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UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF WISCONSIN

NORDOCK, INC.,

Plaintiff,

v. Case No. 11-CV-118

SYSTEMS, INC.,

Defendant.

COURT MINUTES OF TELEPHONE SCHEDULING CONFERENCE

HONORABLE WILLIAM E. DUFFIN PRESIDING

DATE: June 20, 2017 at 9:00 a.m. DEPUTY CLERK: Linda M. Zik

TIME COMMENCED: 9:01:07 a.m. TIME CONCLUDED: 9:24:47 a.m.

TAPE: FTR Gold

APPEARANCES:

PLAINTIFF: Jeffrey S. Sokol

DEFENDANT: Philip P. Mann / David A. Affeldt

COMMENTS:

COURT notes this was originally a Judge Randa case and was reassigned to it. It has
familiarized itself with the case including the Federal Circuit decision from September

Case 2:11-cv-00118-WED Filed 06/20/17 Page 1 of 4 Document 254


2015 and the Supreme Court decision in Samsumg v Apple. The case is back here for a
trial on damages.

SOKOL states the trial on damages would include experts and lay witnesses. The article
of manufacture issue from the Supreme Court is a brand new issue. It is a component v.
whole product issue. The Supreme Court did not brief the issue on the article of
manufacture issue and who bears the burden of proof. It may need briefing. The court
has to determine what the factors will be and who bears the burden of proof before fact
discovery is done.

MANN agrees with Sokol. The critical issue is what is the article of manufacture. This
would be based on facts in a summary judgment motion. The numbers have been
established by the testimony in the lower case. Perhaps settlement discussions or court
ordered mediation could take place. They need guidance from the court.

SOKOL addresses the jury verdict. The entire product dock leveler is the article of
manufacture as listed in the jury verdict.

Court states the question is: Is the article of manufacture the entire product or just a
component?

SOKOL proposes simultaneous briefs with a time period to respond with a reply.

MANN states this is a matter for the court to decide. He does not agree that the jury
decided the article of manufacture is the entire dock leveler.

COURT states some form of motion to resolve the issues prior to trial and prior to
mediation makes sense. Briefing schedule to be discussed but additional discovery has
been raised by Attorney Sokol.

MANN does not see what additional discovery is necessary. Manufacture of the dock
levelers stopped within hours of the jury verdict. There have been no additional sales.

SOKOL states additional discovery is needed on the jury instruction on determining the
article of manufacture or, this could possibly be decided on summary judgment. There
are 4 factors to determine article of manufacture. This was not briefed to the Supreme
Court. Nobody suggested the factors. An expert may testify about how they are sold.
There may be depositions also. The Solicitor General suggested the burden of proof be
on the defendant. Systems may want discovery on this.

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MANN states this may come into play once the court makes a determination of what
the issues are. He has no strong thoughts either way. He is willing to do what makes
sense.

COURT states it can set a briefing schedule regarding what is the article of manufacture
or determine what fact issues need to be decided and what the jury will decide. Is the
article of manufacture a jury question or a question for the Court? The parties can
include this in their briefing. Court could set aside some limited time for discovery.

SOKOL states the briefs should include who bears the burden of proof because it will be
needed for the jury instruction.

MANN prefers the courts first approach; brief it and then engage in discovery.

SOKOL agrees.

COURT addresses what will be briefed:


(1) What is the article of manufacture:
a. what are the factors to be considered;
b. who has the burden of proof;
c. any other issue subsumed in the broader issue of what is the article of
manufacture.

SOKOL asks if the parties should make a motion for summary judgment on what is the
article of manufacture.

COURT was contemplating a motion for summary judgment.

SOKOL states then there needs to be deposition testimony and statements of experts;
therefore, there is a need for discovery before briefing.

MANN disagrees stating this is a legal issue. It is about what the patent shows for the
dock leveler. He contemplates arguing the article of manufacture cannot be the entire
dock leveler. The court does not need an expert to read the patent. He does not want to
spend more money on experts than what its worth. He wants to bring this to an
amicable resolution.

COURT will address this issue by way of briefing first. If fact issues need be resolved
before questions are answered, then that should be part of the parties submissions
which can include declarations.

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SOKOL states he can submit declarations.

COURT will set a schedule for simultaneous briefs and simultaneous responses.

SOKOL states this issue will set the tempo for the entire country. It is not just this case.
It will have an impact on others. He needs 60 days.

MANN agrees with 60 days.

COURT:
(1) Simultaneous briefs due 8/25/2017;
(2) Reply briefs due 9/25/2017.

No additional dates to be given yet. The court will rule on this first and then have
another telephone status conference to discuss possible mediation or trial or both.

PARTIES agree.

COURT asks how long the damages portion of the trial was.

MANN states the better part of a day was devoted to damages.

SOKOL states retrial will be limited to 289 what was Systems total profit.

MANN indicates it will more likely be 1-day.

COURT will issue and order summarizing this.

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UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF WISCONSIN

NORDOCK, INC.,

Plaintiff,

v. Case No. 11-CV-118

SYSTEMS, INC.,

Defendant.

ORDER

This case is before this court following remand from the Court of Appeals for the

Federal Circuit, Nordock, Inc. v. Sys., Inc., 2017 U.S. App. LEXIS 4732 (Fed. Cir. Mar. 17,

2017), and having been reassigned to this court following the death of the district judge

to whom the case was initially assigned.

On June 20, 2017, the court held a telephonic scheduling conference to discuss

further proceedings. Before scheduling a new trial on damages as ordered by the Court

of Appeals for the Federal Circuit, the parties agreed that there are some issues that

require resolution, including what the article of manufacture is in this case, what factors

are to be considered in determining the article of manufacture, and who has the burden

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of proof with respect to the question of the article of manufacture. The court now sets

the following schedule regarding briefing to address these questions:

Simultaneous briefs due no later than August 25, 2017.

Simultaneous replies due no later than September 25, 2017.

Once the court has resolved those issues it will schedule another telephonic

status conference with the parties to discuss further scheduling.

SO ORDERED.

Dated at Milwaukee, Wisconsin this 20th day of June, 2017.

_________________________
WILLIAM E. DUFFIN
U.S. Magistrate Judge

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