44
Zimmerman v. Chi. Bd. of Trade,
360 F.3d 612 (7th Cir. 2004) ...............................................................................16
Statutes
35 U.S.C. 120 ..........................................................................................................4
35 U.S.C. 284 ............................................................................................. 9, 23, 30
35 U.S.C. 289 ................................................................................................ passim
Rules
Fed. R. App. P. 10(b) ...............................................................................................43
Fed. R. App. P. 28(a)(6) ...........................................................................................43
Fed. R. Civ. P. 50 ............................................................................................. passim
Fed. R. Civ. P. 59 ............................................................................................. passim
U.S. District Court, E. D. Wisc., Civil Local Rule 56 .............................. 3, 5, 15, 40
U.S. District Court, E. D. Wisc., Civil Local Rule 59 .............................................30
Other Authorities
H.R. Rep. No. 1966 at 1-3 (1886), reprinted in 18 Cong. Rec. 834 (1887) ............24
(viii)
I.
A.
STATEMENT OF ADDITIONAL FACTS
Systems' Post Judgment Motion Under Rule 50 and Rule 59 Do Not

Contest the Validity of the D754 Patent
Systems cross appeal asserts that it raised motions for judgment as a matter
of law (JMOL) during trial challenging the ornamentality of the D754 Patent
(Systems Brief at page 48) and infringement of its 6-1/2 LHP/LHD dock levelers.
(Sys. Br. at 61). Yet, Systems did not file any Rule 50 or Rule 59 motion
preserving its right to contest ornamentality on appeal.
1.
Systems Did Not Filed a Rule 50(b) Motion
Systems did not file a Rule 50(b) motion of any kind, let alone one
contesting the validity of the D754 Patent based on a lack of ornamentation.
2.
Systems Rule 59 Motion Only Contested Infringement of 6-1/2

Foot Wide Levelers
Systems filed a single Rule 59 motion. This motion only contests the jurys
finding of infringement regarding its 6-1/2 foot LHP/LHD levelers. (A5604-5608).
Systems Rule 59 motion does not contest the validity of the D754 Patent.
B.
Systems Cross Appeal Challenges the Sufficiency of the Evidence

Regarding the Ornamentality of the D754 Patent
The jury found that Systems failed to prove the D754 Patent was invalid.
(A5405). Without considering or citing to the trial record to comply with the
federal rules of appellate procedure and establish what its JMOL motion actually
raised, Systems cross-appeal vaguely challenges the sufficiency of the evidence

that demonstrated the ornamentality of the D754 design.
1.
During the First Three Days of Trial, Nordock Witness Testimony

and Evidence Overwhelmingly Established the Ornamentality of
the D754 Patent
This case involved a six-day trial. (Systems Br. at 4). During the first three
days of trial Nordock presented testimony and evidence establishing the
ornamentality and validity of the D754 Patent. As discussed below, Nordock
witnesses presented extensive testimony and evidence establishing the validity of
the D754 Patent.
2.
Systems Cross Appeal Asserts Prosecution History Estoppel, But

Fails to Challenge the District Courts Grant of Summary
Judgment to Nordock on Prosecution History Estoppel
On summary judgment, the District Court rendered a Decision and Order.

(A3903-3967). The District Court, inter alia, granted Nordocks motion for
summary judgment that prosecution history estoppel does not invalidate the D754
Patent. (A3954-55).
a.
Motions for Summary Judgment Raised Prosecution History

Estoppel
Nordock and Systems filed motions for summary judgment with the District
Court. Each party raised the issue of prosecution history estoppel. (A1063, 204546, 3090-92, 3285-86, 3358-59). Nordock moved the District Court for an order
granting summary judgment as to the validity and enforceability of the D754
(2)
Patent. (A1046-66). Nordocks motion and supporting memorandum, inter alia,

requested an order finding that the D754 Patent is ornamental and not barred by
the related utility patent applications. In support of its motion, Nordock submitted
a proposed statement of material facts including 64 facts. (A3365-84). Systems
moved for an order granting summary judgment as to invalidity and noninfringement. (A2039-56). Nordocks opposition and reply responded to all of
Systems proposed statement of material facts, and submitted additional proposed
facts. (A3272-3301, 3349-63, 3385-3407). Neither Systems opposition nor its
reply responded to any of the facts. (A2676-88, 3215-24).
b.
Systems Failed to Comply with Local Rule 56
The Eastern District of Wisconsin adopted Local Rules (Rep. Add. 2-5).
Civil Local Rule 56 pertains to summary judgment, and requires the parties to
respond to the other parties proposed statement of material facts. Uncontroverted
facts are deemed admitted for the purpose of summary judgment. (Rep. Add. 5).
As Systems failed to comply with Civil Local Rule 56, the District Court deemed
Nordocks proposed statement of material facts admitted for the purpose of
summary judgment. (A3920).
c.
Nordocks Proposed Statement of Material Facts Demonstrate

No Prosecution History Estoppel
Many of Nordocks proposed statement of material facts pertain to

prosecution history estoppel. (A3365-3407). While paragraphs 27, 35, 37, 38, 41,
(3)
42, 47, 48, 92-108, 112 and 113 are each relevant to prosecution history estoppel,
the following chart lists some particularly significant facts. The District Court
made specific mention of the facts in paragraphs 27, 37-38, 47-48, 99-101, 104106, 108 and 113. (A3922-42).
Nordocks Proposed Statement of Material Facts
Deemed Admitted for Summary Judgment
Para.
Statement of Facts
27
Nordocks original U.S. patent application (279 Application) included

Figures 10A-G showing ornamental appearance of D754 Patent.
37
USPTO Examiners were aware of specification and claims in 279 Patent

Application.
38
USPTO considers lack of ornamentation and utility application estoppel

during its review of a design application.
47
Systems president, vice president and outside patent counsel were aware
of Figures 10A-G in 279 Application when developing accused levelers.
48
Systems president agrees there are a variety of ways for making the front
end of a dock leveler. Systems adopted the frontend design of its accused
levelers for asserted cost reasons specific to Systems.
92
A single product can obtain both utility and design patent protection.
93
A design patent can be a continuation of a utility patent provided it is copending and provides the appropriate drawing figures.
95
A design patent can be a continuation or divisional of lapsed utility

application.
96
Federal Circuit said a design patent can assert priority on the filing date of
a lapsed utility patent application under 35 U.S.C. 120.
99
The advantage stated in the 279 Application of using the header to

support the front edge of the deck forms only a minor visual feature
relative to the overall appearance of the D754 frontend design.
100
The portion of the specification of the 409 Utility Patent referenced

above (Para. 99) pertains to a structural limitation in Claim 36.
(4)
101
One of Systems experts differences between the D754 Patent and the
accused levelers is the top edge of its header abuts the outer end of the
deck (not the lower surface of the deck).
102
While Systems may have attempted to design around the structural

limitation of Claim 36, Systems failed to design around the overall
appearance of the D754 Patent.
104
Systems expert admits Patent Examiners are presumed to have done their
job correctly.
105
First sentence of Nordocks 137 Application (now D754 Patent) lists

each of its parent patents and applications, and Systems expert admits the
Examiner may have read this sentence.
106
Patent Office Action for the D754 Patent does not assert lack of
ornamentation based on statements in related patents/applications.
108
The D754 Patent shows the deck in dotted lines, so its engagement
with the top of the header is not part of the claimed overall appearance of
the D754 design.
113
Systems was aware of Nordocks frontend header and lug style design in
Figures 10A-G of Nordocks 409 Patent during Systems development of
its accused levelers.
While the District Court did not deem Paragraph 35 admitted (A3920),
Systems expert agreed that Claims 36-41 of the 279 Application do not require
many of the visual features of the D754 Patent. (A1567-75).
d.
Nordocks Proposed Statement of Material Facts Was Deemed

Admitted As Systems Failed to Comply with Local Rule 56
Systems failed to address any of Nordocks proposed statements of fact as

required by Local Rule 56. (A3920). Accordingly, the District Court deemed
Nordocks proposed statements of fact admitted for the purpose of summary
judgment. (A3920).
(5)
e.
District Court Granted Summary Judgment for Nordock on

Prosecution History Estoppel
On summary judgment, the District Court found that dock levelers sold in
the United States have a variety of frontend styles or appearances (A3922-23),
and there is great variation in dock leveler design. (A3953). The District Court
granted summary judgment in favor of Nordock regarding the following:
The D754 Patent is not anticipated;

The D754 Patent is not obvious;
No prosecution history estoppel;
No equitable estoppel; and,
No unclean hands.
(A3947)
(A3951)
(A3955)
(A3957)
(A3959)
Regarding prosecution history estoppel, the District Court found as a matter

of law that Systems had not established a basis for invalidating the D754 Patent,
and stated as follows:
The facts regarding the prosecution history are not disputed. However, the
parties interpretation of the legal import of those facts differ. Systems
argument is unacceptable because, if adopted, it would make it difficult for
any patentee who has sought or obtained a utility patent to subsequently
obtain a valid design patent. Systems has not cited any case law to support
its position that arguments made in support of function foreclose a design
patent. Therefore, Nordock is granted summary judgment on the issue of
prosecution estoppel.
(A3954-55) (Emphasis added).
The above issues decided on summary judgment were not tried to the jury.
The ornamentation issue (i.e., de jure functionality) raised by the parties on
(6)
summary judgment was tried to the jury after the District Court denied both
parties request for summary judgment on this issue.
C.
During Trial, Systems Cross-Examined Denis Gleason Regarding

Statements in Parent 279 Application Attempting to Show a Lack of
Ornamentation
During trial, Systems presented testimony and evidence regarding statements
in Nordocks parent 279 application filed December 23, 2002 (now 409 Patent)
regarding functionality. Specifically, Systems cross-examined Mr. Gleason at
length regarding statements in the 279 Application attempting to show lack of
ornamentation. (A6214, 6217, 6888-98, 6949-52). Systems further questioned Mr.
Gleason regarding Defense Exhibit 1011 (Prosecution History of 279
Application/409 Patent), which Systems did not move into evidence. (A6892 -97,
8150).
Systems also cross examined Shawn Ward, Nordocks vice president of
sales and marketing. (A7086). Systems questioned him on how Nordock could
assert infringement of the D754 patent filed in 2007, when Systems Accused
Levelers were on the market several years earlier. (A7131-32). Systems also asked
him why Nordock was not suing on the 409 Patent that issued in 2004, and where
the word ornamental appeared in the 409 Patent. (A7132). Then, Systems began
cross-examining Mr. Ward about Nordock receiving both the 409 Patent and the
D754 Patent, and began questioning him on Claim 1 of the 409 Patent. (A7133).
(7)
A side bar was held. (A7134-41). As Mr. Ward had not testified as to any special
understanding of utility patents, and the District Court established he was not
involved in the prosecution history, the District Court did not allow Systems to ask
questions about prosecution history to Mr. Ward. (A7140). Without objection,
Systems counsel agreed to move on to a different topic. (A7141).
II.
SUMMARY OF THE ARGUMENT
Few, if any, facts regarding Systems sale of its infringing LHP/LHD levelers
are disputed. As discussed below, the parties do not contest the following:
Dock Levelers are articles of manufacture.

Nordock developed a new and distinctive frontend for its dock levelers.
Nordock obtained D754 Patent for lip and hinge plate for a dock leveler.
Lip and hinge plate form the frontend of the Nordock dock leveler.
Systems sold over 1,450 LHP/LHD levelers infringing the D754 Patent.
Systems gross revenue for infringing sales were over $3,600,000.
Systems unit profit was at least $433 per infringing leveler sold.
Systems profits were over $600,000 for the infringing LHP/LHD sales.
Levelers need a frontend to perform their intended use or purpose.
Frontend is welded to the leveler.
Frontend of leveler is not sold separately.
Jury Instruction requires gross revenue to determine Systems profits.
Jury Instruction requires design to be used with article of manufacture.
289 requires the patented design be applied to article of manufacture.
289 does not require design patent to claim entire article of manufacture.
What is at issue is the verdict awarding $0 for Systems profits on its sales of
over 1,450 infringing LHP/LHD dock levelers. This verdict was then confirmed by
the District Courts Final Decision and Order (A1-17) based on the following
erroneous determinations:
(8)
a)
b)
Reliance on Mr. Richard Beros improper cost savings methodology

trial testimony to legitimize a finding that Systems profits were $0;
and,
Misapplying a burden of proof jury instruction to conclude that the
jury did not need to fulfill its duty to determine Systems profits as per
the 289 jury instruction, thereby effectively nullifying Congresss
enactment of 289.
Nordocks appeal requests a new trial for the limited purpose of properly
determining Systems profits under 289. (Nordock Appellant Brief at pages 1-2,
8-12, 17-52). Systems response misdirects this Courts attention by extensively
discussing and citing expert evaluations of lost profits and a reasonable royalty
under 284, which are not at issue. (Sys. Br. 23-32, 46-47).
shall be liable to the owner to the extent of his or her total profit.
Nordock is a Canadian company that manufactures and sells dock levelers
and accessories for dock levelers. Nordock developed a new, distinctive and
ornamental frontend design for its dock levelers. Nordock intended that its new
frontend design covered by its D754 Patent be distinctive and ornamental. The
frontend is shown on 100% of manufacture brochures and websites, during
customer demos and at trade shows. (A6771, 6779-6801, 7028-29, 7032, Exhibit 5
A6133-6184 and Exhibit 12 A6191-6205). Dock levelers are sold as a unit. The
frontend is welded to the deck and support frame, and is not sold separately from
(9)
the leveler as a whole, or for any other use than as part of a dock leveler. (Nor. Br.
at 14). During trial, Nordocks displayed the following demonstrative exhibit
showing a brochure picture of one of Nordocks levelers. (Exhibit 2, A7377).
Nordock obtained U.S. Patent No. D579,754 (the D754 Patent) for a lip, lug
and header plate design forming the frontend of a dock leveler depicted above.
(Exhibit 18, A6321-26). During trial, Figures 1-7 of the D754 Patent were
displayed, including the following Figure 1. (A6346-48). The multiple components
forming the frontend design of the D754 Patent included a lip plate, several lip
lugs welded to the lip plate, a header plate, several header lugs welded to the
header plate, and a continuous pivot rod passing through the lip and header lugs.
(10)
Locating the pivot point of the lip at the frontend of the leveler is required for the
leveler to perform its intended function of bridging the gap between a loading dock
and a trailer bed. Still, the overall appearance of the frontend design, as well as
the selection, size, shape and arrangement of components forming the frontend
design are matters of design choice.
Systems is a Wisconsin company that manufactures and sells dock levelers

and accessories for dock levelers. Systems knew Nordock filed its 279 patent
application (now 409 Patent) with design patent Figures 10A-G when Systems
was developing its infringing LHP/LHD levelers. (A5810, 5813-14). Figures
10A-G of the 279 application became Figures 1-7 of the D754 Patent. During
(11)
trial, the following demonstrative exhibit showing a brochure photograph of

Systems accused dock leveler was displayed. (Exhibit 13, A7379).
Nordock asked Systems to stop selling the infringing levelers. Systems

would not. Nordock filed suit. By the date of the trial, Systems sold over 1,450
LHP/LHD infringing hydraulically activated dock levelers. (Nordock Br. at 28).
Both Systems and Nordock retained damages experts who prepared reports
showing that based on a gross revenue methodology, Systems profits on its
LHP/LHD sales were over $600,000. (Nor. Br. at 34-37).
However, during the trial, Systems expert, Mr. Bero, gave verbal testimony
based on his cost savings methodology he used to calculate a reasonable royalty,
(12)
that Systems profits on the LHP/LHD levelers would be much less than $600,000.
(A5526). Yet, this cost saving methodology is legally inaccurate for determining
Systems profits under 289. Still, no one testified Systems profits were $0.
The jury found Systems LHP/LHD levelers were infringing, and that
Systems failed to prove Nordocks D754 Patent invalid. (A5402-05). The jury
was also instructed that Nordock was seeking 289 damages and that if the jury
found infringement and did not find the D754 Patent invalid:
a) You [the jury] are to award Nordock Systems total profits attributable
to the infringement;
b) Systems total profits are determined based on Systems gross revenue
less certain allowable expenses; and,
c) Systems total profit is its entire profit on the sale of the article of
manufacture to which the patented design is applied or used.
(A4540).
However, against the manifest weight of the credible evidence, the jury
found that Systems profits on its sale of over 1,450 infringing LHP/LHD levelers
were $0. (A5404). This defied all logic and common sense. The jury also found
that a reasonable royalty for Systems infringing LHP/LHD levelers was $46,825.
(Nor. Br. at 20, A5404).
The District Court entered judgment in favor of Nordock in the amount of
$46,825, plus costs, and permanently enjoined Systems from making, using, selling
or importing its infringing LHP/LHD levelers. (A18). The District Court denied
(13)
Nordocks Rule 59 motion seeking a proper determination of 289 damages, or in

the alternative, a new trial to properly determine 289 damages. (A17).
Nordock appeals the District Courts Decision and Order denying Nordocks
Rule 59 motion for two reasons. First, the District Court erroneously relied on
Systems experts new cost savings methodology for determining Systems
profits. This methodology conflicts with the District Courts 289 Jury Instruction
and effectively nullified the Congressional intent of 35 U.S.C. 289. Second, the
District Court misapplied the Burden of Proof jury instruction to conclude the jury
verdict is legally sound in finding Systems profits were $0. The District Court
misapplied the Burden of Proof jury instruction to conclude that the jury did not
have to consider the 289 jury instruction. The interpretation of jury instructions is
a matter of law. This Court reviews a district courts interpretation of them de
novo. To the extent the court's decision is based upon an issue of law, we review
that issue de novo. Sciele Pharma Inc. v. Lupin Ltd., 684 F.3d 1253, 1259 (Fed.
Cir. 2012) Statutory interpretation is a question of law that this court reviews de
novo. Bettcher Indus., Inc. v. Bunzl USA, Inc., 661 F.3d 629, 639 (Fed. Cir. 2011).
Systems cross-appeal asserts that it raised a JMOL motion during trial
challenging the sufficiency of the evidence demonstrating the ornamentality of the
D754 Patent. Yet, Systems did not file any Rule 50 or 59 motion after the verdict
challenging the D754 Patents validity, let alone a lack of ornamentation. Thus,
(14)
Systems right to challenge the validity of the D754 Patent was forfeited.
Systems JMOL motion during trial raising the ornamentality issue was also
legally deficient. First, although overall appearance of a design is considered
when determining if a design patent has sufficient ornamentation, the JMOL
motion incorrectly asserts just the opposite. Second the cross-appeal blatantly
ignores three days of Nordock trial testimony and evidence that overwhelmingly
establishes the validity and ornamentality of the D754 Patent, and most certainly
provides sufficient evidence to support the jury verdict finding that Systems failed
to prove the D754 Patent invalid.
In addition to raising these forfeited issues, Systems also raises the issue of
prosecution history estoppel without acknowledging the District Courts ruling as a
matter of law on this issue in Nordocks favor during summary judgment. The
cross-appeal also fails to mention that the facts in Nordocks proposed statement of
fact were deemed admitted on summary judgment because Systems failed to
comply with Civil Local Rule 56. (Rep. Add. 2-5). Accordingly, Systems cross
appeal waives the right to challenge prosecution history estoppel because it fails to
challenge the District Courts summary judgment findings that it violated the local
rules and failed to adequately support its prosecution history estoppel assertion.
Finally, Systems cross appeal challenges the sufficiency of the evidence
regarding infringement of its 6-1/2 wide LHP/LHD levelers. However, Systems
(15)
does not challenge that its 6 and 7 wide levelers infringe the D754 Patent.
Systems also ignores testimony explaining that levelers are made on a welding
fixture so that the middle 6 feet are the same. Accordingly a jury could reasonably
find, as it did, that the 6-1/2 wide leveler is also infringing. In the Seventh Circuit,
the standard of review regarding the sufficiency of the evidence is whether viewing
the evidence in the light most favorable to the non-moving party, there is no legally
sufficient basis for a reasonable jury to find for the nonmoving party. Zimmerman
v. Chi. Bd. of Trade, 360 F.3d 612, 623 (7th Cir. 2004).
III.
A.
ARGUMENT: REPLY TO RESPONSE TO APPEAL
Federal Statute (35 U.S.C. 289)

shall be liable to the owner to the extent of his or her total profit. The statute
states:
289 Additional remedy for infringement of design patent
Whoever during the term of a patent for a design, without
license of the owner,
(1) applies the patented design, or any colorable imitation thereof, to
any article of manufacture for the purpose of sale, or (2) sells or
exposes for sale any article of manufacture to which such design or
colorable imitation has been applied shall be liable to the owner to the
extent of his total profit, but not less than $250, recoverable in any
United States district court having jurisdiction of the parties.
(16)
Nothing in this section shall prevent, lessen, or impeach any

other remedy which an owner of an infringed patent has under the
provisions of this title, but he shall not twice recover the profit made
from the infringement.
35 U.S.C. 289 (emphasis added). (Rep. Add. 1).
The intent of Congress to allow a more expansive recovery for design patent
owners is exhibited in the plain language of the statute, which allows recovery of
total profit from anyone who sells any article of manufacture to which such
design or colorable imitation has been applied. Nike, Inc. v. WalMart Stores,
Inc., 138 F.3d 1437, 1441 (Fed. Cir. 1998); see also Pac. Coast Marine
Windshields Ltd. v. Malibu Boats, LLC, No. 6:12-cv-33-Orl-28DAB, 2014 WL
4185297 (M.D. Fla. Aug. 22, 2014). Apportioning the infringer's total profits
between the patented design and the article bearing the design is not appropriate.
Nike, 138 F.3d at1442. Rather, a patent holder is entitled to the infringers entire
profit from sales of the item with the infringing design. Junker v. HDC Corp., No.
C-07-05094, 2008 WL 3385819 (N.D. Cal. July 28, 2008).
Profits are based on gross revenue after deducting certain allowable
expenses. Nike, 138 F.3d 1447; Henry Hanger & Display Fixture Corp. of
America v. Sel-O-Rak Corp., 270 F.2d 635, 642 (5th Cir. 1959)); Schnadig Corp. v.
Gaines Mfg. Co., 620 F.2d 1166, 1173, 206 USPQ 202, 210 (6th Cir. 1980).
(17)
B.
Systems Consented to 289 Jury Instruction Requiring Gross

Revenue Methodology To Determine Systems Profits
Systems consented to the 289 Jury Instruction, which reads in part as
follows:
aspects of the patent. . . .
preponderance of the evidence.
(A4540-41) (emphasis added).
Systems consented to this jury instruction at trial. (A6084-86). Systems
response brief also does not challenge its consent to the instruction, and it is an
accurate statement of the law as explained above.
C.
The 289 Jury Instruction Requires Systems Profits Be Determined

Based on Systems Gross Revenue for Its Sales of Over 1,450
Infringing LHP/LHD Levelers Products
The 289 Jury Instruction clearly requires that Systems total profits be
determined based on Systems gross revenue for its sale of over 1,450 infringing
LHP/LHD levelers. The instruction contains the following sentence:
(18)
Profit is determined by deducting certain expenses from gross

revenue. Gross revenue is all of Systems receipts from using the
design in the sale of the infringing products.
(A4540) (emphasis added).
Again, Systems response brief does not contest this jury instruction,
nor does it contest that it is an accurate statement of the law.
D.
Expert Reports of Both Parties Use a Gross Revenue Methodology to

Determine that Systems Profits Were Over $630,000
Systems retained Richard Bero as its expert to determine its total profits
under 289 for the LHP/LHD levelers. Nordock retained Dr. Stan Smith as its
expert to determine Systems total profits for these levelers. As previously
established, both experts produced reports that use a gross revenue methodology to
determine Systems total profits for the infringing LHP/LHD levelers.
Quantity of LHP/LHD Levelers Sold
Bero:
1,457
Smith: 1,514
(Nor. Br. 28)

(A6684-85)
(A6363, 6373)
Gross Revenues for LHP/LHD levelers

Bero:
$3,665,812
Smith: $3,978,920
(Nor. Br. 34-35)

(A6595, 6684-85)
(A6363, 6373)
Net Pretax Profit/Average Operating Profit (Nor. Br. 5,9,17 35)

Bero:
$433
(A6552, 6595)
Total Profit for LHP/LHD levelers
Bero:
$630,881
Smith: $912,201
(19)
(Nor. Br. 35-36)

(A6552, 6684-85)
(A6009-10, 6373)
Systems response brief does not contest that the Bero and Smith Expert
Reports included the above determinations, or data for obtaining the above,
particularly Mr. Beros finding that Systems profits on the over 1,450 infringing
LHP/LHD levelers was over $630,000. Thus, the only evidence presented to the
jury on the question of Systems profits using the gross revenue method was the
opinions of these two experts, providing different numbers, but agreeing that the
profits at least equal $630,881.
E.
District Court Decision and Order Relied on Beros Erroneous Cost

Saving Methodology
The District Courts Decision and Order denying Nordocks request
for a new trial clearly relies on Mr. Beros improper cost savings
methodology, rather than the gross profits methodology required by law as
accurately described in the jury instructions. The Decision and Order states
as follows to determine that a jury could have concluded Systems total
profits were $0:
$15 per allegedly infringing dock lever was the appropriate amount of
royalty, and that, based on the 6,000 accused units, total damages
were about $91,650. (Id. at 69.) Alternatively, according to Bero,
Systems profit on the accused products was less than $15 per unit,
so lost profits would have been less than $91,650. (Id)
(20)
The District Courts decision cites to Page 69 of Mr. Beros trial testimony
regarding Systems profits being less than $15/unit. Yet, the only portion of Mr.
Beros trial testimony on Page 69 pertaining to Systems profits reads as follows:
. . . So a royalty is a proper form of damages. The accused units: 6,000
units; royalty rate: $15 a unit; total damages are about $91,650.
The alternative is the profits attributable to that Systems
earned on its lip and hinge plate ornamental design. And the cost
savings that Systems received as a result of using that design are
something again less than $15 per unit. So on that lip and hinge plate
design the profitability attributable that Systems earned this is
defendant's profits was something less than $15 per unit. It's the
same number as the royalty damages. It's actually less than that.
Now again, I understand Nordock's position is that it should get
the entire dock leveler, and to the extent that's the case the number
would be, you know, higher obviously.
Systems response brief does not contest that the Decision and Order
cites to this portion of Beros testimony, or that this testimony demonstrates
the use of cost savings to determine Systems profits, which is a legally
inaccurate statement.
F.
Systems Response Brief Cites No Trial Record Showing Mr. Beros

Testimony and/or Slide Show Presentation Uses a Proper Gross
Revenue Methodology to Determine Systems Profits Under 289
Nordocks appeal abundantly demonstrates that Mr. Beros trial testimony
and slide show presentation use a legally inaccurate cost savings methodology to
drastically and improperly apportion Systems true profits on its sales of infringing
levelers. Nordocks appeal also demonstrates that the 289 Jury Instruction
(21)
required Systems profits be determined based on its gross revenues for its
infringing levelers, as required by law. Moreover, Systems response brief does not
refute Mr. Bero used a cost savings methodology to determine Systems profits.
Systems also does not refute that the 289 Jury Instruction requires a gross
revenue methodology to determine Systems profits. Both are uncontested.
Incredibly, Systems response brief does not contest, that Mr. Beros Expert
Report found Systems unit profit (profit per leveler) for the over 1,450 infringing
LHP/LHD levelers to be at least $433, and up to $714. (A6552, 6593, 6595, 6620,
6624).
Even more incredibly, Systems response brief cites no trial record showing
that Mr. Beros trial testimony and slide show presentation used gross revenue to
determine Systems total profit, and the record plainly shows it did not.
G.
Systems Response Brief Needlessly Discusses and Cites Trial Record

Regarding 284 Lost Profits and Reasonable Royalty Evaluations,
Which Are Not At Issue
Systems response brief attempts to misdirect this Courts attention from the
focus of Nordocks appeal. Although Nordocks appeal is limited to determining

Systems profits under 289 using a proper gross revenue methodology,
Systems needlessly and repeatedly discusses and cites to trial testimony evaluating
lost profits and reasonable royalties under 284. (Syst. Br. 23-32, 46-47).
Systems clearly seeks to distract this Court from the clear fact that Mr. Beros trial
(22)
testimony regarding profits was not based on gross revenues as required by law,
and as the jury was instructed. Tellingly, Systems only mentions gross revenues
twice once when discussing Dr. Smiths testimony, and once when discussing
this Courts decision in Nike v. Wal-Mart. (Syst. Br. 24, 39).
Systems attempts to confuse this Court by trying to hide the fact that Mr.
Bero improperly bootstraps his 289 Systems profits evaluation to the very end
of his 284 reasonable royalty evaluation. (A5526, 6713). Mr. Beros 284
reasonable royalty evaluation is clearly based on Systems asserted cost
savings in adopting Nordocks patented D754 design. (A5514-26, 6705-13).
Yet, asserted cost savings are legally improper for determining Systems profits
under 289. (Nor. Br. 5, 38, 40). Mr. Beros trial testimony regarding Systems
profits is also squarely in contradiction to the legally accurate 289 Jury
instruction, to which Systems consented.
H.
35 U.S.C. 289 and its Jury Instruction Do Not Require the Patented
Design to be the Entire Product or Article of Manufacture
Section 289 does not require a patented design to be the entire or complete
article of manufacture being sold. The statue simply states that whoever, without
license from the owner, applies a patented design to an article of manufacture for
purpose of sale shall be liable to the extent of his or her total profit. Systems does
not argue that 289 requires the patented design to be the entire article of
manufacture - nor could Systems. The statute simply does not require this.
(23)
Furthermore, Systems provides no basis in law for the proposition 289 requires
the patented design to be the entire article of manufacture. Instead, Systems
conveniently asserts that the total profit should be limited to the portion of the
article of manufacture to which the patented design is applied. However, this is
not what the Statute says, or this Courts decisions have held.
Systems contention that its total profit should be limited to the portion of
the article of manufacture to which the patented design applies is nothing more
than an unpermitted apportionment, and conflicts with H.R. Rep. No. 1966 at 1-3
(1886), reprinted in 18 Cong. Rec. 834 (1887) and this Courts decision in Nike v
Wal-Mart. Systems contradicts the following sentence in the 289 Jury
Instruction, which states just the opposite:
Systems total profit means the entire profit on the sale of the article to
which the patented design is applied, or with which it is used and not just
the portion of profit attributable to the design or ornamental aspects of
the patent.
This is an accurate statement of the law, and Systems consented to this
instruction. Accordingly, Systems waived any such contention that the jury should
have been allowed to apportion Systems profits to the LHP/LHD levelers.
(24)
I.
Systems Consented to the Verdict Form with Question No. 1, Which

Identifies Systems LHP/LHD Levelers as the Accused/Infringed
Leveler Products
Systems consented to the special verdict form given to the jury. (A5402-
05). Systems response brief does not assert any objection to the verdict form. The
verdict form clearly states that the infringing products are Systems LHP/LHD
levelers. Question No. 1 asks: Did Systems infringe the 754 Design Patent as to
any of the following products: and then listed the Accused Leveler as LHP
and LHD. (A5402).
Systems contends its profits under 289 should be limited to the frontend
portion of the leveler because the patented D754 design is not applied to the entire
levelers, but only to the frontend portion of the levelers. This contention lacks
merit. The frontend is a required portion of Systems infringing LHP/LHD
levelers. The frontend is welded to the levelers, and is not sold separately from the
levelers. Moreover, even assuming arguendo there was some merit to Systems
contention, Systems waived any such argument when it consented to the 289
Jury Instruction and verdict from. The Statute, jury instruction and verdict form
require that Systems profits be determined based on the gross receipts from the
sale of the infringing product, and that the infringing product is the LHP/LHD
Levelers.
(25)
J.
Systems Contention that 289 Damages Do Not Involve Its Whole

Leveler Because the D754 Patent Does Not Show a Whole Leveler
Lacks Merit
Having sold over 1,450 infringing levelers, Systems is clearly motivated to
limit its damages. Still, Systems contention that its total profits under 289 should
be reduced because the D754 Patent does not show a whole leveler lacks merit.
The following chart provides several cases where a U.S. design patent
covered a portion of an infringers product, and the patent holder was awarded the
total profits under 289 for the entire product.
Case
U.S. Design Patent Covers
Damages Awarded
Record
Upper portion of shoe.

(NOT entire shoe).
Entire shoe.
A5637-41
Victor
Stanley 2
End frame portions of bench.

(NOT entire bench).
Entire bench.
A5643-45
FisherPrice 3
Top portion of bassinet.

(NOT entire bassinet).
John O.
Butler 4
Handle of cleaning device.

(NOT entire cleaning
device).
Nike 1
Untermeyer 5
1
Watch case.
(NOT entire watch).
Entire bassinet.
(Including base).
A5671-78
Entire cleaning device. A5680-83

Entire watch.
A5685-86
Nike, Inc. v. Wal-Mart Stores, Inc., 138 F.3d 1437 (Fed. Cir. 1998).
Victor Stanley, Inc. v. Creative Pipe, Inc., No. MJG-06-2662, 2011 WL 4596043,
2011 U.S. Dist. LEXIS 112846 (D. Md. Sept. 30, 2011).
3
Fisher-Price, Inc. v. Safety 1st, Inc., 279 F. Supp. 2d 530 (D. Del. 2003), revd in
part on other grounds, 109 F. Appx 387 (Fed. Cir. 2004).
John O. Butler Co. v. Block Drug Co., Inc., 620 F. Supp. 771 (N.D. Ill. 1985).
Untermeyer v. Freund, 58 F. 205, 212 (2d Cir. 1893).

(26)
The law is clear: whoever applies the patented design, or any colorable
imitation thereof, to any article of manufacture for the purpose of sale is liable for
infringement. 35 U.S.C. 289; see also Nike 138 F.3d at1439). Systems does not
dispute that it sold its LHP/LHD dock levelers, and the lip and hinge plate is an
integral (i.e., welded) portion of that product/article of manufacture. As
demonstrated by its brochures Systems sold its infringing LHP/LHD levelers as a
complete product, not separate from the lip and hinge plate. (Exhibit 12, A61916205). Moreover, the D754 Patent covers the frontend of the levelers, and the
frontend is prominently shown in manufacturer sales brochures, including those for
Systems LHP/LHD levelers. (A7356-77, 6133-84, 6191-6205). The same analysis
was applied in Nike, a case Systems clearly acknowledges, as it cited the case in its
proposed 289 jury instruction. (A4210-11). Systems proposed verdict form and
the Courts final verdict form provide no support for Systems legal fiction, and
when the form is construed together with the Courts 289 Jury Instruction the
form clearly indicates that the words product and article refer to Systems
entire LHP/LHD levelers. (A4159-64, 5402-05). The District Court committed no
error in this regard.
Systems assertion that 289 does not apply to the whole LHP/LHD leveler
because the D754 Patent does not show the whole leveler in dotted lines lacks
merit. Any such requirement would lead to ridiculous results. For example, had
(27)
Nordock D754 Patent included a drawing figure showing the leveler and the
loading dock bay as in its parent 409 Patent (A6272-73), Systems assertion
would allow Nordock to seek damages for the whole loading dock bay. Instead, the
relevant facts of the situation govern. Here, the undisputed relevant facts are:
Patented D754 design is used with LHP/LHD levelers;

Patented D754 design is welded to LHP/LHD levelers;
LHP/LHD levelers need a frontend to perform intended use;
Patented D754 design is extensively marketed by Nordock and Systems;
Systems made and sold LHP/LHD levelers as a complete unit;
Systems does not sell frontend separately from LHP/LDP levelers;
Systems does not sell frontend of LHP/LHD levelers for any other use;
Jury Instruction states damages are for the infringing product;
Verdict lists the LHP/LHD levelers as the infringing product.
Accordingly, the 289 Jury Instruction and verdict properly and reasonably
limit 289 damages to the infringing LHP/LHD levelers sold by Systems.
K.
Systems Hub Cap and Window Analogies Exaggerate and Distort

Systems Infringement Situation
Systems argues that Nordocks 289 position is like asking for all the
profits on the sale of an automobile should it include a design patent on a hub

cap, or asking for all the profits on a building should it have a window covered
by a design patent. (Sys. Br. 39). Systems analogies lack merit.
Systems analogies exaggerate and distort the situation regarding Systems
infringement, and Nordocks reasonably limited 289 position. First, Nordock
does not assert that Systems liability broadly extends to the profits on constructing
the entire loading bay or an entire building. Though dock levelers are bolted and
(28)
welded to a loading dock (A1236 and 6222), Nordocks position is reasonably

limited to the specific infringing LHP/LHD levelers made and sold by Systems
when it knew Nordock filed for design patent protection on the frontend design of
the leveler. (A5810 and 5813-14).
Second, significant trial evidence confirmed that dock leveler purchasers
consider the look of the frontend of a dock leveler when making purchasing
decisions. (A6133-84, 6191-6205, 6755-57, 6763- 72, 6780-82, 6828, 6807-09,
6814-15, 7026, 7090-91, 7108-09). Yet, Systems exaggerated and inappropriate
analogies also fail for the reason that, unlike dock leveler front ends, most people
do not buy a car or building because of a particular hub cap or window design.
While auto manufacturers frequently display the frontends of their cars on the
covers of brochures to induce customers to buy, they rarely if ever display a hub
cap.
Third, Systems damages expert, Richard Bero, provided a written report
that determined Systems unit profit and total profit for Systems complete
infringing LHP/LHD leveler units. (A1499-1503). Mr. Beros report does not
determine Systems profits for too much (entire loading dock building) or too little
(portion of infringing levelers). Like Goldilocks, his written report determines
Systems profits for just the right product - Systems infringing LHP/LHD levelers.
(29)
L.
Burden of Proof Jury Instruction (Page 39 Instruction) Does Not Negate

289 Jury Instruction
The Design Patent Damages - Burden of Proof Jury Instruction explains
which party has the burden of proving 289 damages. (A4538). This instruction is
found on Page 39 of the jury instructions, and reads in part as follows:
For design patents, Nordock can prove either actual damages,
known as compensatory damages, or it may prove Systems 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 Systems profits on the same sale.
(A4538) (emphasis supplied).
As previously explained in Nordocks initial brief, this burden of proof
instruction permits a blended 284 and 289 award. (Nor. Br. 45-50). That is, the
instruction permits a portion of total damages under 284 and a portion of total
damages under 289, but not both on the same sale. This is consistent with the law
on this issue.
This Burden of Proof (Page 39) instruction does not contradict the law under
35 U.S.C. 289 or contradict the 289 Jury Instruction. Yet, the District Courts
Rule 59 Decision and Order inaccurately concluded, citing the burden of proof
instruction, that the jury could have found Systems total profits for its infringing
sales were zero, despite all of the evidence showing these profits exceeded
$630,000. The District Court concluded that because the Burden of Proof
(30)
instruction stated that Nordock could not recover both royalties and Systems
profits for any given sale, there was no error in the jurys finding of zero profits
from Systems infringing sales, stating as follows:
Nordocks motion is denied because the jury reasonably based
its verdict on the evidence presented. The jury received extensive
form of its own lost profits or a reasonable royalty, or it could recover
Systems profits as a measure of potential recovery with respect the
sale of each unit of an infringing product. (Id. at 39.)
But these are distinct and unrelated issues. The fact that Nordock was legally
entitled to only one type of damage on each given sale did not absolve the jury of
its duty to properly find the amount of Systems total profits for purposes of
determining the amount of 289 damages. Under governing case law, Nordock
would still be entitle to the higher of the two numbers, and the District Court
would use those numbers to determine the proper calculation of damages after the
verdict, as a matter of law. Catalina Lighting, Inc. v. Lamps Plus, Inc., 295 F. 3d
1277 (Fed. Cir. 2002).
M.
Undisputed Facts
A review of the briefs reveals the facts pertaining to a proper determination
of 289 damages are largely undisputed. With the exception of which total
(31)
number applies after the detailed calculation, either $630,881 or $912,201. In

summary, Systems Response Brief does not dispute the following:
Undisputed Facts Heard By Jury
Reference
Dock levelers are articles of manufacture.
Nor. Br. 15, 28-32

(A6321-26)
Dock leveler components are welded together to

operate in unison.
Nor. Br. 14, 30, 33, 44

(A6272-88, 6291-95,
6764)
Design of the D754 Patent is a lip and hinge

plate forming the frontend of a dock leveler.
Nor. Br. 14, 31, 44

(A6321-26)
The header plate of the frontend is welded to the

deck and deck beams of the LHP/LHD leveler.
Nor. Br. 14, 30

(A6291-95)
Systems sold its infringing LHP/LHD dock

levelers as a complete unit.
Nor. Br. 5, 17, 19, 3031, 33, 39, 44-45

(A6191-6205)
Dock leveler must have a frontend with a pivoting Nor. Br. 14, 30, 31, 44
lip to perform its intended purpose of bridging the (A4295,6272-83)
gap between a loading dock and a trailer bed.
Dock levelers are not sold without a frontend.
Nor. Br. 31, 44

(A6597-6600, 5568)
Systems did not sell the frontend of its LHP/LHD

levelers separately from the levelers as a whole.
Nor. Br. 5
(A5568)
The frontend of a dock leveler is not sold for any

other use.
Nor. Br. 30-31
10
The patented design of the D754 Patent is

applied to and/or used with a dock leveler.
Nor. Br. 29-31

(A6321-26)
11
Patented D754 design is extensively marketed by (A6771, 6779-6801,

Nordock, and is displayed in Systems brochures. 6812, 7028-29, 7032,
6133-6184, 6191-6205)
12
Systems sold over 1,450 infringing LHP/LHD

levelers.
(32)
Nor. Br. 1, 28-29

(A6684-85, 6363)
13
Systems gross revenue on sales of the

LHP/LHD levelers was greater than $3,600,000.
Nor. Br. 34-36

(A6595, 6684-85,
6009-10, 6363)
14
Systems had net, pretax profit of at least $433 per

LHP/LHD leveler sold.
Nor. Br. 5, 9, 35
(A6552, 6595)
15
Systems Total Profit on sales of the

LHP/LHD levelers was greater than $600,000.
Nor. Br. 1, 35-37

(A6552, 6684-84,
6009-10, 6373)
16
Nobody testified that Systems profits on its sales

of over 1,450 LHP/LHD levelers were $0.
17
Nor. Br. 38-39

(A36 DE178)
(A39-41 DE220, 224226)
(A39-40 DE221-222)
(A41 DE228)
No gross revenue methodology was provided to Nor. Br. 38-39
establish that Systems profits on sales of over
(A36 DE178)
1,450 LHP/LHD levelers were $0.
(A39-41 DE220, 224226)
(A39-40 DE221-222)
(A41 DE228)
Based on the above undisputed facts and the application of 289 and the
uncontested Jury Instruction accurately summarizing this statute, there is only one
logical and appropriate outcome. This Court must remand the case back to the
District Court for a proper determination of Systems profits based on a gross
revenue methodology.
(33)
IV.
ARGUMENT: RESPONSE TO CROSS-APPEAL
Without the required citations to the trial transcript, Systems cross appeal
mentions a JMOL motion challenging the sufficiency of the evidence regarding the
ornamentality and validity of the D754 Patent. (Syst. Br. at 48-49). Similarly,
without any citation to the trial transcript, Systems cross- appeal asserts it raised a
JMOL motion challenging the sufficiency of the evidence regarding the
infringement of its 6-1/2 LHP/LHD levelers. (Syst. Br. at 61). These argument are
procedurally defective and substantively inaccurate.
A.
Systems Ornamentality Arguments Are Legally Inaccurate

Systems cross-appeal fails to establish that a legally sufficient Rule 50
motion was made. A review of the JMOL motions shows they are legally
inaccurate, and the District Court properly denied them. (A7290-97).
Systems JMOL motion challenging the validity of the D754 Patent based
on lack of ornamentality was legally inaccurate, and properly denied by the District
Court. Incredibly, and without citation to any authority, the motion incorrectly
asserts that the law does not consider the overall appearance of a design when
determining validity. Systems stated:
There has been testimony that you shouldn't -- that it's the overall appearance
that must be considered. That is, in fact, an incorrect standard. That may
be the standard for infringement. It's, however, not the standard for
functionality.
(A7292) (Emphasis added). Systems also went on to argue;
(34)
As to functionality, we maintain that there's an absence of any evidence that

anything is ornamental. There has been testimony that you shouldn't -- that
it's the overall appearance that must be considered. That is, in fact, an
incorrect standard. That may be the standard for infringement. It's,
however, not the standard for functionality. Indeed, the standard is the law
requires that you remove the functional components from the claim, from
the drawings. If that is an element by element removal, so be it. If you
remove each of the admittedly functional elements of the drawing, you end
up with a blank sheet of paper. And for that reason, we move to dismiss the
claim. Move to strike the patent as invalid for at least that reason.
Yet, this Court has repeatedly held that when determining if a design is
ornamental, the overall appearance should be considered. E.g., High Point
Design LLC v. Buyers Direct, Inc., 730 F.3d 1301, 1315 (Fed. Cir. 2013) (When
performing this [ornamental-dictated by function] assessment, a court should view
the claimed design "in its entirety, for the ultimate question is not the functional or
decorative aspect of each separate feature, but the overall appearance of the
article....) (emphasis added); Berry Sterling Corp. v. Pescor Plastics, Inc., 122 F.3d
1452, 1455-56 (Fed. Cir. 1997); L.A. Gear Inc. v. Thom McAn Shoe Co., 988 F.2d
1117, 1123 (Fed. Cir. 1993).
Accordingly, the District Court correctly and properly denied Systems
JMOL motion:
. . . The functionality argument. I think there's enough here to show that this
is not dictated by function. That is, the overall design is not dictated by
function. At least a reasonable fact finder could draw that inference from the
record.
(35)
Systems decision to continue pressing its JMOL motion in this cross appeal
is particularly troubling given this Courts recent High Point Design decision.
Systems JMOL motion is inaccurate and actually requests the District Court to
apply incorrect law.
B.
Systems Did Not Challenge Validity in a Rule 50 or Rule 59 Motion,

And Thus Forfeited the Right to Challenge Validity on Cross-Appeal
Systems cross-appeal challenges the validity of the D754 Patent for lack of
ornamentation, arguing the District Court should have granted its JMOL motion
based on sufficiency of the evidence. (Syst. Br. at 48-61). Yet, Systems did not
preserve this issue for appeal. Systems did not file either a Rule 50 or a Rule 59
motion raising this issue. As such, Systems forfeited the validity issue on appeal.
The Supreme Court has held that a failure to preserve a sufficiency of the evidence
issue via an appropriate Rule 50 or Rule 59 motion forfeits the right to raise that
issue on appeal. Unitherm Food Syst., Inc. v. Swift-Eckrich, Inc, 546 U.S. 394, 404
(2006); see also Consumer Products Research v Jensen, 572 F.3d 436, 437-38 (7th
Cir. 2009). Failure to submit such a post-verdict motion renders the appellate court
powerless to review the sufficiency of the evidence after trial. Ortiz v. Jordan,
562 U.S. 180, 188 (2011); see also Unitherm, 546 U.S. at 404; Chemetall GMBH v.
ZR Energy, Inc., 320 F.3d 714, 718 (7th Cir. 2003). Although an exception to this
rule can occur when an issue is a pure issue of law, proving a design patent lacks
(36)
ornamentation involves a wide range of facts. See High Point Design, 730 F.3d at
1315.
As Systems did not file a Rule 50 or 59 motion contesting the sufficiency of
the evidence as to the validity of the D754 Patent, Systems forfeited any right to
challenge the validity based on lack of ornamentation on cross-appeal. Thus, this
Court is unable to review Systems cross-appeal challenging validity based on lack
of ornamentation, and it should be rejected in its entirety.
In addition, Systems JMOL motion challenging ornamentality is limited. In
spite of the limited nature of its JMOL motion, Systems cross appeal goes on to
assert the D754 Patent is invalid based on a wide variety of considerations. The
cross-appeal asserts the following bases for invalidating the D754 Patent:
It is purely functional.
Prosecution history shapes its scope.
It is purely functional via prosecution history estoppel.
Advertising touts its functionality.
Nordock witnesses admit the design is functional.
Alternate designs do not eliminate functionality.
Overwhelming evidence proves it is functional.
(Sys. Br. at 49-51)

(Sys. Br. at 52)
(Sys. Br. 53-56)
(Sys. Br. at 56)
(Sys. Br. at 57-58)
(Sys. Br. at 59-61)
(Sys. Br. at 61)
Systems cross appeal uses its limited JMOL motion challenging the District
Courts correct and proper use of overall appearance as a spring board to
asserting a wide variety of issued not raised in its JMOL motion. By failing to
properly preserve and properly develop the record for raising these issues, these
(37)
issues are legally deficient and should be disregarded in their entirety as they are
forfeited.
C.
Systems Cross-Appeal Is Procedurally Inadequate

Systems cross appeal does not cite any portion of the trial transcript
delineating the facts and law regarding its asserted JMOL motions about the
ornamentality of the D754 Patent and infringement of the 6-1/2 LHP/LHD
levelers. As Systems cross-appeal relies on its JMOL motions as its basis, and it
fails to cite any facts or law supporting its contentions, Systems cross-appeal
should be rejected in its entirety for wholly failing to specify the facts and law
supporting its asserted claims on appeal.
D.
Systems Cross-Appeal Asserts Invalidity Based on Prosecution History

Estoppel, But Fails to Mention That This Assertion Was Denied On
Summary Judgment, or Argue that the District Courts Summary
Judgment Order Was Incorrect
As noted in the Statement of Additional Facts, Systems and Nordock filed
cross-motions for summary judgment regarding the validity of the D754 Patent.
These motions raised the issue of prosecution history estoppel. Systems asserted
that prosecution history estoppel invalidated the D754 Patent. Nordock
maintained it did not. The District Court granted Nordocks motion on this issue.
(38)
1.
Systems Prosecution History Estoppel Assertion on Cross-Appeal

Restates its Same Assertion to the District Court
In its cross appeal, Systems prosecution history estoppel argument restates

the same argument Systems made to the District Court on summary judgment. In
fact, a side-by-side comparison reveals that Systems cross appeal on validity is
little more than a regurgitation of its summary judgment argument. (A2039-56).
2.
Nordocks Proposed Statements of Fact Were Found Admitted

Due to Systems Failure to Follow District Court Local Rules
Nordocks motion for summary judgment and its response to Systems

motion for summary judgment included various proposed statements of fact.
(A3365-3407). Contrary to the District Courts Civil Local Rules (Rep. Add. 2-5),
Systems failed to address any of Nordocks proposed statements of fact, including
those relevant to the issue of prosecution history estoppel. (A3920). Accordingly,
the District Court deemed Nordocks proposed statements of fact admitted for the
purpose of summary judgment. (A3920).
3.
District Court Found Systems Failed to Support its Prosecution

History Estoppel Assertion
The District Court found that Systems failed to support it prosecution history
estoppel assertion, and granted summary judgment in favor of Nordock. The
District Court stated as follows:
The facts regarding the prosecution history are not disputed. However, the
parties interpretation of the legal import of those facts differ. Systems
argument is unacceptable because, if adopted, it would make it difficult for
(39)
any patentee who has sought or obtained a utility patent to subsequently

obtain a valid design patent. Systems has not cited any case law to support
its position that arguments made in support of function foreclose a design
patent. Therefore, Nordock is granted summary judgment on the issue of
prosecution estoppel.
4.
Systems Improperly Raises Prosecution History Estoppel Without

Challenging the District Courts Summary Judgment Order
Systems cross appeal raises the issue of prosecution history estoppel

without discussing the District Courts summary judgment ruling in favor of
Nordock on this issue. By ignoring its failure to comply with Civil Local Rule 56
and the District Courts summary judgment decision on prosecution history
estoppel (see above Pages 2-7), Systems fails to properly develop appropriate
arguments regarding this issue, and has thus waived the right to contest prosecution
history estoppel on appeal. This Circuit has repeatedly held that undeveloped
arguments in a partys briefing are considered waived. E.g., CardSoft v. Verifone,
Inc., 769 F.3d 1114, 1119 (Fed. Cir. 2014). An appellant ordinarily waives any
arguments that are not developed on appeal. SmithKline Beecham Corp. v. Apotex
Corp., 439 F.3d 1312, 132021 (Fed.Cir.2006).
5.
U.S. Law Permits Design Patents to be Continuations or

Divisionals of Utility Patents, Even If Utility Patent Abandoned
Nordocks summary judgment motion and opposition explain that a design

patent can be based on a utility patent application. (A1063, 3285-88). A single
(40)
product can obtain both utility patent and design patent protection. (A3392, 1606,
1659-61, 2613-17, 2640-43, 2649, 2656, 2671). A design patent can obtain the
priority date of its parent utility patent applications filing date. (A3392, 1604-66,
2609-10). A design patent can even be a continuation or divisional of a lapsed
utility patent application, and assert priority on the filing date of the lapsed utility
patent application. (A3393, 2700-30). In addition, Claims 36-41 of the 279 and
941 applications do not claim the visual appearance claimed by and shown in
Figures 1-7 of the D754 Patent. (A1567-75).
E.
Cross Appeal Blatantly Ignores and Mischaracterizes Witness

Testimony During First Three Days of Trial
The following witnesses presented extensive testimony and evidence
establishing the validity of the D754 Patent:
Denis Gleason, Nordock president, D754 inventor

(A6328-30, 6753)
Shawn Ward, Nordock vice president of sales & marketing
(A7086)
Steven Visser, Purdue University, Prof. of Industrial Design (A6956-61)
Stan Fluit, Nordock Distributor
(A7016-17)
James Flatley, Nordock Distributor
(A7057-59)
Systems cross appeal fails to consider and blatantly ignores much of the
actual trial testimony of Nordocks witnesses. When Nordock witness testimony is
mentioned, the cross appeal grossly mischaracterizes the testimony without citation
to the record. Examples of the cross-appeals oversights and mischaracterizations
are as follows:
(41)
Brief
Mischaracterization
Page
Substantial evidence was presented
49
during trial that nothing claimed by
the 754 Design Patent is ornamental,
and indeed every individual feature
was purely functional as well as the
design as a whole
Actual Testimony
D754 Design is Ornamental.
(A6938, 6913, 6990-92, 7006)
51
As was demonstrated by
D754 Design not purely
uncontroverted evidence at trial, those functional. (A6809-12, 6902,
two elements and are purely
6938, 6990-92, 6969)
functional, which leaves no
protectable content in the design.
56
In fact, Nordock does not apparently

ever refer to the ornamental features
of its lug hinge design anywhere
except in this litigation.
From the start, Nordock intended

its D754 Design to be distinctive
and ornamental.(A6807-08, 6828,
7090-92, 7108-09, 6766- 72,
6133-84, 7358-65, 6191-05,
6763- 66, 6814-15, 6780-82,
7026, 5953-54, 6266-70)
57
Practically every witness who

provided testimony, including
Nordocks own inventor, stated that
the lug hinge and header plate design
is driven purely by function and cost.
Design choices for D754 Design

not driven by function. (A680912, 6902, 6938, 6990-92, 6969)
57
Header stating: Nordocks Own

Witnesses Admit the Lug
Hinge/Header Plate Design Is
Functional
Nordock witnesses did not admit

the D754 Design lacks
ornamentation. (A6809-12, 6902,
6938, 6990-92, 6969)
58
Mr. Gleason was unable to identify

even a single aspect of the 754
Design Patent that was ornamental.
Gleason stated components and

overall appearance were
ornamental. (A6902, 6910, 6913,
6938, 4287, 4293, 4295-96)
58
Accordingly, all the witnesses

admitted that the lug hinge and
header plate design, individually and
collectively, is limited to purely
functional elements driven by
performance, not ornamentation.
Nordock witnesses did not admit

D754 Design lacks
ornamentation. (A6809-12, 6902,
6938, 6990-92, 6969)
(42)
With respect to Item 2, even the statement is factually inaccurate. The D754
design is formed by multiple components: a header plate, header lugs, a lip plate,
lip lugs and a pivot rod. With respect to item 5, this section of Systems cross
appeal discusses Systems experts testimony, but he is not a Nordocks witness.
This Court has repeatedly stated that parties on appeals are required to cite to
the record, and an attorneys recollection of what he thought a witness said is
improper and insufficient. Federal Rule of Appellate Procedure 28(a)(6) requires
an appeal or cross appeal brief to provide appropriate references to the record.
Statements must be properly cited by trial transcripts. Counsels failure to refer to
the record forces the opposing party to do the work incumbent upon counsel. Des
Vignes v. Dept of Transp., Fed. Aviation Admin., 791 F.2d 142 (Fed. Cir. 1986). If
the petitioner wishes to rely on any part of the record of the hearing he is required
to provide it to the court under Federal Rule of Appellate Procedure 10(b).
Gonzales v. Def. Logistics Agency, 772 F.2d 887, 891 (Fed. Cir. 1985). Failure to
provide the record would justify a decision by the court to refuse to consider the
petitioners argument. Id.
In addition, Federal Rule of Appellate Procedure 10(b) requires Systems as
the cross appellant challenging the sufficiency of the evidence to include in the
record all evidence relevant to that finding or conclusion. The relevant record on
validity was obtained by Nordock after Systems filed its cross-appeal raising the
(43)
validity issue. Still, apparently because of Systems failure to comply with Rule 10,
its cross-appeal fails to cite the appropriate trial record, and even grossly
mischaracterizes testimony without citation. Where an appellant or cross-appellant
raises issues that are factually dependent yet fails to provide specific reference to
the pertinent section of the record, the argument fails. Waller v. Department of the
Army, 178 F.3d 1307 (Fed. Cir. 1998).
Given its failure to cite to the trial record and repeated misleading statements
regarding Nordocks witnesses, Systems cross appeal asserting the invalidity of
the D754 Patent is legally deficient and should be rejected in its entirety, or at
least those statements in its cross appeal unsupported by citations to the trial
record.
F.
Substantial Evidence of Ornamentality Was Presented at Trial

Substantial evidence demonstrating the ornamentality of the D754 Patent
was presented at trial. Systems contention otherwise is not supported by the

record.
1.
Nordock Intended its D754 Design to Be Distinctive and

Ornamental
Mr. Gleason testified that he intended the D754 design to have a distinctive
ornamental appearance. Dock leveler manufacturers care about the appearance of
their products, particularly the frontend. (A6767, 7090-91, 7108-09). One hundred
percent of manufactures display the levelers in the up position showing the
(44)
frontend both in their brochures and on their websites, (A6766-72, A6133-84),

including Nordock and Systems (A7358-65, 6191-6205, 6763-66, 6814-15). The
frontend is also displayed in product demos to customers. (A6780-82, 7026).
When Mr. Gleason founded Nordock, he had a clean slate to design the
frontend of the Nordock leveler. (A6754-57, 6935-36). He was not constricted by a
larger companys investment in building a leveler a certain way. You can tell
different dock leveler manufactures apart just by looking at their levelers, and Mr.
Gleason wanted to differentiate Nordocks levelers from existing levelers by
developing a distinctive and rugged looking design. (A6755-57, 6807-09). The
cover pages of Nordocks brochures show the frontend design, and a picture is
worth a thousand (1,000) words. (A6782, 6828-29, 7092).
Nordock does not discuss ornamentality in the text of its brochures because
the text emphasizes strength and durability. (A6829). Dock leveler manufactures
pay attention to ornamentality, but do not typically discuss this in text as
consumers may believe this diminishes or detracts from the strength and durability
of their products. (A6781-82, 6828-30, 7092 and 7100). Still, the Pentalift
brochure advertises superior building aesthetics. (A6142 and 6788).
On cross-examination, Systems technical expert, Mr. Brookman was shown
Figures 10A-G of Nordocks 279 Application filed December 23, 2002. At first,
he did not agree that Figures 10A-G were design patent drawings. He was then
(45)
shown his deposition transcript when he said the dotted lining in Figure 10A-G
does appear to be more in line with what one would see with a design patent.
(A5953-A5954, 6266-70). Thus, Nordock intended to claim the ornamental
appearance of its frontend design at least as early as December 23, 2002.
2.
Alternate Designs
Mr. Gleason provided extensive testimony at trial demonstrating the wide

range of alternate frontend styles and ornamental designs that are available
commercially. (A6769-6807). Various manufacturer brochures were discussed
showing the wide range of commercially available frontend designs. (Exhibit 5,
A6133-84). Demonstrative exhibits showing enlarged views of several of these
commercially available designs were displayed. (Exhibits 6-11, A6185-90).
Mr. Gleason stated that the manufacturer, Kelley, makes an aFX leveler with
an open lug frontend design, as well as a leveler with a standard piano hinge
design. (Exhibit 6, A6185, 6773- 85 and 6791-92). Another manufacturer,
Pentalift, makes its models HU and MU with gusseted frontend piano hinge
designs. (Exhibit 7, A6186, 6787-90). The gussets increase strength of the hinge.
(A6789). Likewise, Rite Hites MQ-3000 design is completely different look
from a standard hinge design. (Exhibit 8, A6187, 6793-A6794). Its RHH 5000,
RHM, RH Jumbo and RH Air designs also have a completely different look.
(Exhibits 9 and 10, A6188-89 and 6794-6800). The many different looks result
from different parts and differently shaped parts. (A6797-A6798). Systems
(46)
continues to make PRD/H and DH models with a piano style and gusseted piano
style frontend designs. (Exhibit 11, A6190, 6801-03).
Additional evidence of alternate designs was presented via Exhibit 20,
showing copies of the 53 patents listed on the cover page of the D754 Patent,
which was discussed and entered into evidence. (A6822, 6941-42, 6971-72, 8144).
Mr. Ward also testified that based on his experience in the industry, there are many
different ways to design and build the frontend. (A7095).
When there are several alternative ways to achieve the utilitarian purpose of
a patented design, the design is not primarily functional or dictated by function.
L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F. 2d 1117, 1123 (Fed. Cir. 1993);
Hupp v. Siroflex of Am., Inc., 122 F.3d 1456, 1460 (Fed. Cir. 1997). Systems
technical expert, Adam Brookman testified on cross-examination that he admitted
that the section of his book discussing design patents includes the following
statements:
In determining whether a design is primarily functional or primarily
ornamental, the claim design is viewed in its entirety.
This is because the ultimate question is not the functional or decorative
aspect of each separate feature but the overall appearance of the article.
When several ways of achieving the function of an article of manufacture
are possible, the design of the article is more likely to serve a primarily
ornamental purpose.
(A5962-63 and Exhibit 63) (emphasis added).
(47)
Systems cross-appeal reference to PHG Technologies v. St John Companies

469 F.3d 1361 (Fed. Cir. 2006) is misguided. This case involved the arrangement
of standard medical labels on a single label sheet, and hypothetical alternatives that
were not commercially viable. However, the case at hand involves a multicomponent frontend design, and a variety of commercially sold alternatives, many
of which have been sold for years. (A6802-05). Systems sold dock levelers with a
piano hinge for about 40 years before adopting Nordocks D754 design. (A5809,
6775, 6804, 6938).
3.
Design Options Selection, Size, Shape and Arrangement of

Various Component Parts Not Dictated by Function
Mr. Gleason testified that there are many different ways of doing the same
thing. (A6807). Professor Visser testified that the configuration and arrangement of
components can vary. (6971) They also testified that the following viable options
were available when designing the frontend of a dock leveler:
Header plate can be eliminated.

Header plate can be contoured.
Header plate can be split into two sections.
Header-to-lip ratio can be different.
Lip can have grooves in it.
Header lug-to-lip lug ratio can be different.
Lugs can be eliminated.
Lugs can be spaced or shaped differently.
Lugs can be thinner or thicker.
Lugs do not have to align with deck beams.
Number of lugs can be different.
(48)
(A4304,6902,6942,6969)
(A6942 and 6969)
(A6942 and 6969)
(A6942)
(A6942)
(A6943)
(A6969)
(A6809-12, 6942)
(A6943)
(A6943)
(A6943)
Pivot rod can be split to give a different look.

Pivot rod can have different diameter.
Pivot rod can be shielded.
(A6969-70)
(A6970)
(6970-72)
On cross-examination, Systems expert agreed there were a variety of design

options, and there are different ways to design a dock leveler. (A5954-A5955). He
agreed there does not have to be a one-to-one ratio between the header lugs and the
deck beams, there can be two lugs per deck beam, the lugs can have a duckbilled
shape, and the lip can be bent. (A5955-A5957).
4.
Overall Appearance Is Not Dictated By Function
Extensive testimony was presented that the overall appearance of the D754
design is ornamental and not dictated by function. Mr. Gleason testified that the
overall configuration and appearance of the D754 hinge design is ornamental
(A6938), and he understood that the design patent pertains to the drawings and
overall appearance of the design. (A6885,6895-98, 6918). He also testified that the
lug-lip assembly and the lug-header assembly are ornamental and the hinge pin has
ornamentality, because it is round and ties all the lugs together across the full width
of the leveler. (A6910, 6913). When Systems asserted that all the components have
a function (Sys. Add. 1), Professor Visser explained how the various ornamental
features of the D754 design conveyed an angular aesthetic or rugged
efficiency. (A6986-87 and 6990-92). Professor Visser also provided the following
testimony:
(49)
Based on his experience and review of the facts in this case, he believes
the design patent is valid. (A6964)
After reading the claim construction for this case, his viewpoints on
validity or infringement did not change. (A7015)
Brookmans validity analysis by breaking the design into four components
is incorrect. (A7267)
You do not need to have surface ornamentation to get a design patent. You
can receive a design patent on the ornamental configuration. (A6963)
Overall appearance and configuration of D754 design is ornamental.
(A7006)
Design patents are only issued if a product serves a function. (A6962-63)
Design patents cover functional products. You cannot get a design patent
on a sculpture because it is not a useful product of industry. (A6962)
D754 Patent is valid and not barred by functionality. While there are
functional requirements, even after you factor those out theres an overall
ornamental configuration that is valid and legitimate. (A6980)
Mr. Brookman agreed that design patents are presumed valid, and that this
presumption includes the presumption of ornamentation and non-functionality.
(A5958).
5.
Marketing Literature Is Not Dispositive
Marketing literature has nothing to do with prosecution history estoppel.

Given its failure to file a relevant Rule 50 or 59 motion, Systems forfeited this
issue, but even if it were not forfeited, it fails on the merits.
Contrary to Systems assertion, Nordocks marketing literature does not
invalidate the D754 Patent. Nordocks D754 design is not the only or best way to
make the frontend of a leveler. If you were to strip away the quality of the
(50)
materials and welding, the dock leveler would not be the strongest on the market.
(A7100). Anyone can make a stronger leveler. (A6791). Systems witnesses did
not assert that the D754 design was the best or strongest way to make a frontend.
In fact, Systems continues to sell its piano hinge style leveler (Exhibit 12, A61916205), and Pentalift advertises its piano hinge style frontend provides both:
Self cleaning, and
Maximum support
(6142-44 and 6788-89)
Nordocks brochure stating Exclusive lip, lug, and header plate design
achieves maximum strength speaks to the quality of craftsmanship, and the
durability and reliability of the product, as well as the good welding and quality
materials that go into the product (A7028-30). The statement is also intended to
convey the exclusive look or appearance of Nordocks frontend design, particularly
as no other manufacture has this look, except Systems. (A7028-29). If the D754
design was the best design, Mr. Gleason does not know why any other
manufacturers did not come up with it, and the fact that others have not since
adopted the design would indicate that the phrase pertains more to quality welding
and materials. (A7028-29). Brookman admitted that when you use heavier
materials and do a better job welding, something is going to be stronger. (A5966).
Similarly, Nordocks brochure statement that its frontend is self cleaning does
not have to do with the frontend appearance. (A6923). As noted above, Pentalift
(51)
advertises that its piano hinge style frontend leveler as self cleaning. (A6142-44).
In fact, Systems cross appeal does not even attempt to argue that the design of the
754 Patent is the strongest and most durable design, or that it is the only selfcleaning design. Mr. Brookman states it is hard to say empirically whether the
design claimed in the Design Patent truly represents the best design in view of
the many competing dock levelers each touting its own characteristics. (A1998).
Extensive testimony was given that there is no best way to make a leveler or
its frontend. (A6782, 6807). It depends on what the customer wants. (A6782).
Everybody could make a stronger one. (A6782, A6791). Strength is determined by
other factors and the design in and of itself does not determine strength. (A694647, 6953-55). Dock leveler manufacturers frequently advertise their levelers as
being strong. (A7025-26).
On cross examination, Brookman admitted the literature by his client San
Jamar touts the benefit of the hook on the cutting board. (A5947-51, Exhibit 67,
A8129-39). The lower right corner of the literature lists U.S. Design Patent Nos.
D512,281 and D507,463. (A5948, Exhibit 67, A8129, Exhibits 64 and 65, A811621 and 8122-28). As shown in these patents and the marketing literature, the
cutting board is formed by a single component part, and that part has rectangular
shape with a single groove or notch formed in one side. This marketing literature
states as follows:
(52)
- Patented hook design promotes sanitary transport of boards

- Simply hang to dry and store; avoid unsanitary stacking
Brookman admitted the groove on the cutting board has a function, and the cutting
board itself has a function. Notwithstanding the relative simplicity of the cutting
boards, Mr. Brookman testified that these marketing statements do not render his
design patents invalid. (A5951).
6.
Systems Asserted Cost Savings
Systems asserted cost savings have nothing to do with prosecution history

estoppel. As Systems forfeited this issue by not raising it in a Rule 50 or 59
motion, it is also without merit.
Still, Systems asserted cost savings of about $5 were miniscule relative to
the $2,516 average cost of a dock leveler. (A6595 and 6707-08). Thus, the jury did
not have to believe the D754 design was dictated by Systems asserted cost
savings. In addition, given the wide variety of dock leveler frontend designs in the
industry (A6133-84), the jury did not have to believe that Systems asserted cost
savings applied to the industry as a whole. In fact, Systems presented no evidence
that its cost savings applied to the industry as a whole, and its president testified
that the asserted cost savings were specific to Systems. (A3380). Professor Visser
was aware of Systems asserted cost savings (7011), and nonetheless concluded the
D754 Patent was valid. (A6980).
(53)
7.
Systems Nonsensical Cross Examination of Nordock Witnesses
Systems counsel offered Exhibit 1040, a knife, into evidence during his
cross examination of Mr. Gleason. The knife was used to confuse the jury into
questioning why the D754 design did not have surface ornamentation like the
knife. (A6898 and Exhibit 1040, A8142). This nonsensical argument was
addressed by Professor Vissers statement that a product can receive a design
patent on the ornamental configuration, and the product does not need to have
surface ornamentation. (A6963).
8.
Professor Visser Provided Credible Testimony
Professor Visser provided credible evidence of the validity of the D754

Patent. As demonstrated in his testimony and CV, he had dedicated his career to
teaching industrial design and developing product designs. (A6379-6408, 695761). He explained that ornamentality applies to the overall configuration of a
product. (A4412). He also demonstrated the ornamental features of the D754
design. (A4411-12). Attorney Brookmans product design experience and
testimony asserting invalidity was less credible. (A5940-43, 5950-51, 5969-70).
G.
Systems Cross-Appeal Challenges Jurys Finding That Systems 6-1/2

LHP/LHD Levelers Infringe the D754 Patent
The jury found that Systems 6, 6-1/2 and 7 foot wide LHP/LHD levelers
infringe the D754 Patent. (A5402). Systems cross appeal contests the jurys
finding regarding the 6-1/2 foot wide levelers. Like Systems Rule 59 motion, the
(54)
cross appeal does not contest the jury finding that the 6 and 7 foot wide levelers are
infringing. (A5604-08). The cross appeal does not specifically contest the District
Courts Decision and Order (A1-19) denying its Rule 59 motion.
Substantial evidence was presented at trial supporting the jurys finding that
Systems 6-1/2 foot wide LHP/LHD levelers infringe the D754 Patent. The jury
heard testimony that the middle six foot portion of the 6, 6 and 7 wide levelers
is the same. (A6825-28). This is because each is made on the same welding
fixtures. The jury heard uncontested testimony that dock leveler manufacturers
make their levelers on welding fixtures. (A6826). Systems offered no evidence to
the contrary. One set of fixtures is used for the entire range of dock leveler sizes
and capacities for a particular model. (6826). Thus, the middle 6 foot portion of a
7 foot wide leveler is identical to the 6 foot wide leveler. (A6827). The jury
reasonably inferred from the use of the same welding fixtures that there is no
significant difference between the 6, 6 or 7 wide levelers.
In addition, while Nordock and other manufacturers had brochures showing
their 6 and 7 wide levelers (Trial Exhibits 1-11), none of them show a 6 wide
leveler. Similarly, while Systems brochures showed its 6 and 7 wide LHP/LHD
levelers, these brochures do not show its 6 wide levelers. (Trial Exhibits 12-14).
The jury could reasonably infer from the omission of the 6 wide leveler from
(55)
Nordocks, Systems and third-party brochures that the 6 wide levers are
substantially similar to the 6and 7 wide levelers.
Nordocks D754 Patent shows its 6 wide leveler. Yet, the jury saw views
of both Systems 6 and 7 wide LHP/LHD levelers, and found them both
infringing. (Trial Exhibits 12, 13, 31-36, 85, 1004 and 1009). These pictures
clearly show the similarity in the overall appearance of the 6 and 7 wide
LHP/LHD levelers. Thus, the jury found the 7 wide LHP/LHD leveler infringing
notwithstanding photographs showing the addition of a 6 section to each side of
the identical middle 6 portion. Given this, it was reasonable for the jury to infer
that the 6 levelers are also infringing notwithstanding the addition of a 3
section to each side of the middle 6 portion, or the subtraction of a 3 section from
each side of the 7 wide leveler. Systems presented absolutely no evidence to rebut
this reasonable inference. While Systems had ample opportunity during the trial to
present evidence supporting its now untimely assertion that its 6 wide
LHP/LHD leveler is somehow significantly different than its 6 and 7 wide
LHP/LHD levelers, or that Systems used a different welding fixture for its 6
wide LHP/LHD leveler, it did not do so. The logical and reasonable inference
from this lack of evidence is that overall appearance of the 6 wide LHP/LHD
leveler is substantially similar to the 6 or 7 wide LHP/LHD levelers.
(56)
According to Federal Circuit case law, juries may reasonably infer

infringement based on the evidence submitted even when there is no direct
evidence presented for the specific infringing article. Liquid Dynamics Corp. v.
Vaughan Co., 449 F.3d 1209, 1219-20 (Fed. Cir. 2006)). In that case, Vaughan
argued that because there was incomplete information for 11 of the 47 tanks, there
was not substantial evidence to support a finding of infringement. However, Liquid
Dynamics argued that the combination of testimony about standard procedure and
the engineering manual are sufficient evidence. Id. at 1219. The court stated:
While direct evidence may have made LD's case of infringement stronger, it
does not render the case presented to the jury unreasonable as a matter of
law. Indeed, the jury could have reasonably inferred from the evidence
submitted that each of the tanks infringed the claims. Thus, we hold that
there is substantial evidence that all 47 accused tanks met the structural
limitations of the '414 patent.
Id. at 1220. The court also noted that [a] patentee may prove direct infringement
or inducement of infringement by either direct or circumstantial evidence and
[t]here is no requirement that direct evidence be introduced, nor is a jury's
preference for circumstantial evidence over direct evidence unreasonable per se.
Id. at 1219.
(57)
CONCLUSION AND STATEMENT OF RELIEF SOUGHT

For the forgoing reasons, the District Courts denial of Nordocks Rule 59
motion for a new trial to properly determine Systems profits on its sales of over
1,450 infringing LHP/LHD leveler should be reversed, and Systems cross-appeal
should be dismissed in its entirety.
Dated this 15th day of June, 2015.
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)
(58)
ADDENDUM
"''"'"'"'""9
USca.rf...M,,..,-
r,pQ
Page 117
290
TITLE 35---PATENTS
serted "or importing any patented article into the

United States," after "under them,".
Subsec. (b)(l)(C). Pub. L. 103--465, 533(b)(5)(B)(i), substituted "use, offer for sale, or sale" for "use, or sale".
~ubsec. (b)(4)(A). Pub. L. 103--465, 533(b)(5)(B)(ii), substituted "sold, offered for sale, or" for "sold or" in introductory provisions.
Sub.sec. (b)(4)(A)(ii). Pub. L. 103--465, 533(b)(5)(B)(iii),
substituted "use, offer for sale, or sale" for "use, or
sale".
Su~sec. (b)(4)(C). Pub. L. 103--465, 533(b)(5)(B)(iv), (v),
substituted "have been offered for sale or sold" for
"have been sold" and "United States, or imported by
the person into the United States, before" for "United
States before".
1988-Pub. L. 100--418 inserted "and other remedies" in
section catchline, designated existing provisions as
subsec. (a), and added subsec. (b).
EFFECTIVE DATE OF 2011 AMENDMENT
Amendment by section 3(g)(2) of Pub. L. 112-29 effective upon the expiration of the 18-month period beginning on Sept. 16, 2011, and applicable to certain applications for patent and any patents issuing thereon, see
section 3(n) of Pub. L. 112-29, set out as an Effective
Date of 2011 Amendment; Savings Provisions note
under section 100 of this title.
Pub. L. 112-29, 16(a)(2), Sept. 16, 2011, 125 Stat. 328,
provided that: "The amendment made by this subsection [amending this section] shall apply to any case
that is pending on, or commenced on or after, the date
of the enactment of this Act [Sept. 16, 2011]."
Amendment by section 20(i){4), (j) of Pub. L. 112-29 effective upon the expiration of the 1-year period beginning on Sept. 16, 2011, and applicable to proceedings
commenced on or after that effective date, see section
20(!) of Pub. L. 112-29, set out as a note under section
2 of this title.
Amendment by Pub. L. 103--465 effective on date that
is one year after date on which the WTO Agreement enters into force with respect to the United States [Jan.
l, 1995], with provisions relating to earliest filed patent
application, see section 534(a), (b)(3) of Pub. L. 103--465,
set out as a note under section 154 of this title.
Amendment by Pub. L. 100--418 effective 6 months
after Aug. 23, 1988, and, subject to enumerated exceptions, applicable only with respect to products made or
imported after such effective date, see section 9006 of
Pub. L. 100--418, set out as a note under section 271 of
this title.
288. Action for infringement of a patent con-
taining an invalid claim
Whenever, without deceptive intention, a

claim of a patent is invalid, an action may be
maintained for the infringement of a claim of
the patent which may be valid. The patentee
shall recover no costs unless a disclaimer of the
invalid claim has been entered at the Patent and
Trademark Office before the commencement of
the suit.
(July 19, 1952, ch. 950, 66 Stat. 813; Pub. L. 93-596,
1, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 112-29,
20(h), Sept. 16, 2011, 125 Stat. 334.)
AMENDMENT OF SECTION
Pub. L. 112-29, 20(h), (l), Sept. 16, 2011, 125

Stat. 334, 335, provided that, effective upon the
expiration of the 1-year period beginning on
Sept. 16, 2011, and applicable to proceedings
commenced on or after that effective date, this
section is amended by striking '', without de-
ceptive intention,". See 2011 Amendment note

below.
HISTORICAL AND REVISION NOTES
Based on Title 35, U.S.C .. 1946 ed., 71 (R.S. 4922).
The necessity for a disclaimer to recover on valid
claims is eliminated. See section 253.
Language is changed.
AMENDMENTS
2011-Pub. L. 112-29 struck out ", without deceptive
intention," after "Whenever".
1975--Pub. L. 93-596 substituted "Patent and Trademark Office" for "Patent Office".
Amendment by Pub. L. 112-29 effective upon the expiration of the 1-year period beginning on Sept. 16, 2011,
and applicable to proceedings commenced on or after
that effective date, see section 20(1) of Pub. L. 112-29,
set out as a note under section 2 of this title.
Amendment by Pub. L. 93--596 effective Jan. 2, 1975,
see section 4 of Pub. L. 93--596, set out as a note under
section 1111 of Title 15, Commerce and Trade.
289. Additional remedy for infringement of de-
sign patent
Whoever during the term of a patent for a design, without license of the owner, (1) applies
the patented design, or any colorable imitation
thereof, to any article of manufacture for the
purpose of sale, or (2) sells or exposes for sale
any article of manufacture to which such design
or colorable imitation has been applied shall be
liable to the owner to the extent of his total
profit, but not less than $250, recoverable in any
United States district court having jurisdiction
of the parties.
Nothing in this section shall prevent, lessen,
or impeach any other remedy which an owner of
an infringed patent has under the provisions of
this title, but he shall not twice recover the
profit made from the infringement.
(July 19, 1952, ch. 950, 66 Stat. 813.)
HISTORICAL AND REVISION NOTES
Based on Title 35, U.S.C., 1946 ed., 74, 75 (Feb. 4,
1887, ch. 105, 1, 2, 24 Stat. 387, 388).
Language is changed.
290. Notice of patent suits

The clerks of the courts of the United States,
within one month after the filing of an action
under this title shall give notice thereof in writing to the Director, setting forth so far as
known the names and addresses of the parties,
name of the inventor, and the designating number of the patent upon which the action has been
brought. If any other patent is subsequently included in the action he shall give like notice
thereof. Within one month after the decision is
rendered or a judgment issued the clerk of the
court shall give notice thereof to the Director.
The Director shall, on receipt of such notices,
enter the same in the file of such patent.
(July 19, 1952, ch. 950, 66 Stat. 814; Pub. L.
106-113,
div.
B,
1000(a)(9)
[title
IV,
4732(a)(10)(A)], Nov. 29, 1999, 113 Stat. 1536,
1501A-582; Pub. L. 107-273, div. C, title III,
13206(b)(l)(B), Nov. 2, 2002, 116 Stat. 1906.)
- Rep. Add. 1 -
UNITED STATES DISTRICT
COURT FOR THE EASTERN

DISTRICT OF WISCONSIN
LOCAL RULES
GENERAL, CIVIL, AND

CRIMINAL
Effective February 1, 2010.
- Rep. Add. 2 -
approval before the costs were incurred, and in the case of demonstrative
evidence, before the evidence was used at trial.
(c) Review of Costs. A party may move for review of the Clerk of Court's
decision taxing costs pursuant to Fed. R. Civ. P. 54(d) within 7 days from taxation.
The motion, supporting papers, and scheduling must conform to Civil L. R. 7.
Committee Comment: The rules governing bills of costs are liberally construed
to allow permitted costs. Civil L. R. 54 does not list every allowable cost and should
be interpreted to accommodate ever-changing technology.
Civil L. R. 56. Summary Judgment.
(a) Pro Se Litigation.
(1) If a party is proceeding pro se in civil litigation and the opposing
party files a motion for summary judgment, counsel for the movant must
comply with the following procedure:
(A) The motion must include a short and plain statement that
any factual assertion in the movant's affidavit, declaration, or other
admissible documentary evidence will be accepted by the Court as
being true unless the party unrepresented by counsel submits the
party's own affidavit, declaration, or other admissible documentary
evidence contradicting the factual assertion.
(B) In addition to the statement required by Civil L. R.
56(a)(l)(A), the text to Fed. R. Civ. P. 56 (c),(d), and (e), Civil L. R.
56(a), Civil L. R. 56(b), and Civil L. R. 7 must be part of the motion.
(2) This procedure also applies to motions to dismiss brought pursuant
to Fed. R. Civ. P. 12(b)(6) or motions for judgment on the pleadings pursuant
to Fed. R. Civ. P. 12(c) where matters outside the pleadings are presented to
the Court.
(b) Additional Summary Judgment Procedures. Motions for summary
judgment must comply with Fed. R. Civ. P. 56 and Civil L. R. 7. In addition, with
the exception of Social Security reviews, other actions for review of administrative
agency decisions, and other actions in which a judge relieves the parties of this
Rule's requirements, the following must be met:
(1) Moving Party's Principal Materials in Support of Motion.
With each motion for summary judgment, the moving party must file:
(A) a memorandum oflaw;
36
- Rep. Add. 3 -
(B) a statement setting forth any material facts to which all
parties have stipulated;

(C) a statement of proposed material facts as to which the
moving party contends there is no genuine issue and that entitle the
moving party to a judgment as a matter oflaw;
(i)
the statement shall consist of short numbered
paragraphs, including within each paragraph specific references
to the affidavits, declarations, parts of the record, and other
supporting materials relied upon to support the fact described in
that paragraph;
(ii)
a moving party may not file more than 150
separately numbered statements of fact;
failure to submit such a statement constitutes
grounds for denial of the motion; and
(iii)
(D) any affidavits, declarations, and other materials referred to

in Fed. R. Civ. P. 56(c).
(2) Opposing Party's Materials in Opposition. Each party

opposing a motion for summary judgment must file within 30 days of service
of the motion and the materials required by subsection (b)(l), above:
(A) a memorandum oflaw;
(B) a concise response to the moving party's statement of facts
that must contain:
(i) a reproduction of each numbered paragraph in the

moving party's statement of facts followed by a response to each
paragraph, including, in the case of any disagreement, specific
references to the affidavits, declarations, parts of the record, and
other supporting materials relied upon, and
(ii) a statement, consisting of short numbered
paragraphs, of any additional facts that require the denial of
summary judgment, including references to the affidavits,
declarations, parts of the record, and other supporting materials
relied upon to support the facts described in that paragraph. A
non-moving party may not file more than 100 separatelynumbered statements of additional facts; and
37
- Rep. Add. 4 -
(C) any opposing affidavits, declarations, and other materials

referred to in Fed. R. Civ. P. 56(c).
(3) Moving Party's Materials in Reply. A moving party may file
within 14 days of the service of the opposing party's materials under
subsection (b)(2), above:
(A) a reply memorandum;
(B) a reply to any additional facts submitted by the opposing
party pursuant to subsection (b)(2) above, in the form prescribed in
section (b)(2)(B)(i) above; and
(C) any affidavits, declarations, and other materials referred to
in Fed. R. Civ. P. 56(c) submitted in reply.
(4) Effect of Uncontroverted Statements of Fact. The Court will
deem uncontroverted statements of material fact admitted solely for the
purpose of deciding summary judgment.
(5) Stipulated Facts. Parties are encouraged to stipulate to facts.
Facts so stipulated will not count against any party's allotment of proposed
facts and do not require references to evidentiary support.
(6) Citations to Facts in Memoranda. Assertions of fact in the
parties' supporting memoranda must refer to the corresponding numbered
paragraph of the statement of facts, statement of additional facts, or
statement of stipulated facts.
(7) Prior Leave of Court Required to Increase the Number of
Statements of Fact or Statements of Additional Fact. A party may not
file any proposed statements of material fact or statements of additional fact
in excess of the limit set forth in this rule unless the Court previously has
granted leave upon a showing that an increase is warranted.
(8) Length of Memoranda.
(A) A principal memorandum in support of, or opposition to,
summary judgment must not exceed 30 pages and a reply
memorandum must not exceed 15 pages (excluding any caption, cover
page, table of contents, table of authorities, and signature block).
(B) No memorandum exceeding the page limitations may be
filed unless the Court previously has granted leave to file an oversized
memorandum.
38
- Rep. Add. 5 -
UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT
Nordock, Inc. v. Systems Inc., 14-1762, -1795
I, John C. Kruesi, Jr., being duly sworn according to law and being over the
age of 18, upon my oath depose and say that:
Counsel Press was retained by SOKOL LAW OFFICE, Attorneys for
Appellant to print this document. I am an employee of Counsel Press.
On June 15, 2015, counsel for Appellant authorized me to electronically file
the foregoing (corrected) Response and Reply Brief with the Clerk of Court using
the CM/ECF System, which served via e-mail notice of such filing to all counsel
registered as CM/ECF users, including any of the following:
Philip P. Mann
(principal counsel)
Mann Law Group
1218 3rd Avenue, Suite 1809
Seattle, WA 98101
206-436-0900
[email protected]
John Whitaker
Whitaker Law Group
Seattle, WA 98101
206-436-0900
[email protected]
Paper copies will also be mailed to the above principal counsel at the time paper
copies are sent to the Court. The Brief was originally filed on March 19, 2015.
Six paper copies of the approved brief are being filed with the Court within
the time provided in the Courts rules.
June 15, 2015
/s/ John C. Kruesi, Jr.

Counsel Press
CERTIFICATE OF COMPLIANCE WITH TYPE-VOLUME

LIMITATION, TYPEFACE REQUIREMENTS AND TYPE STYLE
REQUIREMENTS
1. This brief complies with the type-volume limitation of Federal Rule of
Appellate Procedure 32(a)(7)(B).
X The brief contains 13,309 words, excluding the parts of the brief
exempted by Federal Rule of Appellate Procedure 32(a)(7)(B)(iii),or
The brief uses a monospaced typeface and contains
lines of
text, excluding the parts of the brief exempted by Federal Rule of
Appellate Procedure 32(a)(7)(B)(iii).
2. This brief complies with the typeface requirements of Federal Rule of
Appellate Procedure 32(a)(5) and the type style requirements of Federal Rule of
Appellate Procedure 32(a)(6).
X
The brief has been prepared in a proportionally spaced typeface using

MS Word 2013 in a 14 point Times New Roman font or
The brief has been prepared in a monospaced typeface using
in a ___ characters per inch_________ font.
June 15, 2015

Date
/s/Jeffrey S. Sokol________________
Jeffrey S. Sokol
Counsel for Appellant, Nordock, Inc.

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2014-1762, -1795

United States Court of Appeals

BRIEF FOR PLAINTIFF-APPELLANT

UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT

/s/ Jeffrey S. Sokol

STANDARD OF REVIEW/RULE 59 STANDARDS ................................. 22

DISTRICT COURT ERRED WHEN IT DENIED NORDOCKS

Legal Standard ..................................................................................... 25

District Court Decision Was Clearly Erroneous ................................. 26

Manifest Weight of Credible Evidence Shows

Parties Agree Systems Sold Over 1,450

Article of Manufacture To Which Patented D754

1. D754 Patent states and shows design is

Total Profits Are Based on Gross Revenues .............. 33

Gross Revenues For Systems LHP/LHD Levelers

Systems Total Profits For LHP/LHD Levelers

Trial Record Does Not Support Finding That

District Court Reliance On Beros Cost Savings

District Court Relied on Beros Cost Savings

Total Profits Are Not Based On Asserted

Beros Cost Savings Methodology is

Beros Cost Savings Methodology is

Bero Impermissibly Focused on Ornamental

District Court Misinterpretation of Patent Damages Jury

District Court Misconstrued the Jury Instructions ......... 46

The Jury Instructions Conflict Under District Court

Systems Closing Arguments Misled The Jury ........................ 50

District Court Analysis Is Incongruous .................................... 52

CONCLUSION AND STATEMENT OF RELIEF SOUGHT ............................... 52

Midwest Precision Servs., Inc. v. PTM Industries Corp.,

STATEMENT OF RELATED CASES

Did the District Court err by relying on a cost savings methodology to

The Bero Rebuttal Report uses sales for gross revenue.

Conspicuously missing from the Bero Rebuttal Report is any sales

Systems LHP/LHD levelers infringed the D754 Patent.

First Shipped October 21, 2005

profit/hydraulic leveler (A6552) by sales of 1,457 hydraulic LHP/LHD levelers10

STANDARD OF REVIEW/RULE 59 STANDARDS

THE DISTRICT COURT ERRED WHEN IT DENIED NORDOCKS

The District Court Decision Was Clearly Erroneous

cost savings methodology to determine total profits, which is contrary to the

Manifest Weight Of Credible Evidence Shows Systems Total Profits

profits were over $600,000 for its infringing LHP/LHD levelers.

Parties Agree Systems Sold Over 1,450 Infringing LHP/LHD Levelers

Article of Manufacture To Which Patented D754 Design Is

3. Systems assertion that Article of Manufacture to which patented

Total Profits Are Based on Gross Revenues

Gross Revenues For Systems LHP/LHD Levelers Were Over

Systems Total Profits For LHP/LHD Levelers Were Over $600,000

$3,978,920 and net pretax profits of $912,201 on sales of 1,514 LHP/LHD

The District Courts reliance on Beros cost savings methodology to determine

profits on its sales of 1,457 LHP/LHD levelers were $0.14

Bero did not say $0 total profits.

For reasons discussed below, Mr. Beros cost savings methodology to

District Court Reliance On Beros Cost Savings Methodology

relied on Mr. Beros erroneous determination of 289 damages.

District Court Relied on Beros Cost Savings Methodology

Now again, I understand Nordock's position is that it should get

Total Profits Are Not Based On Asserted Cost Savings