Columbia v. Seirus - 289 Briefing

Case 3:15-cv-00064-HZ Document 150 Filed 03/09/17 Page 1 of 12
David W. Axelrod, OSB #750231

Email: daxelrod@schwabe.com
Scott D. Eads, OSB #910400
Email: seads@schwabe.com
Nicholas F. Aldrich, Jr., OSB #160306
Email: naldrich@schwabe.com
SCHWABE, WILLIAMSON & WYATT, P.C.
Pacwest Center
1211 SW 5th Ave., Suite 1900
Portland, OR 97204
Telephone: 503.222.9981
Facsimile: 503.796.2900
Attorneys for Plaintiff
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF OREGON
COLUMBIA SPORTSWEAR NORTH No. 3:15-cv-00064-HZ

AMERICA, INC., an Oregon corporation,
PLAINTIFF COLUMBIA SPORTSWEAR
Plaintiff, NORTH AMERICA, INC.S BRIEF
REGARDING THE LEGAL STANDARD
vs. FOR DESIGN PATENT DAMAGES
SEIRUS INNOVATIVE ACCESSORIES,

INC., a Utah corporation,
Defendant.
INTRODUCTION
Columbia respectfully moves, pursuant to the Courts Order at the hearing on the parties
Motions for Summary Judgment [Dkt. No. 144, as revised Dkt. No. 146], for the Court to adopt
the following legal standard and jury instruction for the determination of design patent damages
pursuant to 35 U.S.C. 289:

Page 1 - COLUMBIAS BRIEF REGARDING THE LEGAL Attorneys at Law
Pacwest Center
STANDARD FOR DESIGN PATENT DAMAGES 1211 SW 5th Ave., Suite 1900
Portland, OR 97204
Telephone: 503.222.9981
Fax: 503.796.2900
PDX\106477\192966\NFA\20153039.5
PROPOSED LEGAL STANDARD
Arriving at a damages award under 289 involves two steps. First, identify the
article of manufacture to which the infringed design has been applied. Second,
calculate the infringers total profit made on that article of manufacture.
The infringing product bearing the patented design as sold to the consumer is the
relevant article of manufacture if:
1. The product is a single-component product; or
2. The product is a multicomponent product and the patented design is applied to

all or a material part of all of the components; or
3. The product is a multicomponent product and the component or components to

which the patented design is applied creates the basis for the consumers demand
for the product, or substantially creates the value of the other component parts of
the product. This third factor applies where damages on the entire product are
necessary to remedy infringement of the patented design.
In evaluating whether the infringing product should be considered a single-

component product or a multicomponent product, you should consider the
complexity of the infringing product, the separability of its ingredient parts, and
whether portions of that product are sold separately or made by independent
vendors and assembled by or for the infringer. For example, a dinner plate is
considered a single-component product while a modern kitchen oven is
considered a multicomponent product.
If the relevant article does not satisfy one of the three conditions above, the
relevant article of manufacture for calculating disgorgement of profits is the
portion of the product to which the design has been applied.
The defendant bears the burden of producing evidence and proving that the
relevant article of manufacture is a portion of an entire product as sold. 1
I. BACKGROUND
Given the unique subject matter of design patents, Congress long ago enacted a separate,
additional statutory remedy for design patents rooted in the equitable principle of disgorgement.
Specifically, 35 U.S.C. 289 reads:
1
In Columbias letter to the Court dated December 27, 2016, Columbia stated that it was willing
to adopt the four-part test proposed by the Department of Justice as amicus curiae in the
Samsung case for purposes of this case if the parties and the Court were in agreement. Given
that Seirus did not stipulate to using that test, Columbia accepts the Courts invitation to offer a
legal standard that more closely hews to Supreme Court and Federal Circuit jurisprudence.
Pacwest Center
Portland, OR 97204
Telephone: 503.222.9981
Fax: 503.796.2900
PDX\106477\192966\NFA\20153039.5
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.
For over 140 years, it has been understood that the relevant article of manufacture
referenced in the statute is the infringers end product as sold. Thus, the remedy expressly
provides that if one engages in the prohibited conduct of applying without authority the patented
design to an article of manufacture, the patentee is entitled to the infringers total profit resulting
from such conduct. Nike v. Walmart, 138 F.3d 1437, 1448 (Fed. Cir. 1998) (The statute
requires the disgorgement of the infringers profits to the patent holder, such that the infringers
retain no profit from their wrong.)
In 2011, Apple sued Samsung for infringement of a number of design patents covering
visual aspects of smartphones. Samsung Elecs. Co. v. Apple Inc., 137 S. Ct. 429, 433 (2016).
The jury found that Samsung infringed and awarded Apple $399 millionthe entire profit
Samsung made from its sales of the infringing smartphones. Id. The Federal Circuit affirmed.
The Supreme Court granted certiorari to answer one narrow question: whether, in the
case of a multicomponent product, the relevant article of manufacture must always be the end
product sold to the consumer or whether it can also be a component of that product. Id. at 434.
Notably, the Court expressly held that its decision in Samsung only applies when the infringing
product is a multicomponent product; the damages analysis for single-component products
remains unchanged disgorgement of the infringers total profits from the sale of the product.
The Supreme Court held that in the case of a multi-component product the term article of
manufacture is broad enough to embrace both a product sold to a consumer and a component of
that product, whether sold separately or not. Id. at 436. Thus, when the product sold to market

Pacwest Center
Portland, OR 97204
Telephone: 503.222.9981
Fax: 503.796.2900
PDX\106477\192966\NFA\20153039.5
bearing the infringing design is determined by the fact finder to be a multicomponent product, in
some circumstances, a design patent holder will still be entitled to the infringers total profit from
the end product, and in other circumstances, a patent holder will . . . be entitled to the
infringers total profit from a component of the end product. Id. at 434.
However, the Court declined to set out a test for identifying the relevant article of
manufacture at the first step of the 289 damages inquiry. Id. at 436. It remains to be
determined in that case whether the relevant article of manufacture for purposes of total
disgorgement under 289 is (a) the entire phone, or (b) some subset of the smartphone. The case
was remanded to the Federal Circuit, id. at 436, which subsequently remanded the case to the
district court. The district court has yet to identify such a test for determining the relevant article
of manufacture.
This Court is therefore likely to be the first court to determine the legal standard to be
applied for determining the relevant article of manufacture for purposes of 289. Columbia
asserts that the test proposed above follows the statute, the Supreme Courts decision in Samsung
and its multiple decisions concerning damages awards for multicomponent products when a
patent covers only a single component.
II. THE PREAMBLE A TWO-STEP TEST

Following the lead of the Samsung Court, Columbias proposed approach starts with a
two-step test:
Arriving at a damages award under 289 involves two steps. First, identify the
article of manufacture to which the infringed design has been applied. Second,
calculate the infringers total profit made on that article of manufacture.
This language comes directly from Samsung, and therefore should be adopted. Samsung,
137 S. Ct. at 434.
What follows is a test for determining when the product as sold is the relevant article of
manufacture, for purposes of profit disgorgement, and when the relevant article of
manufacture is only a component of the product as sold. Columbia proposes three

Pacwest Center
Portland, OR 97204
Telephone: 503.222.9981
Fax: 503.796.2900
PDX\106477\192966\NFA\20153039.5
circumstances for which the entire end product sold to market is the relevant article of
manufacture. Each circumstance is explained in the following sections. If no circumstance
applies, the article of manufacture is the component to which the patented design has been
applied.
III. THE ENTIRE INFRINGING PRODUCT IS THE RELEVANT ARTICLE OF

MANUFACTURE WHEN THE INFRINGING PRODUCT IS A SINGLE-
COMPONENT PRODUCT
The first part of Columbias test states that the patentee is entitled to disgorge the
infringers profits from the entire product sold to market where the product is a single-
component product.
In Samsung, the Supreme Court stated that [i]n the case of a design for a single-
component product, such as a dinner plate, the product is the article of manufacture to which
the design has been applied. 137 S. Ct. at 432. The Court contrasted this with a design for a
multicomponent product, such as a kitchen oven, and then expressly held that its decision only
related to multi-component product[s]. Id. at 432, 434. The Samsung decision addressed only
a product that the parties agreed was a multicomponent product (i.e., a smartphone) made up of
an assembly of complex components including cameras, microprocessors, software programs,
hardware cases and packaging, and the like supplied to Samsung from multiple independent
vendors.
Accordingly, where the infringing product sold to market is a single-component product,
the patentee is entitled to disgorgement of the infringers total profits for the sales of those
products. Therefore, and as a threshold issue, the factfinder must first determine whether the
infringing product is a single-component product (i.e., a dinner plate), or a multicomponent
product (i.e., a kitchen oven). Columbias proposed test provides guidance by identifying some
of the principal factors referenced by the Supreme Court (dinner plate vs. kitchen oven) and the
Department of Justice in its proposed test.

Pacwest Center
Portland, OR 97204
Telephone: 503.222.9981
Fax: 503.796.2900
PDX\106477\192966\NFA\20153039.5
IV. THE ENTIRE INFRINGING PRODUCT IS THE RELEVANT ARTICLE OF

MANUFACTURE WHEN THE PATENTED DESIGN IS APPLIED TO ALL OR
A MATERIAL PART OF ALL OF THE COMPONENTS
The second circumstance where the relevant article of manufacture will be the entire
infringing product as sold at market is when the patented design is applied to all or a material
part of the infringing product as sold. This is consistent with the statute and its legislative
history, which acknowledges that it is the design that sells the article. The Design Patent Act
of 1887 H.R. Rep. No. 1966 at 1 (1886), reprinted in 18 Cong. Rec. 834 (1887). Thus, the
patentee is entitled to disgorge the infringers total profits from the entire infringing product sold
to market where the patented design is applied to all or a material part of the components in the
infringing product.
This step reflects the fact that some patented designs are applied to all or the material part
of an entire end product sold at market. In such cases, the equitable relief of disgorgement
dictates that the relevant article of manufacture is the entire product as sold.
For example, U.S. Design Patent 150,685 is for a Chair.

Pacwest Center
Portland, OR 97204
Telephone: 503.222.9981
Fax: 503.796.2900
PDX\106477\192966\NFA\20153039.5
An infringer could argue that it contains several components (a back, a seat, bars, etc.),
and therefore is subject to a new test for multicomponent products under Samsung. However,
assuming the factfinder determined the chair was a multicomponent product, then the design
patent covers multiple components, and an infringing chair would have the design applied to
those multiple components. In such a case, it would be inequitable to allow an infringer to
escape the remedy codified by Congress merely because the design, on its face, covers a
multicomponent product.
For a further example, in this case, the infringing Seirus glove liners, socks, and hats are
all made entirely from the infringing HEATWAVE fabric:

Pacwest Center
Portland, OR 97204
Telephone: 503.222.9981
Fax: 503.796.2900
PDX\106477\192966\NFA\20153039.5
Seirus might make the strained argument that these infringing products are, nonetheless,
multicomponent products, because they are made from multiple pieces of fabric for the parts of a
hand (and thread to sew them together). However, the design is applied to each of the pieces of
fabric, comprising a material part of the accused product. Even if the jury found that these
products are multicomponent products, it would again be inequitable to allow Seirus to escape
the remedy codified by Congress simply because it sews together multiple pieces of the same
infringing fabric.
Thus, where the design is applied to all or a material part of all of the components of an
infringing product, the patentee should be entitled to the defendants total profits for the
infringing product as sold to market.
V. THE ENTIRE INFRINGING PRODUCT IS THE RELEVANT ARTICLE OF

MANUFACTURE WHEN THE PATENTED COMPONENT(S) DRIVES
CONSUMER DEMAND FOR THE PRODUCT
Again, if the fact finder concludes that the infringing product is not a single-component
product, the third prong of the proposed test also applies. This final circumstance addresses the
situation where a patented design is not applied to a material part of all of the components of a
Pacwest Center
Portland, OR 97204
Telephone: 503.222.9981
Fax: 503.796.2900
PDX\106477\192966\NFA\20153039.5
When a patentee seeks damages on unpatented components sold with a patented
apparatus, courts have applied a formulation known as the entire market value rule to
determine whether such components should be included in the damage computation. Rite-Hite
Corp. v. Kelley Co., Inc., 56 F.3d 1538, 1549 (Fed. Cir. 1995) (en banc). In essence, the patentee
is entitled to damages for unpatented components where the patented component drove demand
for the entire product. VirnetX, Inc. v. Cisco Sys., Inc., 767 F.3d 1308, 1329 (Fed. Cir. 2014).
The entire market value rule has been applied universally in patent law where damages
are sought on sales of unpatented components sold with patented components. Rite-Hite, 56
F.3d at 1550. It permits damages that extend beyond the patented components where damages
on the unpatented components or technology [are] necessary to fully compensate for
infringement of the patented invention. VirnetX, 767 F.3d at 1327 (quoting Cornell Univ. v.
Hewlett-Packard Co., 609 F. Supp. 2d 279, 285 (N.D.N.Y. 2009).
The entire market value rule is applied to allow damages from unpatented components
of a device when the unpatented and patented components are physically part of the same
machine. Rite-Hite Corp., 56 F.3d at 1549. For example, it applies where a particular patented
feature drives consumer demand for a product as a whole. The rule is also applied to allow
inclusion of physically separate unpatented components normally sold with the patented
components. Id. at 1550. For example, if a patented razor handle drives consumer demand for
the associated blades, the patentee may be able to recoup damages from the sale of the
unpatented blades.
The entire market value rule applies both in the context of lost profits, id. at 1549 (citing
Paper Converting Machine Co. v. Magna-Graphics Corp., 745 F.2d 11, 23 (Fed. Cir. 1984)),
and reasonable royalty calculations. Id. (citing Leesona Corp. v. United States, 599 F.2d 958,
974 (1979)). It has also been applied to disgorgement of the infringers profits, as is applicable
here. Garretson v. Clark, 111 U.S. 120, 121 (1884); Westinghouse Elec. & Mfg. Co. v. Wagner
Elec. & Mfg. Co., 225 U.S. 604, 615 (1912).

Pacwest Center
Portland, OR 97204
Telephone: 503.222.9981
Fax: 503.796.2900
PDX\106477\192966\NFA\20153039.5
The rule was formulated when the remedy of profit disgorgement was available for both
utility and design patents. The Supreme Courts Garretson decision was issued in 1884, and was
decided under the Patent Act of 1870, Ch. 230, 16 Stat. 198-217 (July 8, 1870). Pursuant to Sec.
55 of that Act, the complainant was entitled to recover, in addition to the profits to be accounted
for by the defendant, the damages the complainant has sustained due to the infringement. The
remedy of disgorgement was removed for utility patent damages in the Act of August 1, 1946, c.
726, 1, 60 Stat. 778, 35 U. S. C. (1946 ed.), 67, 70. See Aro Mfg. Co. v. Convertible Top
Replacement Co., 377 U.S. 476, 505 (1964). However, Section 289 of the Patent Act of 1952
preserved the right of profit disgorgement for design patents.
The entire market rule has been part of the U.S. patent law system since at least the
1880s, when the Supreme Court held that the profits and damages are to be calculated on the
whole machine, where the entire value of the whole machine, as a marketable article, is
properly and legally attributable to the patented feature. Garretson, 111 U.S. at 121; see also
Westinghouse, 225 U.S. at 615 (same).
Its modern formulation was most recently articulated in VirnetX, where the court re-
affirmed that when claims are drawn to an individual component of a multi-component
product, damages may be based on the entire market value of the accused product where the
patented feature creates the basis for customer demand or substantially creates the value of the
component parts. VirtnetX, 767 F.3d at 1326 (quoting Versata Software, Inc. v. SAP Am., Inc.,
717 F.3d 1255, 1268 (Fed. Cir. 2013)).
The language proposed by Columbia for this third circumstance derives directly from the
Federal Circuits articulation of the legal standard in VirnetX. The test focuses on the component
(or components) to which the design has been applied, and the extent to which those components
drive consumer demand for the infringing product. That is consistent with design patent law,
which accepts that designs are applied to functional products that are sold to market, and accords
damages for the sales of the products to which the designs have been applied. For example,
Pacwest Center
Portland, OR 97204
Telephone: 503.222.9981
Fax: 503.796.2900
PDX\106477\192966\NFA\20153039.5
Section 289 states: Whoever . . . applies the patented design . . . to any article of manufacture
for the purpose of sale, or [] sells . . . any article of manufacture to which such design . . . has
been applied shall be liable to the owner to the extent of his total profit . . . It is accordingly
appropriate that the damages analysis is based on the significance to the sale of the article or
components to which the design that has been applied.
VI. BURDEN OF PRODUCTION AND PROOF OF THE ARTICLE OF

MANUFACTURE
The defendant should have the burden of producing evidence that the relevant article of
manufacture is not the entire product as sold to the consumer. As explained by the DOJ in its
Samsung amicus brief:
The defendant should bear the burden of producing evidence that the relevant
article of manufacture in a particular case is a portion of an entire product as
sold. The plaintiff bears the ultimate burden of establishing the amount of the
defendants total profit. See SmithKline Diagnostics, Inc. v. Helena Labs. Corp.,
926 F.2d 1161, 1164 (Fed. Cir. 1991); cf. Horvath v. McCord Radiator & Mfg.
Co., 100 F.2d 326, 330 (6th Cir. 1938), cert. denied, 308 U.S. 581 (1939). But
once the plaintiff has shown that the defendant profited by exploiting a product
containing the plaintiffs patented design, the defendant should be required to
identify, through the introduction of admissible evidence, the component that the
defendant asserts is the article to which the design was applied. Cf. SEC v. Teo,
746 F.3d 90, 112 (3d Cir.) (once government establishes existence of tainted
profits, defendant has burden of production to identify untainted portions), cert.
denied, 135 S. Ct. 675 (2014). The defendant, as the manufacturer or seller of the
accused product, has superior knowledge of the identity of the products
components, as well as of some of the factors relevant to the article
determination, including the physical relationship between the design and the
product; the manner in which the product is manufactured; and the extent to
which the product reflects the innovations of parties other than the plaintiff. See
Alaska Dept of Envtl. Conservation v. EPA, 540 U.S. 461, 494 n.17 (2004)
(placement of burden of production may turn on which party has peculiar means
of knowledge of the facts in question) (citation omitted); accord Medtronic, Inc.
v. Mirowski Family Ventures, LLC, 134 S. Ct. 843, 851 (2014).
Samsung Elects. Co., Ltd. v. Apple Inc., Case No. 15-777, Brief For The United States as Amicus
Curiae Supporting Neither Party, pp. 30-31 (attached hereto as Exhibit 1).
For similar reasons, the design patent infringer should also bear the burden of proof
Pacwest Center
Portland, OR 97204
Telephone: 503.222.9981
Fax: 503.796.2900
PDX\106477\192966\NFA\20153039.5
where the infringer asserts that the relevant article of manufacture is only a component of the
article that the infringer sold or exposed for sale in commerce. Section 289 is directed expressly
to the product as sold by the infringerto the article of manufacture for the purpose of sale
and sells or exposes for sale any article of manufacture. Given the equitable nature of
disgorgement as a remedy, where the infringer does not separately sell what the infringer later
claims to be the alleged component, the infringer should carry the burden of persuasion that the
statutory standard and the infringers acts in the marketplace should be ignored.
CONCLUSION
Because Columbias test comports with the Supreme Courts decision in Samsung,
Supreme Court and Federal Circuit precedent governing damages for infringement of
multicomponent products, and the history and purposes of the remedy codified in Section 289, it
should be adopted as the standard for design patent damages and the jurys instruction on the
issue.
Dated this 9th day of March, 2017.
Respectfully submitted,
By: s/ Nicholas F. Aldrich

Telephone: 503.222.9981
Facsimile: 503.796.2900
Of Attorneys for Plaintiff

Columbia Sportswear North America, Inc.

Pacwest Center
Portland, OR 97204
Telephone: 503.222.9981
Fax: 503.796.2900
PDX\106477\192966\NFA\20153039.5
Case 3:15-cv-00064-HZ Document 150-1 Filed 03/09/17 Page 1 of 42
No. 15-777
In the Supreme Court of the United States

SAMSUNG ELECTRONICS CO., LTD., ET AL., PETITIONERS
v.
APPLE INC.
ON WRIT OF CERTIORARI
TO THE UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT
BRIEF FOR THE UNITED STATES

AS AMICUS CURIAE SUPPORTING NEITHER PARTY
DONALD B. VERRILLI, JR.

Solicitor General
Counsel of Record
BENJAMIN C. MIZER
SARAH T. HARRIS Principal Deputy Assistant
General Counsel Attorney General
NATHAN K. KELLEY MALCOLM L. STEWART
Solicitor Deputy Solicitor General
THOMAS W. KRAUSE GINGER D. ANDERS
Deputy Solicitor Assistant to the Solicitor
General
SCOTT C. WEIDENFELLER
BRIAN T. RACILLA MARK R. FREEMAN
LORE A. UNT TYCE R. WALTERS
WILLIAM LAMARCA Attorneys
Associate Solicitors Department of Justice
United States Patent and Washington, D.C. 20530-0001
Trademark Office SupremeCtBriefs@usdoj.gov
Alexandria, Va. 22313 (202) 514-2217
Exhibit 1
Page 1 of 42
QUESTION PRESENTED
Section 289 of the Patent Act of 1952 provides that
whoever applies [a] patented design, or any colorable
imitation thereof, to any article of manufacture for the
purpose of sale, or sells or exposes for sale any ar-
ticle of manufacture to which such design or colorable
imitation has been applied, shall be liable to the
[patent] owner to the extent of his total profit. 35
U.S.C. 289. The question presented is as follows:
Whether, when a defendant infringes a design pa-
tent by including the patented design in a multi-
component product that is sold to the public, the pa-
tent holder is entitled to recover the defendants en-
tire profit realized from sales of the finished product.
(I)
Exhibit 1
Page 2 of 42
TABLE OF CONTENTS
Page
Interest of the United States....................................................... 1
Statement ...................................................................................... 1
Summary of argument ................................................................. 7
Argument....................................................................................... 9
I. Section 289 authorizes a patent owner to recover
an infringers total profit from an infringing article
of manufacture ............................................................... 10
A. Section 289 does not permit apportionment
based on the extent to which the infringers
profit on the relevant article of manufacture
was attributable to the infringing design ............. 11
B. Petitioners identify no sound basis for con-
struing Section 289 to allow an award of less
than the infringers total profit from the rele-
vant article of manufacture .................................... 14
II. To calculate the total profit due under Section
289, the factfinder must identify the article of
manufacture to which the infringing design has
been applied, and that article will not always be
the finished product sold to end-users ........................ 16
A. The relevant article of manufacture for
purposes of Section 289 may be a component
of a multi-component product ................................ 17
1. The term article of manufacture is broad
enough to include components of a complete
product ............................................................... 17
2. Section 289 does not limit the types of articles
that may qualify as the relevant article of
manufacture..................................................... 18
3. The judicial and administrative understanding
of the term article of manufacture has long
included components of products .................... 19
(III)
Exhibit 1
Page 3 of 42
IV
Table of ContentsContinued: Page

4. Treating the complete product as the
relevant article of manufacture in
every case would often produce greatly
disproportionate infringement liability .......... 23
B. Identifying the relevant article of manufacture
is a task for the finder of fact under the totality
of the circumstances ............................................... 25
C. The Court should remand this case for further
proceedings .............................................................. 31
Conclusion................................................................................ 34
TABLE OF AUTHORITIES
Cases:
Adams, Ex parte, 84 Off. Gaz. Pat. Office 311 (1898) ........ 21
Alaska Dept of Envtl. Conservation v. EPA,
540 U.S. 461 (2004).............................................................. 31
American Fruit Growers, Inc. v. Brogdex Co.,
283 U.S. 1 (1931) ................................................................. 18
Amini Innovation Corp. v. Anthony Cal., Inc.,
439 F.3d 1365 (Fed. Cir. 2006) ........................................... 30
Bonito Boats, Inc. v. Thunder Craft Boats, Inc.,
489 U.S. 141 (1989)................................................................ 2
Brand, Ex parte, 83 Off. Gaz. Pat. Office 747 (1897) ......... 22
Brower, Ex parte, 4 Off. Gaz. Pat. Office 450 (1873) .......... 22
Bush & Lane Piano Co. v. Becker Bros.:
222 F. 902 (2d Cir. 1915) ..................................... 20, 28, 29
234 F. 79 (2d Cir. 1916) ............................13, 20, 21, 27, 29
Carey v. Piphus, 435 U.S. 247 (1978) .................................. 15
Catalina Lighting, Inc. v. Lamps Plus, Inc.,
295 F.3d 1277 (Fed. Cir. 2002) ........................................... 14
Commil USA, LLC v. Cisco Sys., Inc., 135 S. Ct.
1920 (2015) ........................................................................... 24
Exhibit 1
Page 4 of 42
CasesContinued: Page
Dobson v. Dornan, 118 U.S. 10 (1886) ................................. 11
Dobson v. Hartford Carpet Co., 114 U.S. 439 (1885).... 11, 12
Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665
(Fed. Cir. 2008), cert. denied, 556 U.S. 1167
(2009) .......................................................................... 3, 28, 30
Forest Grove Sch. Dist. v. T.A., 557 U.S. 230
(2009) .................................................................................... 23
Gorham Co. v. White, 81 U.S. (14 Wall.) 511
(1872) .................................................................2, 3, 18, 26, 30
Graver Tank & Mfg. Co. v. Linde Air Prods. Co.,
339 U.S. 605 (1950).............................................................. 29
Hadden, In re, 20 F.2d 275 (D.C. Cir. 1927) ....................... 18
Hana Fin., Inc. v. Hana Bank, 135 S. Ct. 907 (2015) ....... 30
Horvath v. McCord Radiator & Mfg. Co., 100 F.2d
326 (6th Cir. 1938), cert. denied, 308 U.S. 581 (1939) ...... 31
Hruby, In re, 373 F.2d 997 (C.C.P.A. 1967) ........................ 17
Johnson v. Johnston, 60 F. 618 (C.C.W.D. Pa. 1894) ........ 18
Kapp, Ex parte, 83 Off. Gaz. Pat. Office 1993 (1898) ......... 22
Kellman v. Coca-Cola Co., 280 F. Supp. 2d 670 (E.D.
Mich. 2003)............................................................................. 4
Lorillard v. Pons, 434 U.S. 575 (1978) ................................ 23
Markman v. Westview Instruments, Inc., 517 U.S.
370 (1996) ............................................................................. 28
Medtronic, Inc. v. Mirowski Family Ventures, LLC,
134 S. Ct. 843 (2014) ........................................................... 31
Nike, Inc. v. Wal-Mart Stores, Inc., 138 F.3d 1437
(Fed. Cir. 1998), cert. denied, 528 U.S. 946 (1999) .......... 13
Nordock, Inc. v. Systems Inc., 803 F.3d 1344
(Fed. Cir. 2015), petition for cert. pending,
No. 15-978 (filed Jan. 28, 2016) ............................................ 5
Pullman Couch Co. v. Union, 39 U.S.P.Q. 100
(D. Md. 1938) ....................................................................... 22
Exhibit 1
Page 5 of 42
VI
CasesContinued: Page
Riley v. California, 134 S. Ct. 2473 (2014) ............................ 5
SEC v. Teo, 746 F.3d 90 (3d Cir.), cert. denied,
135 S. Ct. 675 (2014) ........................................................... 31
Schnell, In re, 46 F.2d 203 (C.C.P.A. 1931) .......................... 3
Sheldon v. Metro-Goldwyn Pictures Corp.,
309 U.S. 390 (1940).............................................................. 27
Simpson v. Davis, 12 F. 144 (E.D.N.Y. 1882) .................... 22
SmithKline Diagnostics, Inc. v. Helena Labs. Corp.,
926 F.2d 1161 (Fed. Cir. 1991) ........................................... 30
Tilghman v. Proctor, 125 U.S. 136 (1888) ........................... 14
Untermeyer v. Freund, 58 F. 205 (2d Cir. 1893) ................ 12
WMS Gaming Inc. v. WPC Prods. Ltd., 542 F.3d 601
(7th Cir. 2008) ...................................................................... 13
Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205
(2000) ...................................................................................... 2
Young v. Grand Rapids Refrigerator Co., 268 F. 966
(6th Cir. 1920) ................................................................ 21, 28
Statutes and regulation:
Act of Feb. 4, 1887, ch. 105, 24 Stat. 387 ............................. 12

1, 24 Stat. 387 ................................................................ 12
2, 24 Stat. 388 ................................................................ 14
Patent Act of July 8, 1870, ch. 230, 55, 16 Stat. 206 ........ 14
Patent Act of 1952:
35 U.S.C. 2(a)(1)................................................................. 1
35 U.S.C. 2(b)(8) ................................................................ 1
35 U.S.C. 101 .................................................................... 17
35 U.S.C. 112(b) ................................................................. 3
35 U.S.C. 171 .................................................... 1, 17, 19, 21
35 U.S.C. 171(a) ................................................................. 2
35 U.S.C. 171(b) ............................................................. 2, 3
Exhibit 1
Page 6 of 42
VII
Statutes and regulationContinued: Page

35 U.S.C. 271 ...................................................................... 3
35 U.S.C. 283 .................................................................... 14
35 U.S.C. 284 ............................................................ 4, 5, 14
35 U.S.C. 289 ........................................................... passim
Rev. Stat. 4929 (1878) ......................................................... 21
15 U.S.C. 1125(a) ..................................................................... 2
17 U.S.C. 504(b) ..................................................................... 13
37 C.F.R. 1.153(a) .................................................................... 3
Miscellaneous:
Blacks Law Dictionary:
(1st ed. 1891) .................................................................... 17
(10th ed. 2014) .................................................................. 17
8 Donald S. Chisum, Chisum on Patents (2014) .... 2, 3, 4, 18
P.J. Federico, Commentary on the New Patent Act,
75 J. Pat. & Trademark Off. Socy (1993) ......................... 13
H.R. Rep. No. 1966, 49th Cong., 1st Sess. (1886) ... 12, 16, 25
Giuseppe Macri, Patent Trolls Are Already Abusing
the Apple v. Samsung Ruling, InsideSources
(Oct. 1, 2015), http://www.insidesources.com/
patent-trolls-are-already-abusing-the-apple-v-
samsung-ruling/ .................................................................. 24
1 James A.H. Murray, A New English Dictionary
(1888) .................................................................................... 17
Patent Law Codification and Revision: Hearings
on H.R. 3760 Before Subcomm. No. 3 of the Comm.
on the Judiciary, 82d Cong., 1st Sess. (1951) .................. 13
1 William C. Robinson, The Law of Patents for Use-
ful Inventions (1890) .......................................................... 18
S. Rep. No. 206, 49th Cong., 1st Sess. (1886)...................... 12
The American Heritage Dictionary (3d ed. 1992) ............. 11
Exhibit 1
Page 7 of 42
VIII
MiscellaneousContinued: Page
11 The Oxford English Dictionary (1st ed. 1933) .............. 11
U.S. Patent & Trademark Office, Manual of Patent
Examining Procedure (rev. 9th ed. 2015) ............... 2, 3, 28
Websters New International Dictionary of the
English Language (W.T. Harris ed., 1917)...................... 17
Exhibit 1
Page 8 of 42
In the Supreme Court of the United States

No. 15-777
SAMSUNG ELECTRONICS CO., LTD., ET AL., PETITIONERS
v.
APPLE INC.
ON WRIT OF CERTIORARI
TO THE UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT
BRIEF FOR THE UNITED STATES

AS AMICUS CURIAE SUPPORTING NEITHER PARTY
INTEREST OF THE UNITED STATES

This case involves the proper interpretation of 35
U.S.C. 289, which mandates the award of an infring-
ers total profit as a remedy for infringement of a
design patent issued pursuant to 35 U.S.C. 171. The
United States Patent and Trademark Office (PTO) is
responsible for issuing patents andthrough the
Secretary of Commerceadvising the President on
issues of patent policy. See 35 U.S.C. 2(a)(1) and
(b)(8). Several other agencies of the federal govern-
ment also have a strong regulatory interest in the
efficacy of the patent system. The United States
therefore has a substantial interest in the Courts
disposition of this case.
STATEMENT
1. a. Since 1842, the patent laws have authorized
the issuance of patents not only for useful inventions,
(1)
Exhibit 1
Page 9 of 42
but also for ornamental designs. Gorham Co. v.

White, 81 U.S. (14 Wall.) 511, 524 (1872). Section
171(a) of Title 35 of the United States Code provides
that [w]hoever invents any new, original and orna-
mental design for an article of manufacture may ob-
tain a patent therefor, subject to the conditions and
requirements of this title. 35 U.S.C. 171(a). A pa-
tentable design is not an abstract impression, or
picture, but rather an aspect given to * * * [an]
article of manufacture that gives a peculiar or dis-
tinctive appearance to the manufacture. Gorham, 81
U.S. at 524-525. Design patents thus protect the inno-
vative appearance given to an article of manufacture,
fill[ing] a gap between copyright protection for au-
thors and patent protection for inventors in the me-
chanical arts. 1 8 Donald S. Chisum, Chisum on Pa-
tents 23.02, at 23-6 (2014) (Chisum). To qualify for
protection, a design must present an aesthetically
pleasing appearance that is not dictated by function
alone, and must satisfy the other criteria of patenta-
bility, such as novelty and non-obviousness. Bonito
Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141,
148 (1989); see 35 U.S.C. 171(b).
A design patent must contain a single claim stating
that the patent claims an ornamental design for a
particular article of manufacture, as shown in
drawings contained in the specification. PTO, Manual
of Patent Examining Procedure (MPEP) 1503.01,
1
Design patents are also distinct from trade dress, which pro-
tects a distinctive visual appearance of a product as a unique signi-
fier of the source of goods. Design patents protect designs without
regard to whether consumers associate a specific design with a
particular source of goods. See 15 U.S.C. 1125(a); Wal-Mart
Stores, Inc. v. Samara Bros., 529 U.S. 205, 214 (2000).
Exhibit 1
Page 10 of 42
Subsec. III (rev. 9th ed. 2015); see 37 C.F.R. 1.153(a).

Subject to the definiteness requirement applicable to
all patent applications, 35 U.S.C. 112(b), a design
patentee has substantial latitude in designating the
article to which the design is intended to be applied.
MPEP 1503.01.
In defining the scope of the claimed design, the pa-
tent applicant may use drawings, figures, or photo-
graphs, as well as a written description. In a drawing,
the design itself is depicted in solid black lines, while
broken lines are used to depict structures that are not
part of the claimed design but are necessary to show
the designs environment. See MPEP 1503.02. A
patented design may be a surface design such as an
ornament, impression, print, or picture, or it may
be the design for a shape or configuration for an
article of manufacture. In re Schnell, 46 F.2d 203,
209 (C.C.P.A. 1931).
b. A design patent is infringed when a defendant
makes, uses, offers to sell, or sells a product contain-
ing a design that is substantially similar to the patent-
ed design. Gorham, 81 U.S. at 528; Egyptian God-
dess, Inc. v. Swisa, Inc., 543 F.3d 665, 678 (Fed. Cir.
2008) (en banc), cert. denied, 556 U.S. 1167 (2009); see
35 U.S.C. 171(b), 271. In determining whether in-
fringement has occurred, the factfinder focuses on
whether the accused article embod[ies] the patented
design or any colorable imitation thereof. See Egyp-
tian Goddess, 543 F.3d at 678 (citation omitted; brack-
ets in original). 2
2
In virtually all the reported cases, the accused article is of the
same nature as the patented one. 8 Chisum 23.05[2], at 23-186.
If a design were applied to an article different from the one claimed
in the patent, the existence of infringement would turn on the nature
Exhibit 1
Page 11 of 42
If the defendant in a design-patent case is found li-

able for infringement, the patent holder has a choice
of remedies. Section 284, which applies to both utility
and design patents, authorizes an award of 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. 35 U.S.C.
284. Section 289, the provision at issue in this case,
establishes an alternative remedy for infringement of
a design patent:
Whoever during the term of a patent for a design,
without license of the owner, (1) applies the patent-
ed 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 manufac-
ture to which such design or colorable imitation has
been applied shall be liable to the owner to the ex-
tent of his total profit, but not less than $250, re-
coverable in any United States district court having
jurisdiction of the parties.
35 U.S.C. 289. Section 289 further provides that the
availability of this remedy does not prevent, lessen,
or impeach any other remedy which an owner of an
of the design and the articles in question. If the design involves

surface ornamentation, such as a drawing intended to be placed on a
watch face, a clock emblazoned with the same design might be
infringing. Id. at 23-186 n.2. But if the design is for the shape of a
particular article, then transposing that design to a different article
might result in a substantial change in the appearance of the
design, thereby avoiding any question of infringement. Id.
23.05[2], at 23-186; see Kellman v. Coca-Cola Co., 280 F. Supp. 2d
670 (E.D. Mich. 2003) (no infringement when defendant reproduced
a design for the shape of a hat as a two-dimensional picture on t-
shirts).
Exhibit 1
Page 12 of 42
infringed patent has under [the Patent Act], but he

shall not twice recover the profit made from the in-
fringement. Ibid.; see Nordock, Inc. v. Systems Inc.,
803 F.3d 1344, 1353 (Fed. Cir. 2015) (a design patent-
ee must choose between damages under Section 284
and profits under Section 289), petition for cert. pend-
ing, No. 15-978 (filed Jan. 28, 2016).
2. Petitioners Samsung Electronics Co., Samsung
Electronics America, Inc., and Samsung Telecommu-
nications America, LLC (collectively, Samsung) com-
pete with respondent Apple Inc. in the market for
smartphonesthat is, cell phone[s] with a broad
range of other functions based on advanced computing
capability, large storage capacity, and Internet con-
nectivity. Riley v. California, 134 S. Ct. 2473, 2480
(2014); see Pet. App. 4a-5a. As relevant here, re-
spondent holds three design patents related to its
2007 iPhone. Those patents claim a black rectangular
round-cornered front face of a phone; a phones front
face as well as a bezel surrounding the faces rim; and
a grid of sixteen colorful icons on a black screen. Pet.
App. 19a-20a.
In 2011, respondent sued petitioners for patent in-
fringement, alleging that various Samsung smart-
phones infringed Apples design and utility patents
and diluted Apples trade dresses. Pet. App. 4a. After
a trial, a jury found, inter alia, that petitioners had
infringed respondents design patents. Id. at 57a-61a. 3
Invoking Section 289, respondent sought an award
of petitioners total profits from the sale of the in-
3
The jury also found dilution of respondents trade dresses and
infringement of its utility patents. Pet. App. 4a. The court of ap-
peals affirmed the utility-patent verdict and damages, and vacated
the trade-dress verdict. Ibid. Those rulings are not at issue here.
Exhibit 1
Page 13 of 42
fringing phones. Petitioners asserted two objections

to that measure of relief. First, petitioners argued
that, under basic causation principles, they should
be liable only for profits attributable to the infringing
design, as opposed to other attributes of the phones.
Pet. App. 27a, 133a. Second, petitioners argued in
their pretrial brief that profits disgorgement [must]
be limited to the article of manufacture to which a
patented design is applied, and that the relevant
article[s] of manufacture in this case were compo-
nents of the phones, rather than the phones them-
selves. D. Ct. Doc. No. 1322, at 19 (July 25, 2012)
(Pets. Trial Br.). Petitioners submitted proposed jury
instructions that embodied those principles, but the
district court rejected the proposed instructions on
the ground that theres no apportionment for Sam-
sung profits in design patent cases. J.A. 246.
The district court instructed the jury that [i]f you
find infringement by any Samsung defendant * * *
you may award Apple that Samsung Defendants total
profit attributable to the infringing products. Pet.
App. 165a. The jury awarded respondent all the prof-
its that petitioners had received on sales of the in-
fringing phones. Pet. 16. After a partial retrial on
damages resulting from errors not relevant here, the
district court entered a final judgment awarding re-
spondent nearly $1 billion in damages for design-
patent infringement and trade-dress dilution. Pet.
App. 5a.
3. The Federal Circuit affirmed the jurys finding
of design-patent infringement and the award of peti-
tioners total profit on the infringing phones. Pet.
App. 26a-29a. The court first rejected petitioners
argument that the award under Section 289 should
Exhibit 1
Page 14 of 42
have been limited to profits attributable to the in-

fringement, holding that the clear statutory language
[of Section 289] prevents us from adopting a causa-
tion rule. Id. at 28a. The court next rejected peti-
tioners argument that, for purposes of calculating the
appropriate award under Section 289, the infringing
article[s] of manufacture were the phones exterior
shells and the array of icons displayed on the phones
screens rather than the phones as sold to the public.
Id. at 29a. The court concluded that [t]he innards of
[petitioners] smartphones were not sold separately
from their shells as distinct articles of manufacture to
ordinary purchasers, and that respondent was there-
fore entitled to petitioners entire profits from the
infringing phones. Ibid.
SUMMARY OF ARGUMENT
I. Section 289 states that a person who applies a
patented design to any article of manufacture for the
purpose of sale, or who sells any article of manufac-
ture to which the patented design has been applied,
shall be liable to the [patent] owner to the extent of
his total profit. 35 U.S.C. 289. That language unam-
biguously permits a patent holder to recover the in-
fringers entire profits from the article of manufac-
ture to which the design was applied, regardless of
the extent to which those profits are attributable to
the infringing design. The history of Section 289s
development confirms that understanding.
II. Although Section 289 entitles the patent holder
to recover the infringers total profit on the article
of manufacture to which the design was applied, that
article of manufacture will not always be the fin-
ished product that is sold in commerce. Rather, the
relevant article will sometimes be a component of the
Exhibit 1
Page 15 of 42
ultimate item of sale. In such cases, the patentee is

entitled only to the infringers total profit for that
component, not its total profit for the finished item.
A. Section 289s text and history establish that an
article of manufacture may be a component of a
product as sold. During the late nineteenth and early
twentieth centuries, the Patent Office and the courts
construed the term article of manufacture, as used
in Section 289s predecessor, to include components
that were intended to be sold and used only as parts of
a larger product. Congress should be understood to
have adopted that construction when it reenacted the
total profit remedy as Section 289 in the Patent Act
of 1952. 35 U.S.C. 289.
The Federal Circuits contrary approach, under
which the relevant article of manufacture is invaria-
bly the entire product as sold, would result in grossly
excessive and essentially arbitrary awards. Under
that approach, when the plaintiffs patented design is
applied to a component of a multi-component product,
the award will turn substantially on the scope and
profitability of other components as to which no in-
fringement occurred. To be sure, Section 289s total
profit standard, which precludes any inquiry into
what portion of the profits on a particular article of
manufacture are attributable to the infringing de-
sign, may sometimes produce awards that exceed the
commercial benefit that the infringer derived by ap-
propriating the patented design. But there is no rea-
son to exacerbate those effects, which follow inevita-
bly from the unambiguous statutory text, by adopting
an overbroad reading of the term article of manufac-
ture.
Exhibit 1
Page 16 of 42
B. Identifying the relevant article of manufac-

ture entails a case-specific analysis of the relation-
ship among the design, the product, and any compo-
nents. The factfinder should identify the article in
which the design prominently features, and that most
fairly may be said to embody the defendants appro-
priation of the plaintiffs innovation. Relevant consid-
erations include the scope of the claimed design, the
extent to which the design determines the appearance
of the product as a whole, the existence of unrelated,
conceptually distinct elements in the product, the
extent to which various components can be physically
separated from the product as a whole, and the man-
ner in which the components were manufactured.
While the plaintiff bears the ultimate burden of estab-
lishing the infringers total profit, the defendant, as
the manufacturer or seller of the product in question,
should bear the burden of identifying any component
that it views as the relevant article of manufacture.
C. This Court should remand the case to allow the
courts below to determine whether a new trial is war-
ranted. Although the district courts jury instructions
equated the term article of manufacture with the
finished smartphones, it is unclear whether petition-
ers produced evidence supporting their assertions
that components of the phones should be considered
the relevant articles of manufacture. The lower courts
should be permitted to make that determination in the
first instance.
ARGUMENT
Under Section 289, whoever applies [a] patented
design, or any colorable imitation thereof, to any arti-
cle of manufacture for the purpose of sale * * * shall
be liable to the owner to the extent of his total profit.
Exhibit 1
Page 17 of 42
10
35 U.S.C. 289. This case presents the question wheth-

er, when an infringing design is embodied in a multi-
component product, the total profit awarded may
ever be less than the infringers total profit on the
complete product as it was sold to end-users. The
answer to that question is yes.
Once the relevant article of manufacture has
been identified, Section 289 renders the infringer
liable for all its profits for that article; the court or
jury may not award a lower amount on the theory that
only a portion of those profits are attributable to the
patented design. Contrary to the Federal Circuits
apparent conclusion, however, the relevant article of
manufacture need not always be the finished product
as sold to end-users. Where the relevant article of
manufacture is a component or portion of a multi-
component product, the infringers total profit for
that article may be less than its profit for the fin-
ished item of sale.
I. SECTION 289 AUTHORIZES A PATENT OWNER TO
RECOVER AN INFRINGERS TOTAL PROFIT FROM
AN INFRINGING ARTICLE OF MANUFACTURE
Section 289 establishes a disgorgement remedy in
cases where an infringer has sold an article of manu-
facture to which a patented design has been applied.
As we explain below (see pp. 16-31, infra), the rele-
vant article of manufacture will sometimes be the
entire product as sold in commerce, but it will some-
times be only a component or portion of that product.
Once the relevant article of manufacture has been
identified, however, Section 289 makes the infringer
liable for all the profits it received from sales of that
article, even if the articles other attributes contribut-
ed to those profits.
Exhibit 1
Page 18 of 42
11
A. Section 289 Does Not Permit Apportionment Based On

The Extent To Which The Infringers Profit On The
Relevant Article Of Manufacture Was Attributable
To The Infringing Design
1. Section 289 provides that whoever applies the
patented design * * * to any article of manufacture
for the purpose of sale, or sells or exposes for sale
any article of manufacture to which such design has
been applied, shall be liable to the owner to the ex-
tent of his total profit. 35 U.S.C. 289. The phrase
total profit is not ambiguous: total means the
entirety. The American Heritage Dictionary 1892
(3d ed. 1992); 11 The Oxford English Dictionary 176
(1st ed. 1933) (defining total as whole, entire).
The source of the total profit to which the patent
holder is entitled is equally clear. The conduct that
triggers liability under Section 289 is (1) applying a
patented design to an article of manufacture for the
purpose of sale, or (2) selling an article to which the
design has been applied. The total profit for which
the seller of infringing goods is liable is therefore the
total profit from the sale of the article of manufacture
to which the design has been applied.
2. The historical development of Section 289 and
its statutory predecessors confirms that understand-
ing. Section 289s total profit standard reflects Con-
gresss rejection of a series of decisions in which this
Court had held that a design patentee was entitled to
recoup only those profits that were attributable to
the use of the infringing design itself. Dobson v.
Dornan, 118 U.S. 10, 17 (1886); see Dobson v. Hart-
ford Carpet Co., 114 U.S. 439, 444 (1885) (Dobson I).
The defendants in the Dobson cases had sold carpets
with infringing designs. The Court held that the de-
Exhibit 1
Page 19 of 42
12
fendants were liable for only nominal damages be-

cause the patentees were unable to establish the por-
tion of their lost profits that was attributable to the
patented design, as opposed to the unpatented aspects
of the carpet. Dobson I, 114 U.S. at 444.
In response, Congress enacted a new rule of re-
covery for design patents. S. Rep. No. 206, 49th
Cong., 1st Sess. 2 (1886). The Act of February 4, 1887
(1887 Act), ch. 105, 24 Stat. 387, provided that any
person who applied a patented design to any article
of manufacture for the purpose of sale would be lia-
ble in the amount of two hundred and fifty dollars,
and if the total profit made by him * * * exceeds
the sum of two hundred and fifty dollars, he shall be
further liable for the excess of such profit. 1, 24
Stat. 387. The House Report explained that the new
provision would abrogate the Dobson decisions and
would permit the patentee to recover the infringers
entire profit on the article. H.R. Rep. No. 1966, 49th
Cong., 1st Sess. 3 (1886) (House Report); see id. at 1-2
(discussing Dobson I). Congress deemed that change
necessary and appropriate because, although the
design of an article like a carpet sells the article, id.
at 3, patentees would find it difficult to establish the
portion of an infringers profit that was directly due
to the appearance of those articles as distinguished
from their material, their fabric, [and] their utility,
id. at 2. Accordingly, in the ensuing decades, courts
understood the 1887 Acts manifest purpose to be
to declare that the measure of profits recoverable on
account of the infringement should be considered to
be the total net profits upon the whole article. Un-
termeyer v. Freund, 58 F. 205, 212 (2d Cir. 1893);
Exhibit 1
Page 20 of 42
13
Bush & Lane Piano Co. v. Becker Bros., 234 F. 79, 83

(2d Cir. 1916) (Piano II).
In 1952, when Congress reenacted the total profit
standard in Section 289, it did not materially alter the
statutory text or suggest any disagreement with the
settled understanding of that language. 4 See Patent
Law Codification and Revision: Hearings on H.R.
3760 Before Subcomm. No. 3 of the Comm. on the
Judiciary, 82d Cong., 1st Sess. 109-110 (1951) (state-
ment of P.J. Federico, U.S. Patent Office) (explaining
that a materially similar draft of the statute merely
puts [the design-patent provisions] in [their] place
without attempting to make any changes in the stat-
ute); accord P.J. Federico, Commentary on the New
Patent Act, 75 J. Pat. & Trademark Off. Socy 161,
202-203 (1993). The Federal Circuit has accordingly
recognized that Section 289, like its predecessor, enti-
tles a design-patent owner to an infringers entire
profits from the sale of the infringing article of manu-
facture. See, e.g., Nike, Inc. v. Wal-Mart Stores, Inc.,
138 F.3d 1437, 1441 (1998), cert. denied, 528 U.S. 946
(1999). 5
4
While the 1887 Act was limited to knowing infringement, Con-
gress omitted the knowledge requirement in Section 289. 35
U.S.C. 289.
5
Section 289s total profit measure of recovery is unique in
intellectual property law. In copyright and trademark cases, the
plaintiff is entitled to recover the infringers profits only to the
extent they are attributable to the infringement. 17 U.S.C. 504(b);
WMS Gaming Inc. v. WPC Prods. Ltd., 542 F.3d 601, 607 (7th Cir.
2008). In utility-patent cases, the Patent Act does not permit the
recovery of an infringers profits. The patent laws previously
authorized that remedy, however, and the Court construed the
relevant provision to encompass only those profits attributable to
Exhibit 1
Page 21 of 42
14
B. Petitioners Identify No Sound Basis For Construing

Section 289 To Allow An Award Of Less Than the In-
fringers Total Profit From The Relevant Article Of
Manufacture
Petitioners contend (Br. 34) that recoverable prof-
its under Section 289 are limited to those attributable
to infringement of the patented design. That argu-
ment is unpersuasive.
1. Petitioners rely primarily on Section 289s sec-
ond paragraph, which states that [n]othing 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); see 1887 Act 2, 24
Stat. 388 (similar). That language clarifies that, while
Section 289 supplements the generally applicable rem-
edies authorized by other Patent Act provisions, it
does not permit the patentee to combine those reme-
dies to obtain a double recovery. A design patentee
(like a utility patentee) may seek an injunction, 35
U.S.C. 283, or damages adequate to compensate for
the infringement, but in no event less than a reasona-
ble royalty, 35 U.S.C. 284. Section 289s second par-
agraph accordingly specifies that, if the patentee
obtains the infringers profits under Section 289, it
may not recover additional monetary damages under
Section 284 for the same acts of infringement. See
Catalina Lighting, Inc. v. Lamps Plus, Inc., 295 F.3d
1277, 1291 (Fed. Cir. 2002).
the infringement. Patent Act of July 8, 1870, ch. 230, 55, 16 Stat.
206; see Tilghman v. Proctor, 125 U.S. 136, 146 (1888).
Exhibit 1
Page 22 of 42
15
In petitioners view, the second paragraphs refer-

ence to profit made from the infringement has the
additional function of implicitly limiting the total
profit recoverable under Section 289 to profit at-
tributable to the infringing design. Br. 34. That con-
struction should be rejected because it places the two
paragraphs of Section 289 at cross-purposes with each
other. Congress enacted the total profit standard
now contained in Section 289s first paragraph to
relieve the patentee of the burden of demonstrating
the portion of the infringers profit that is attributable
to the infringement. See p. 12, supra.
2. Petitioners also rely (Br. 35-39) on traditional
principles of causation and equity, arguing that Sec-
tion 289 is not sufficiently clear to abrogate the
common-law rule that compensation is limited to the
injury caused to plaintiff by defendants breach of
duty. Br. 36 (quoting Carey v. Piphus, 435 U.S. 247,
254-255 (1978)). Petitioners reliance on those back-
ground principles is misplaced. The whole point of the
total profit standard is to provide a measure of re-
covery different from, and in many cases more expan-
sive than, the award that traditional causation princi-
ples would produce. To be sure, in cases where the
relevant article of manufacture is not sold separate-
ly but is instead a component of a larger product,
identifying the infringers profit on that article may
require an inquiry that is functionally similar to a
traditional causation analysis. There is nevertheless a
significant conceptual and practical difference be-
tween the profit attributable to the infringing article
and the profit attributable to the infringement.
Exhibit 1
Page 23 of 42
16
II. TO CALCULATE THE TOTAL PROFIT DUE UNDER

SECTION 289, THE FACTFINDER MUST IDENTIFY
THE ARTICLE OF MANUFACTURE TO WHICH THE
INFRINGING DESIGN HAS BEEN APPLIED, AND
THAT ARTICLE WILL NOT ALWAYS BE THE FIN-
ISHED PRODUCT SOLD TO END-USERS
To calculate the total profit for which the infring-
er is liable, the factfinder must first identify the arti-
cle of manufacture to which the patented design has
been applied. 35 U.S.C. 289. The court below appears
to have assumed that the relevant article of manufac-
ture is necessarily the final product as sold in com-
merce. Pet. App. 29a. That is incorrect.
When Congress first adopted the total profit
standard, it was responding to concerns raised about a
specific set of productscarpets, wallpaper, and the
likethat are composed of a single component.
House Report 3; see pp. 11-12, supra. When an in-
fringing design is applied to that sort of product, there
is only one possible article of manufacturethe
complete product as sold to end-users. But nothing in
Section 289s text or history suggests that the rele-
vant article of manufacture must invariably be the
product as sold. To the contrary, the term article of
manufacture literally encompasses all manufactured
objectsboth complete products and components
and it has historically been understood to include
both. When the product whose sale gives rise to in-
fringement liability is made up of multiple compo-
nents, the factfinder must determine whether the
article of manufacture to which the defendant has
applied the patented design is the entire product as
sold, or a component of that product.
Exhibit 1
Page 24 of 42
17
A. The Relevant Article Of Manufacture For Purposes

Of Section 289 May Be A Component Of A Multi-
Component Product
1. The term article of manufacture is broad enough
to include components of a complete product
The term manufacture broadly includes [a]ny
useful product made directly by human labor, or by
the aid of machinery directed and controlled by hu-
man power. Blacks Law Dictionary 751 (1st ed.
1891); accord Blacks Law Dictionary 1109 (10th ed.
2014). The phrase article of denotes an example of a
category of things: [s]omething considered by itself
and as apart from other things of the same kind or
from the whole of which it forms a part; also, a thing
of a particular class or kind. Websters New Interna-
tional Dictionary of the English Language 131 (W.T.
Harris ed., 1917) (example: an article of merchan-
dise); accord 1 James A.H. Murray, A New English
Dictionary 471 (1888). The phrase article of manu-
facture therefore encompasses any item that is made
by human labor, including manufactured items that
are not sold as separate commodities but instead func-
tion as components of a larger product.
That conclusion is reinforced by the construction
given to the identical phrase in Section 171, which
authorizes the PTO to issue patents on designs for
article[s] of manufacture. 35 U.S.C. 171. That pro-
vision, in turn, echoes Section 101, which provides that
an inventor may obtain a utility patent on any new
and useful * * * manufacture. 35 U.S.C. 101.
Courts have long understood Section 171s reference
to an article of manufacture to include any article
that would fall within the definition of manufacture
under Section 101. See In re Hruby, 373 F.2d 997,
Exhibit 1
Page 25 of 42
18
1000 (C.C.P.A. 1967); In re Hadden, 20 F.2d 275, 276

(D.C. Cir. 1927); 8 Chisum 23.03[2], at 23-12 to 23-
13. And this Court has construed the term manufac-
ture, as used in Section 101, broadly to include any-
thing made for use from raw or prepared materials.
American Fruit Growers, Inc. v. Brogdex Co., 283
U.S. 1, 11 (1931) (citation omitted); see Johnson v.
Johnston, 60 F. 618, 620 (C.C.W.D. Pa. 1894). As a
leading treatise explained in 1890, the term manufac-
ture is comprehensive enough to encompass the
parts of a machine considered separately from the
machine itself, all kinds of tools and fabrics, and every
other vendible substance which is neither a complete
machine nor produced by the mere union of ingredi-
ents. 1 William C. Robinson, The Law of Patents for
Useful Inventions 183, at 270 (1890).
2. Section 289 does not limit the types of articles that
may qualify as the relevant article of manufac-
ture
Although Section 289 refers to the sale of an ar-
ticle of manufacture, it does not suggest that the
article must always be the entire product as sold. The
relevant article of manufacture under Section 289 is
one to which the patented design has been applied,
i.e., one in or on which the design is embodied or dis-
played. See Gorham Co. v. White, 81 U.S. (14 Wall.)
511, 524-525 (1872). With respect to some multi-
component products, the finished product as sold in
commerce is most naturally viewed as the article to
which the patented design is applied. That will be
so if the peculiar or distinctive appearance (id. at
525) that constitutes the design predominates when
viewing all the components in combination. In other
cases, however, it is more natural to say that the de-
Exhibit 1
Page 26 of 42
19
sign has been applied to a single component, or to a

set of components that together are only a portion of
the product as sold.
Section 289 states that an infringer who applies a
patented design to an article of manufacture for the
purpose of sale, or who sells * * * any article of
manufacture to which the patented design has been
applied, is liable for his total profit. 35 U.S.C. 289.
Because the award of profits is premised on the sale
of the article of manufacture, the relevant article
must be capable of being sold. But if a particular
component is otherwise naturally characterized as the
article of manufacture to which the patented design
has been applied, the sale of the complete product in
commerce is properly viewed as a sale of the compo-
nent as well, since title to the component is trans-
ferred as an incident of the larger sale.
3. The judicial and administrative understanding of
the term article of manufacture has long includ-
ed components of products
In the decades preceding Congresss enactment of
Section 289 in the Patent Act of 1952, the courts and
the Patent Office construed the term article of manu-
facture, as used in the statutory predecessors to
Sections 289 and 171, to include components of larger
products. Congress should be understood to have
adopted that prevailing interpretation when it reen-
acted the total profit remedy in Section 289.
a. In the early twentieth century, courts of appeals
occasionally addressed the proper measure of profits
under the 1887 Act when the defendant applied an in-
fringing design to a multi-component product. Those
courts recognized that the phrase article of manufac-
ture included manufactured articles that functioned
Exhibit 1
Page 27 of 42
20
as components of a product, and that determining the

relevant article for purposes of calculating profits
involved a case-specific inquiry.
In 1915 and 1916, the Second Circuit held, in a pair
of cases known as the Piano Cases, that a piano
casei.e., the outer body of a piano, which gives the
piano its shape and houses its strings and hammers
that was sold with and as part of a piano was the
relevant article of manufacture for purposes of
calculating profits. Piano II, 234 F. at 81; see Bush &
Lane Piano Co. v. Becker Bros., 222 F. 902 (1915)
(Piano I). The defendant had sold pianos embodying
the plaintiffs ornamental design for a piano case, and
the district court awarded the profits on the piano
proper. Piano I, 222 F. at 904. In reversing that
decision, the court explained that it was necessary to
determine the article to which the design was ap-
plied by examining the relation to the business
whole of the part embodying the patent * * * from
all viewpoints, technical, mechanical, popular, and
commercial. Piano II, 234 F. at 81 (internal quota-
tion marks omitted).
Applying that framework to the evidence before it,
the Second Circuit concluded that the article to which
the patented design had been applied was the piano
case. Piano II, 234 F. at 82. The court acknowl-
edged that there was no separate market for the
piano case standing alone, divorced from the piano
mechanism. Id. at 83. It found, however, that the
piano case was a distinct article of manufacture
because the patentees innovation did not extend to
the pianos mechanism, which served a function dis-
tinct from that of the case. Id. at 81-82. Drawing an
analogy to a patent for a book binding * * * manu-
Exhibit 1
Page 28 of 42
21
factured with and for [a single] book, the court ex-

plained that, although the binding would have no
separate commercial existence apart from the liter-
ary work embodied in the book, it would be absurd to
award the patentee of the binding all profits from
sales of the book. Ibid.
Similarly in Young v. Grand Rapids Refrigerator
Co., 268 F. 966 (1920), the Sixth Circuit held that the
relevant article of manufacture was a door latch sold
as part of a refrigerator. Id. at 973-974. The plaintiff
held a patent on a design for the latch, and the de-
fendant sold refrigerators containing a latch that in-
fringed the design. While acknowledging that the re-
frigerator containing the latch was sold as a uni-
tary article, the court stated that it is not seriously
contended that all the profits from the refrigerator
belonged to [the plaintiff]. Id. at 974.
b. Both before and after the enactment of the 1887
Act, the Patent Office and the courts understood the
term article of manufacture, as used in the Patent
Acts provisions governing the issuance of design
patents, to permit the issuance of a patent on a com-
ponent of a product, even when that component would
not be sold separately. See Rev. Stat. 4929 (1878)
(authorizing the Patent Office to issue a design patent
for any original design for an article of manufac-
ture); 35 U.S.C. 171.
During the nineteenth and early twentieth centu-
ries, the Patent Office did not issue design patents on
products with parts that a user would ordinarily de-
tach or move, on the ground that the composite prod-
uct would not embody a single, unitary appearance
that could be patented as a design. See Ex parte
Adams, 84 Off. Gaz. Pat. Office 311, 311 (1898). The
Exhibit 1
Page 29 of 42
22
Office repeatedly emphasized, however, that an inven-

tor could obtain a design patent on a component part
of such a product, regardless of whether that compo-
nent could be sold or used separately. The Office thus
treated the component itself as an article of manufac-
ture that could be the subject of a design patent. See
ibid. (The several articles of manufacture of peculiar
shape which when combined produce a machine or
structure having movable parts may each separately
be patented as a design.). The Patent Office opined
on that basis that an inventor could obtain a design
patent on designs for one member or jaw of a pair of
tongs, Ex parte Kapp, 83 Off. Gaz. Pat. Office 1993,
1994 (1898); a glass bottle stopper designed to be used
with a particular inkstand, Ex Parte Brower, 4 Off.
Gaz. Pat. Office 450, 450 (1873); and each of two cast-
ings adapted to interlock and form a joint in a bed-
stead, Ex Parte Brand, 83 Off. Gaz. Pat. Office 747,
748 (1897).
Courts took the same view. In Pullman Couch Co.
v. Union, 39 U.S.P.Q. 100 (D. Md. 1938), the district
court held that a furniture post that is not sold, and
can not profitably be sold separately from the com-
plete sofa, was nonetheless a separate article of
manufacture because it was manufactured inde-
pendently of the rest of the sofa. Id. at 104; see Simp-
son v. Davis, 12 F. 144, 145-146 (E.D.N.Y. 1882) (stat-
ing in dicta that a cap of a railing post was likely a
distinct article because it was manufactured by
itself, even though it was never used except in con-
nection with other parts of the post).
c. Congress is presumed to be aware of an admin-
istrative or judicial interpretation of a statute and to
adopt that interpretation when it re-enacts a statute
Exhibit 1
Page 30 of 42
23
without change. Forest Grove Sch. Dist. v. T.A., 557

U.S. 230, 239-240 (2009) (quoting Lorillard v. Pons,
434 U.S. 575, 580 (1978)). Although questions con-
cerning what product or portion of a product should
be considered the relevant article of manufacture
did not arise frequently in the decades preceding the
passage of the Patent Act of 1952, courts and the
Patent Office consistently recognized that items sold
only as part of a larger product could count as arti-
cle[s] of manufacture. Congress should be under-
stood to have adopted that construction in reenacting
the total profit remedy as Section 289 in the Patent
Act of 1952.
4. Treating the complete product as the relevant ar-
ticle of manufacture in every case would often
produce greatly disproportionate infringement lia-
bility
The Federal Circuit concluded that respondent was
entitled to recover petitioners entire profits from
their sales of infringing smartphones because [t]he
innards of [petitioners] smartphones were not sold
separately from their shells as distinct articles of
manufacture to ordinary purchasers. Pet. App. 29a.
The court thus appeared to adopt a categorical rule
that the relevant article of manufacture under Sec-
tion 289 is always the finished product sold to end-
users. That construction of Section 289 will often
generate grossly disproportionate awards. Because
the term article of manufacture is readily suscepti-
ble of a narrower construction, the Federal Circuits
approach should be rejected.
From a potential defendants perspective, the con-
sequences of the Federal Circuits rule could be dra-
conian. That rule would mandate an award of total
Exhibit 1
Page 31 of 42
24
profit on the finished product even if the patented

design appears only on a single component that repre-
sents a small fraction of the innovation reflected in the
sold product and of that products overall commercial
appeal. That measure of total profit (e.g., on sales of
refrigerators) will often bear no meaningful relation-
ship to the gain the defendant has realized by appro-
priating a patented design (e.g., on a latch). And be-
cause patent infringement is a strict-liability tort, a
manufacturer could suffer that consequence even if it
did not deliberately copy the patented design.
In addition, many complex technological products
have multiple components that could implicate distinct
patented designs. If a single finished product in-
fringed multiple design patents, the Federal Circuits
approach could allow each patentee to seek an award
of the total profits on the product. That concern is
exacerbated by the possibility that patent-assertion
entities could use the threat of an award of profits on
the whole product as a sword to extract settlements,
even when their claims are frivolous. Commil USA,
LLC v. Cisco Sys., Inc., 135 S. Ct. 1920, 1930 (2015);
see Giuseppe Macri, Patent Trolls Are Already Abus-
ing the Apple v. Samsung Ruling, InsideSources (Oct.
1, 2015), http://www.insidesources.com/patent-trolls-
are-already-abusing-the-apple-v-samsung-ruling/.
To be sure, even in cases involving unitary (i.e.,
single-component) items of sale, Section 289s total
profit standard may sometimes produce awards that
are disproportionate to the commercial significance of
the patented design. Congress adopted the total
profit standard in the 1887 Act out of concern that,
even when a patented design in fact drives the de-
mand for a particular unitary article, the potential
Exhibit 1
Page 32 of 42
25
difficulty of proving the profits attributable to the

design may unfairly deprive the patentee of any mean-
ingful recovery. House Report 3. But while Congress
acted to prevent under-compensation of design pa-
tentees, Section 289s total profit standard has an
evident potential to over-compensate plaintiffs in
some cases. Where the relevant article of manufac-
ture is the finished product as sold in commerce,
Section 289 does not permit the infringer to show that
some or most of its profit is attributable to aspects of
the product (e.g., the quality of the materials used to
create it, or the skill with which it is manufactured)
other than the patented design. See pp. 11-15, supra.
The risk of disproportionate awards would be re-
duced still further if Section 289 allowed such inquir-
ies in unitary-article cases. But Congresss decision to
foreclose apportionment of profits in that circum-
stance provides no legal or logical basis for requiring
infringers to disgorge their entire profits on sales of
multi-component products simply because a single
component incorporated a patented design. The prac-
tical harms wrought by the Federal Circuits interpre-
tation are likely to be much more extreme than any
that may occur in unitary-article cases, and the text of
Section 289 provides a sound basis for distinguishing
between the two situations.
B. Identifying The Relevant Article Of Manufacture Is
A Task For the Finder Of Fact Under The Totality Of
The Circumstances
1. a. Calculating the award of total profit under
Section 289 requires the factfinder to identify the
has been applied. 35 U.S.C. 289. A patentable design
is one that gives a peculiar or distinctive appearance
Exhibit 1
Page 33 of 42
26
to the manufacture, or article to which it may be ap-

plied. Gorham, 81 U.S. at 525. In some cases it will
be clear that the patented design gives a peculiar or
distinctive appearance only to a component (e.g., a
refrigerator latch) of a larger product sold in com-
merce, rather than to the product as a whole. There
will sometimes be legitimate doubt, however, whether
a patented design is best viewed as affecting the ap-
pearance of the sold product as a whole or only the
appearance of a component or other portion of that
product. If the design in question is the shape of the
Volkswagen Beetle, for example, one might reasona-
bly say either that the design determines the appear-
ance of the automobiles body or that it determines the
appearance of the car as a whole.
In conducting this inquiry, the factfinders over-
arching objective should be to identify the article that
most fairly may be said to embody the defendants
appropriation of the plaintiffs innovation. That
framework anchors the inquiry in Section 289s pur-
pose, which is to provide the patentee with a remedy
for (and to prevent the infringer from profiting from)
the unlawful appropriation. In determining whether
the relevant article is the entire product or a compo-
nent, the factfinder therefore should keep in mind the
scope of the plaintiffs innovation and should identify
the article in which the patented design prominently
features, without unnecessarily sweeping in aspects of
the product that are unrelated to that design.
That approach is not inconsistent with Section
289s elimination of the requirement that the patentee
demonstrate that the profits in question are attributa-
ble to the infringement. In Section 289, Congress
deviated from that general rule of causation because it
Exhibit 1
Page 34 of 42
27
was concerned that applying that principle to design

patents would often under-compensate patentees. See
pp. 12, 24-25, supra. Congress did not render the
infringer liable for its total profit on the final sold
product, however, but only for its total profit on the
was wrongfully applied. In cases where the identity of
the relevant article of manufacture is otherwise
open to reasonable dispute, the factfinder may legiti-
mately consider which characterization would appro-
priately compensate (rather than over-compensate)
the patentee for the contribution of the patented de-
sign to the value of the infringers finished product.
See, e.g., Sheldon v. Metro-Goldwyn Pictures Corp.,
309 U.S. 390, 402-408 (1940) (discussing principles
applied by equity courts in awarding profits for patent
and copyright infringement). When a product is com-
posed of distinct components, choosing the article that
most fairly embodies the plaintiffs invention will help
to ensure that neither party will have what justly
belongs to the other. Id. at 408.
b. The article of manufacture inquiry entails a
case-specific examination of the relationship among
the design, any relevant components, and the product
as a whole. See Piano II, 234 F. at 81. Several con-
siderations are relevant to the inquiry.
First, the scope of the design claimed in the plain-
tiffs patent, including the drawing and written de-
scription, provides insight into which portions of the
underlying product the design is intended to cover,
and how the design relates to the product as a whole. 6
6
In an infringement suit, the court determines the proper con-
struction of the patent claims, and the jury determines, based on
the courts construction, whether the defendant has infringed the
Exhibit 1
Page 35 of 42
28
See, e.g., Piano I, 222 F. at 903-904; Grand Rapids

Refrigerator, 268 F. at 974. In addition, the patent
identifies the article of manufacture that the patentee
views as the article to which the design is applied.
MPEP 1503.01. In some cases, the patent will indi-
cate that the design is intended to be applied to a
component of the product. See Piano I, 222 F. at 904
(relying on fact that inventor received a patent for a
piano case and not for a piano). But the factfinder
should not treat the patents designation of the article
as conclusive. The inventor of a piano-case design, for
instance, should not be able to obtain profits on the
piano as a whole simply by characterizing his inven-
tion as an ornamental design for a piano.
Second, the factfinder should examine the relative
prominence of the design within the product as a
whole. If the design is a minor component of the
product, like a latch on a refrigerator, or if the prod-
uct has many other components unaffected by the
design, that fact suggests that the article should be
the component embodying the design. Conversely, if
the design is a significant attribute of the entire prod-
uct, affecting the appearance of the product as a
whole, that fact might suggest that the article
should be the product.
Third, and relatedly, the factfinder should consider
whether the design is conceptually distinct from the
product as a whole. As the Second Circuit explained
patent. See Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665,
679 (Fed. Cir. 2008) (en banc), cert. denied, 556 U.S. 1167 (2009);
see also Markman v. Westview Instruments, Inc., 517 U.S. 370,
372 (1996). In identifying the relevant article of manufacture
under Section 289, the jury can similarly take into account the
courts construction of the claims.
Exhibit 1
Page 36 of 42
29
in Piano II, a book binding and the literary work

contained within it respond to different concepts;
they are different articles. 234 F. at 82. If the prod-
uct contains other components that embody conceptu-
ally distinct innovations, it may be appropriate to
conclude that a component is the relevant article.
Fourth, the physical relationship between the pa-
tented design and the rest of the product may reveal
that the design adheres only to a component of the
product. If the design pertains to a component that a
user or seller can physically separate from the prod-
uct as a whole, that fact suggests that the design has
been applied to the component alone rather than to
the complete product. See, e.g., Piano I, 222 F. at
904; Brand, 83 Off. Gaz. Pat. Office at 748. The same
is true if the design is embodied in a component that is
manufactured separately from the rest of the product,
or if the component can be sold separately (for in-
stance, for replacement purposes). See, e.g., Piano II,
234 F. at 81.
2. The task of identifying the relevant article of
manufacture is properly assigned to the finder of fact.
Context-specific judgments about the relationship of
the design to the article as a wholethe designs
effect on the products appearance, the components
physical separability, how the components are manu-
facturedare quintessentially factual in nature. Cf.
Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339
U.S. 605, 609 (1950) (application of doctrine of equiva-
lents in the utility-patent context is a question of fact
because it involves consideration of the purpose for
which an ingredient is used in a patent, the qualities it
has when combined with the other ingredients, and
the function which it is intended to perform); see
Exhibit 1
Page 37 of 42
30
Hana Fin., Inc. v. Hana Bank, 135 S. Ct. 907, 910-911

(2015) (holding that whether two trademarks create
the same, continuing commercial impression so that
consumers consider both as the same mark is a ques-
tion for the jury) (quotation marks omitted).
Under established law, the question whether a de-
sign patent has been infringed is one for the ju-
ry. See Egyptian Goddess, Inc. v. Swisa, Inc., 543
F.3d 665, 680-683 (Fed. Cir. 2008) (en banc), cert.
denied, 556 U.S. 1167 (2009); Amini Innovation Corp.
v. Anthony Cal., Inc., 439 F.3d 1365, 1371-1372 (Fed.
Cir. 2006). In making that determination, the jury
must compare two designs to decide whether in the
eye of an ordinary observer, giving such attention as a
purchaser usually gives, * * * the resemblance is
such as to deceive such an observer, inducing him to
purchase one supposing it to be the other. Gorham,
81 U.S. at 528. Treating the identification of the rele-
vant article of manufacture as a jury question is
consistent with the jurys role in determining design-
patent infringement, and with this Courts longstand-
ing recognition across a variety of doctrinal contexts
that, when the relevant question is how an ordinary
person or community would make an assessment, the
jury is generally the decisionmaker that ought to
provide the fact-intensive answer. Hana Fin., 135 S.
Ct. at 911.
3. The defendant should bear the burden of pro-
ducing evidence that the relevant article of manufac-
ture in a particular case is a portion of an entire
product as sold. The plaintiff bears the ultimate bur-
den of establishing the amount of the defendants total
profit. See SmithKline Diagnostics, Inc. v. Helena
Labs. Corp., 926 F.2d 1161, 1164 (Fed. Cir. 1991); cf.
Exhibit 1
Page 38 of 42
31
Horvath v. McCord Radiator & Mfg. Co., 100 F.2d

326, 330 (6th Cir. 1938), cert. denied, 308 U.S. 581
(1939). But once the plaintiff has shown that the de-
fendant profited by exploiting a product containing
the plaintiffs patented design, the defendant should
be required to identify, through the introduction of
admissible evidence, the component that the defend-
ant asserts is the article to which the design was ap-
plied. Cf. SEC v. Teo, 746 F.3d 90, 112 (3d Cir.) (once
government establishes existence of tainted profits,
defendant has burden of production to identify un-
tainted portions), cert. denied, 135 S. Ct. 675 (2014).
The defendant, as the manufacturer or seller of the
accused product, has superior knowledge of the identi-
ty of the products components, as well as of some of
the factors relevant to the article determination,
including the physical relationship between the design
and the product; the manner in which the product is
manufactured; and the extent to which the product
reflects the innovations of parties other than the
plaintiff. See Alaska Dept of Envtl. Conservation v.
EPA, 540 U.S. 461, 494 n.17 (2004) (placement of bur-
den of production may turn on which party has pecu-
liar means of knowledge of the facts in question)
(citation omitted); accord Medtronic, Inc. v. Mirowski
Family Ventures, LLC, 134 S. Ct. 843, 851 (2014).
C. The Court Should Remand This Case For Further
Proceedings
In this case, the district court instructed the jury
that, [i]f you find infringement[,] * * * you may
award Apple [the] total profit attributable to the in-
fringing products. Pet. App. 165a. That instruction
equated the relevant article of manufacture with the
accused phones as a whole, rather than permitting the
Exhibit 1
Page 39 of 42
32
jury to determine whether the phone itself or some

portion thereof was the article of manufacture to
which the patented design had been applied. Petition-
ers contend (Br. 58) that a new damages trial is there-
fore necessary. It is unclear, however, whether peti-
tioners presented evidence at trial to support their
assertion that the relevant articles of manufacture
were components of the phones. The Court should
therefore remand this case to allow the lower courts to
determine whether a new trial is warranted.
In the district court, petitioners contended that
under the Piano Cases, the outer case of a functional
product is a separate article of manufacture. Pets.
Trial Br. 21. Petitioners accordingly asked the court
to instruct the jury that [t]he article to which Apples
design was applied may be the same as or different
from Samsungs devices as sold, and that [w]here
the article of manufacture is a case or external hous-
ing of the device, then only the profits from the sale of
the case or external housing of the device should be
awarded. J.A. 207. It is not clear, however, whether
petitioners satisfied their burden of producing evi-
dence to support their arguments.
In their brief in this Court (Br. 54-56), petitioners
rely primarily on testimony that respondents patent-
ed designs extended only to aspects of the phones
physical appearance, rather than to the entire exter-
nal design of the phones. Petitioners also observe (Br.
1) that the phones contain many componentssuch as
the technology governing their functionsthat are
unrelated to the infringing designs. 7 Petitioners have
7
While petitioners were precluded from presenting certain evi-
dence (Pets. Br. 20), that evidence appears to have related primari-
Exhibit 1
Page 40 of 42
33
not, however, identified record evidence or argument

concerning other factors, such as the extent to which
users or sellers can physically separate the relevant
components from the other parts of the phones, the
manner in which the components were manufactured,
and the extent to which the designs effectively deter-
mined the entire appearance of the phones. 8 See pp.
27-29, supra. Rather than examine the trial record to
determine whether petitioners presented sufficient
evidence to support their proposed jury instruction,
the Court should remand this case to permit the lower
courts to determine whether a new trial is warranted.
ly to apportioning the profits attributable to the infringement. See

J.A. 25-55, 67-85.
8
It is also unclear whether petitioners argued below, as they do in
this Court (Br. 55-56), that the design for the grid of colorful icons
was applied to the display screen that sits beneath a smartphones
glass front face. Petitioners trial brief and proposed jury instruc-
tions discussed only the two designs relating to the external casing
of the phones, and did not separately discuss the article to which the
icon grid was applied. Pets. Trial Br. 19-22.
Exhibit 1
Page 41 of 42
34
CONCLUSION
The judgment of the court of appeals should be vacat-
ed and the case remanded for further proceedings.
Respectfully submitted.
DONALD B. VERRILLI, JR.
Solicitor General
SARAH T. HARRIS BENJAMIN C. MIZER
General Counsel Principal Deputy Assistant
NATHAN K. KELLEY Attorney General
Solicitor MALCOLM L. STEWART
THOMAS W. KRAUSE Deputy Solicitor General
Deputy Solicitor GINGER D. ANDERS
SCOTT C. WEIDENFELLER Assistant to the Solicitor
BRIAN T. RACILLA General
LORE A. UNT MARK R. FREEMAN
WILLIAM LAMARCA T YCE R. WALTERS
Associate Solicitors Attorneys
United States Patent and
Trademark Office
JUNE 2016
Exhibit 1
Page 42 of 42
JASMINE C. HITES, OSB # 104056

Troutman Sanders LLP
805 SW Broadway, Suite 1560
Portland, OR 97205
Telephone: (503) 290-2344; Facsimile: (503) 290-2405
Email: jasmine.hites@troutmansanders.com
MATTHEW D. MURPHEY, CSB #194111 (admitted pro hac vice)
5 Park Plaza, Suite 1400
Irvine, CA 92614
Email: matt.murphey@troutmansanders.com
PAUL E. MCGOWAN, GSB #360460 (admitted pro hac vice)
600 Peachtree St. NE, Suite 5200
Atlanta, GA 30308
Email: paul.mcgowan@troutmansanders.com
Attorneys for Defendant Seirus Innovative Accessories, Inc.
UNITED STATES DISTRICT COURT

PORTLAND DIVISION

SEIRUS OPENING BRIEF REGARDING
PLAINTIFF, LEGAL STANDARD FOR DESIGN
PATENT INFRINGEMENT DAMAGES
v. UNDER 35 U.S.C. 289
SEIRUS INNOVATIVE ACCESSORIES, Request for Oral Argument

DEFENDANT.
SEIRUS OPENING BRIEF REGARDING LEGAL Troutman Sanders LLP

100 SW Main Street, Suite 1000
STANDARD UNDER 35 U.S.C. 289 Portland, Oregon 97204
30558502 Telephone: 503.290.2400
TABLE OF CONTENTS
Page
I. PRELIMINARY STATEMENT ........................................................................... 1

II. BACKGROUND ................................................................................................... 3
A. Procedural Posture and Apple-Samsung .................................................... 3
B. Design Patents Generally ........................................................................... 3
III. THE COURT SHOULD APPLY THE ORDINARY MEANING OF THE
TERM COMPONENT. ...................................................................................... 4
A. Legal Standard ........................................................................................... 4
B. The Term Component, Though Not Expressly Defined, Is In
Common Usage .......................................................................................... 6
C. The Test Proposed by the Department of Justice Is a Reasonable
and Balanced Method to Identify the Article of Manufacture ................. 10
1. Where a Product Is Undisputedly a Single Component, the
DOJ Test May Be Unnecessary ................................................... 11
2. Where the Product is Alleged by Either Party to Be
Multicomponent, the DOJ Test Will Determine What the
Relevant Article of Manufacture Is.............................................. 12
D. The Burden of Proof Should Be on the Plaintiff in the First
Instance .................................................................................................... 15
1. A Plaintiff Always Bears the Burden of Persuasion on
Damages ....................................................................................... 15
2. There Is No Evidence of Legislative Intent to Reverse the
Burden of Persuasion on Damages under 289 .......................... 16
E. The Plaintiff is Entitled to Discovery on the Accused Products to
Identify the Relevant Article of Manufacture and the Instant
Litigation Should Proceed with Plaintiff Disclosing Its Theory
Regarding the Relevant Article of Manufacture and the Parties
Exchanging Discovery ............................................................................. 18
IV. CONCLUSION .................................................................................................... 20

Page i SEIRUS OPENING BRIEF REGARDING LEGAL 100 SW Main Street, Suite 1000
30558502 Telephone: 503.290.2400
Page(s)
CASES
Apple Inc. v. Samsung Elecs. Co.,

Nos. 2014-1335, 2015-1029, 2017 U.S. App. LEXIS 2140 (Fed. Cir. Feb. 7, 2017)
[dkt. 138-1 at Ex. E]...................................................................................................................3
Apple Inc. v. Samsung Elecs. Co.

No. 2014-1335 (Fed. Cir. Jan. 12, 2017) .................................................................................18
Bell Atl. Corp. v. Twombly,

550 U.S. 544 (2007) .................................................................................................................15
Bilski v. Kappos,
561 U.S. 593 (2010) ...................................................................................................................4
Bonito Boats v. Thunder Craft Boats,

489 U.S. 141 (1989) ...................................................................................................................9
Cardiac Pacemakers, Inc. v. St. Jude Med., Inc.,

576 F.3d 1348 (Fed. Cir. 2009)..................................................................................................8
Eolas Techs. Inc. v. Microsoft Corp.,

399 F.3d 1325 (Fed. Cir. 2005)..................................................................................................8
FCC v. NextWave Personal Commcns, Inc.,

537 U.S. 293 (2003) .................................................................................................................17
Life Techs. Corp. v. Promega Corp.,

197 L.Ed.2d 33 (U.S. 2017) .......................................................................................................7
Lucent Techs., Inc. v. Gateway, Inc.,

580 F.3d 1301 (Fed. Cir. 2009)................................................................................................15
Meghrig v. KFC Western, Inc.,

516 U.S. 479 (1996) .................................................................................................................17
Microsoft Corp. v. AT&T Corp.,

550 U.S. 437 (2007) .............................................................................................................8, 13
Samsung Elecs. Co. v. Apple Inc.,

137 S. Ct. 429 (2016) ....................................................................................................... passim

Page ii SEIRUS OPENING BRIEF REGARDING 100 SW Main Street, Suite 1000
LEGAL STANDARD UNDER 35 U.S.C. 289 Portland, Oregon 97204
30558502 Telephone: 503.290.2400
(continued)
Page
Sargent Mfg. Co. v. Cal-Royal Prods., Inc.,

No. 3:08-CV-408 (CFD), 2011 WL 4804772 (D. Conn. Oct. 7, 2011) .....................................7
Schaffer v. Weast,
546 U.S. 49 (2005) .............................................................................................................16, 18
SEC v. Teo,
746 F.3d 90 (3d Cir. 2014).......................................................................................................16
Sheldon v. Metro-Goldwyn Pictures Corp.,

309 U.S. 390 (1940) .................................................................................................................10
Taltech Ltd. v. Esquel Enters.,

410 F. Supp. 2d 977 (W.D. Wash. 2006) ...................................................................................8
STATUTES AND CONGRESSIONAL RECORD
37 C.F.R. 1.153(a).........................................................................................................................4
15 U.S.C. 1117(a) .......................................................................................................................17
35 U.S.C. 112 ............................................................................................................................4, 8
35 U.S.C. 171 ................................................................................................................................3
35 U.S.C. 271 ......................................................................................................................6, 7, 13
35 U.S.C. 284 ................................................................................................................................4
35 U.S.C. 289 ...................................................................................................................... passim
H.R. Rep. No. 57-1661 (1902) .........................................................................................................3
Act of May 9, 1902, ch. 783, Pub. L. No. 57-109, 32 Stat. 193. .....................................................3
OTHER AUTHORITIES
Blacks Law Dictionary (10th ed. 2014) ..........................................................................................7
Federal Rules of Civil Procedure 12(b)(6).....................................................................................15
PTO, Manual of Patent Examining Procedure (rev. 9th ed. 2015) ..................................................4
Websters II New College Dictionary (1999) ..................................................................................7

Page iii SEIRUS OPENING BRIEF REGARDING 100 SW Main Street, Suite 1000
30558502 Telephone: 503.290.2400
(continued)
Page
Websters New College Dictionary (3d ed. 2008) ...........................................................................7
The American Heritage College Dictionary (3d ed. 2000)..............................................................7

Page iv SEIRUS OPENING BRIEF REGARDING 100 SW Main Street, Suite 1000
30558502 Telephone: 503.290.2400
Defendant Seirus Innovative Accessories, Inc. (Seirus) urges the Court to adopt the
following legal standard for an award of damages for infringement of a design patent under 35
U.S.C. 289 in light of Samsung Elecs. Co. v. Apple Inc., 137 S. Ct. 429 (2016) and in
accordance with the Courts Order at docket no. 144.1
I. PRELIMINARY STATEMENT
The U.S. Supreme Court has dramatically altered the landscape for design patent
damages after issuing its first substantive decision on design patent damages law in over 100
years. Samsung Elecs. Co. v. Apple Inc., 137 S. Ct. 429 (2016) (the Supreme Court decision will
be referred to hereinafter as Apple-Samsung; the overall matter between Samsung and Apple
will be referred to herein as Samsung). That decision jettisoned the prevailing legal standard
governing design patent damages under 35 U.S.C. 289the same standard to be applied in this
case. The Court held that a patentees recovery under 289 will not always be the total profits
for the entire product. Rather damages may, in the context of a design patent that is applied to
only a component of a product, be limited to those profits attributable to the component. In fact,
the Court explicitly held, contrary to earlier precedent, that the term article of manufacture
was broad enough to embrace both a product sold to a consumer and a component of that
product, whether sold separately or not.2 Moreover, the Court implemented this significant
change without defining an applicable test, leaving the lower courts with little guidance on how
1
Seirus incorporates by reference its December 30, 2016 letter to the Court and related response
brief (Dkt. 137) submitted on February 8, 2017 in opposition to Columbias Motion to Amend
the Scheduling Order (Dkt. 129) of December 28, 2016.
2
Columbia has mischaracterized the possibility that an article of manufacture will not be a
product sold separate to consumers as an exception. (Pl.s Mot. Am. at 3.) [Dkt. 129]. The new
definition supplied by the Supreme Court did not affirm the old Federal Circuit standard and
impose an exception, as Columbia would have it; it vacated the old standard and required the
imposition of an entirely new one.
Page 1 SEIRUS OPENING BRIEF REGARDING 100 SW Main Street, Suite 1000
30558502 Telephone: 503.290.2400
to proceed. The task before this Court, thenin what may well be a case of first impressionis
to identify and adopt such a test and develop procedures for how to apply the test within the
Courts trial schedule.
Thus, Seirus proposes that, in a case such as the instant litigation, where there is a
reasonable dispute as to the identity of the relevant article of manufacture, the test proposed by
the Department of Justice (DOJ) as amicus curiae in the Samsung matter should guide the fact
finder in determining the relevant article of manufacture.3 DOJ Br. at 17-31 [Dkt. 138, Exh. F].
The test involves the application of four objective considerations that the DOJ explains can help
identify the article that most fairly may be said to embody the defendants [alleged]
appropriation of the plaintiffs innovation and identify the article in which the patented design
prominently features, without unnecessarily sweeping in aspects of the product that are unrelated
to that design. Those factors are:
1. the scope of the patented design;
2. the relative prominence of the design within the product as a whole;
3. whether the design is conceptually distinct from the product as a whole; and
4. the physical relationship between the patented design and the rest of the product.
3
Seirus discusses here how, in its perspective, the law should be applied to determine the
relevant article of manufacture, including its argument for application of the DOJ test. In arguing
the legal issues, Seirus will not focus on the specific set of facts facing the Court here, but on the
pure question of law presented. In other words, Seirus did not understand the Court to request
briefing on what the article of manufacture is or might be under the facts of this casethat issue
necessarily requires further investigation, discovery and possibly expert testimonybut rather to
identify what the appropriate test is and, more importantly, how that test is to be applied in cases
involving design patent infringement allegations. Because, as Seirus argues, application of the
DOJ test to the specific set of facts facing this Court is a determination for the factfinder, that
analysis is better left for the jury at trial. See DOJ Br., at 25 (describing the identification of the
article of manufacture as a task for the finder of fact under the totality of the circumstances);
see also id. at 27-29. Seirus will, however, propose a schedule for proceeding through trial that is
specific to the procedural posture of this case.
30558502 Telephone: 503.290.2400
Whether this Court agrees to adopt the test proposed by the DOJ is crucial, but it does not
end the inquiry. The Court must also determine the related issues such as deciding the
evidentiary burdens on each party in applying the test, and identifying which are issues of fact
for the jury or law for the Court.
II. BACKGROUND
A. Procedural Posture and Apple-Samsung.
In the instant litigation, trial on damages for Columbias design patent is scheduled to
proceed on September 19, 2017. [Dkt. No. 144.] The Apple-Samsung decision necessitates re-
opening of discovery to permit the parties to address the new legal standard for design patent
damages under 35 U.S.C. 289. The Court ordered the parties to submit briefing addressing the
issue of the legal standard for damages. [Dkt. No. 144.]
Meanwhile, the Samsung case has been remanded to the District Court for the Northern
District of California for further proceedings, which may or may not include a new trial on
damages. Apple Inc. v. Samsung Elecs. Co., Nos. 2014-1335, 2015-1029, 2017 U.S. App. LEXIS
2140 (Fed. Cir. Feb. 7, 2017) [dkt. 138-1 at Ex. E]. Neither Apple nor Samsung has submitted
any brief to the District Court on remand, but Seirus anticipates that the California court will be
facing a similar legal question as this Court. No other argument or decision is available to guide
this Court, as of the time of this filing.
B. Design Patents Generally.
A design patent is available for any new, original and ornamental design for an article of
manufacture. 35 U.S.C. 171. Design patents are not available for useful product
configurations. H.R. Rep. No. 57-1661, at 1 (1902); see Act of May 9, 1902, ch. 783, Pub. L. No.
57-109, 32 Stat. 193. Likewise, a design patent cannot protect abstract ideas or physical
30558502 Telephone: 503.290.2400
phenomena, like basic shapes or concepts, nor can it cover functional features of a design. Bilski
v. Kappos, 561 U.S. 593, 601 (2010).
A design patent must contain a single claim stating that the patent claims an ornamental
design for a particular article of manufacture, as shown in drawings contained in the
specification. PTO, Manual of Patent Examining Procedure (MPEP) 1503.01, Subsec. III
(rev. 9th ed. 2015); see 37 C.F.R. 1.153(a). Subject to the definiteness requirement applicable
to all patent applications, 35 U.S.C. 112(b), a design patentee has substantial latitude in
designating the article to which the design is intended to be applied. MPEP 1503.01. In
defining the scope of the claimed design, the patent applicant may use drawings, figures, or
photographs, as well as a written description. In a drawing, the design itself is depicted in solid
black lines, while broken lines are commonly used to depict structures that are not part of the
claimed design but are necessary to show the designs environment. See MPEP 1503.02.
III. THE COURT SHOULD APPLY THE ORDINARY MEANING OF THE TERM
COMPONENT.
A. Legal Standard.
In a case involving design patent infringement, the patent holder has a choice of statutory
remedies. Section 284, which applies to both utility and design patents, authorizes an award of
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. 35 U.S.C. 284. Section 289, the
provision at issue here, establishes an alternative remedy for infringement of a design patent. It
provides:
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
30558502 Telephone: 503.290.2400
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.
The statute does not define the term article of manufacture. In its Apple-Samsung
decision, the Supreme Court expressly vacated the previous test for determining design patent
damages under 289 in which the Federal Circuit incorrectly required that the allegedly
infringing articles to have been sold separately . . . as distinct articles of manufacture. Apple-
Samsung, 137 S. Ct. at 435-36. In doing so, the Supreme Court held that the term article of
manufacture was broad enough to embrace both a product sold to a consumer and a component
of that product, whether sold separately or not. Id. at 436. The Court expressly declined,
however, to provide a new test. Id.
As an initial matter, the scope of the Supreme Courts opinion is limited: [t]he only
question we resolve today is whether, in the case of a multicomponent product, the relevant
article of manufacture must always be the end product sold to the consumer or whether it can
also be a component of that product. Id. at 434. Thus, the Courts opinion applies only where a
multicomponent product is involved. There is no bright line test, but the Court distinguishes
between a single-component product, such as a dinner plate (for which the article of
manufacture is the entire product) and a multicomponent product, such as a kitchen oven (for
which determining the article of manufacture is a more difficult task). Id. at 432. Nevertheless,
in answering the question posed abovethat the relevant article of manufacture certainly can be
a component of a multicomponent productthe Court squarely rejected any notion that a patent
owner is entitled to the total profit on a product simply because that product bears the allegedly

30558502 Telephone: 503.290.2400
infringing design somewhere within the product. Id. at 435. That then leaves the interrelated
questions of what it means for something to be a component (of a multicomponent product)
and whether that component is the relevant article of manufacture for purposes of design
patent damages under 289. The Courts opinion provides guidance on several important
principles, including:
An article of manufacture as used in 289 is defined as simply a thing made

by hand or machine. Id. So, it is the article to which a patented design has been
applied.
A component of a product, no less than the product itself, is [also] a thing made
by hand or machine, and the fact [t]hat a component may be integrated into a
larger product, in other words, does not put it outside the category of the article of
manufacture. Id. Thus, there can be no dispute that a component can be the
relevant article of manufacture for purposes of 289 damages.
And, the term article of manufacture is broad enough to embrace both a
product sold to a consumer and a component of that product, whether sold
separately or not. Id. In other words, whether the component has been sold
separately is not a determinative factor.
At bottom, the Supreme Court has explained that while a component is certainly an
article of manufacture, the Court acknowledged the need for a test for identifying the relevant
article of manufacture at the first step of the 289 damages inquiry for purposes of design
patent damages under 289. Id. at 436.
B. The Term Component, Though Not Expressly Defined, Is In Common Usage.
The term component comes up repeatedly in the Supreme Courts Apple-Samsung
decision, but is not precisely defined beyond the recognition that a component, like an article of
manufacture, is a thing made by hand or machine. Id. at 435. Fortunately, the term
component is a relatively common term that is reasonably easy to understand. In fact, this non-
controversial term appears in other parts of the Patent Act, and has even been used by the parties
to this litigation. See, e.g., 35 U.S.C. 271(c), (f), (g) (explaining contributory infringement and
30558502 Telephone: 503.290.2400
inducement infringement, and an exception to infringement of a patent process in the context of
components and a component of a patented invention); accord Life Techs. Corp. v. Promega
Corp., 197 L.Ed.2d 33 (U.S. 2017) (recognizing, in the context of 35 U.S.C. 271(f), which
prohibits supplying from the United States all or a substantial portion of the components of a
patented invention for combination abroad, that components were manufactured in different
locations for combination); see also Dkt. 67 at 3 (noting parties agreed upon construction of the
claim term pairing the heat management body gear material with a piece of body gear as
using the heat management material with other components to form a piece of body gear);
Dkt. 121-1 at 620-22 (describing the process of manufacturing Columbias Omni-Heat
Reflective gloves and jackets as using the Omni-Heat Reflective fabric with other
components to form a glove or jacket).
In its use as a noun, component is defined by commonly-used dictionaries in nearly
identical ways. The definition offered by The American Heritage College Dictionary, A
constituent element, as of a system[,] is exactly replicated in both Websters New College
Dictionary and Websters II New College Dictionary. The American Heritage College
Dictionary 285 (3d ed. 2000); Websters New College Dictionary 236 (3d ed. 2008); Websters II
New College Dictionary 230 (1999);4 accord Sargent Mfg. Co. v. Cal-Royal Prods., Inc., No.
3:08-CV-408 (CFD), 2011 WL 4804772, at *6 (D. Conn. Oct. 7, 2011) (relying upon the
American Heritage College Dictionary definition, and holding Given this definition, a screw
could be considered a component of the mortise lock, and to remove a screw would be to remove
a component of the lock.). The U.S. Supreme Court looked to Websters Third New
4
Blacks Law Dictionary offers no definition for component. Blacks Law Dictionary 346
(10th ed. 2014).
30558502 Telephone: 503.290.2400
International Dictionary to define component as a constituent part, element, or
ingredient. Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 449 n.11 (2007) (quoting Websters
Third New International Dictionary 466 (1981)). The Federal Circuit draws the distinction
between a component of a tangible or intangible product: [A] component of a tangible
product, device, or apparatus is a tangible part of the product, device, or apparatus, whereas a
component of a method or process is a step in that method or process. Cardiac Pacemakers,
Inc. v. St. Jude Med., Inc., 576 F.3d 1348, 1362 (Fed. Cir. 2009); accord Eolas Techs. Inc. v.
Microsoft Corp., 399 F.3d 1325, 1339 (Fed. Cir. 2005) (A component of a process invention
would encompass method steps or acts. See, e.g., 35 U.S.C. 112, 6 (2000). A component of
an article of manufacture invention would encompass a part of that construct.).
Thus, a component is anything that is, or could be, part of a larger whole. See, e.g.,
Taltech Ltd. v. Esquel Enters., 410 F. Supp. 2d 977, 987-88 (W.D. Wash. 2006) (finding that a
garment that has been sewn together consists of several components). This is consistent with
how the parties have used the term throughout this litigation. See, e.g., Dkt. 121-1 at 621 &
623 (referring to components of gloves and jackets that include straps, zippers, elastic, [and]
string, among others). For purposes of determining design patent damages in light of the Apple-
Samsung decision, the question will be whether the design patent purports to protect the design
of the accused product, or purports to patent the design of some constituent element, part, or
component of the accused product. Regardless of how that question is answered, for purposes
of identifying a test to be used by the factfinder, the method of answering the question must be
sufficiently flexible to be applicable to all types of products and technologies.
Some products may be easy to evaluate for this purpose. For example, a screw or a dinner
plate may plainly consist of a single component and may not be susceptible to disassembly. See
30558502 Telephone: 503.290.2400
Apple-Samsung, 137 S. Ct. at 432. Further, the ornamental and functional aspects of these
products are more readily discerned. Conversely, however, a design patent that pertains to a
screw might well be incorporated into a more complex product, such as a pair of eyeglasses, such
that the patented design is a mere component of the product.5 The same is true whether the
product is highly complex, like a smartphone, or simple, like a t-shirt. Columbia has implied in
its previous briefing of the applicable standard that the complexity of the accused product at
issue in Samsung was somehow relevant to the analysis. Dkt. 129 at 5 (describing a smartphone
as one of the most complex consumer products there is). It is not. Indeed, the Supreme Court
did not seem bothered by the notion that a component of the smartphone it considered in Apple-
Samsung might be the front face, or the rounded rim of that smartphone, or even the placement
of colorful icons on a black screen of the smartphone. See Apple-Samsung, 137 S. Ct. at 433. The
Courts opinion was agnostic to the so-called complexity of the smartphone itself and focused
only on the ornamental aspects of the design, as claimed in the patent. The complexity of the
functional aspects of the product is irrelevant, contrary to Columbias implication, because
functional aspects are not covered by design patents. Bonito Boats v. Thunder Craft Boats, 489
U.S. 141, 148 (1989). Rather, it is the relationship between the component that allegedly bears
the patented design and the product as a whole that drives the determination of the article of
manufacture.
The question, then, is what is the article of manufacture to which the design patent
applies in the context of the accused product? Is it the entirety of the accused product, or is it
5
Of course, at some level of abstraction anything could be considered a component. Seirus
acknowledges this and does not intend to hold out de minimis components (e.g., the thread
used to sew together two parts of a garment). It will be important, however, for the Court to
adopt a test that is sufficiently flexible for all types of designs and products.
30558502 Telephone: 503.290.2400
something lessa component of that product? This question is particularly pertinent where, as
here, the parties dispute whether the product at issue is a multicomponent product in the first
instance and/or dispute how to identify the component to which the allegedly infringing design
has been applied. To that end, the Supreme Court noted that the Department of Justice (DOJ)
as amicus curiae suggested such a test that the parties here have largely agreed can be useful in
this regard.
C. The Test Proposed by the Department of Justice Is a Reasonable and Balanced

Method to Identify the Article of Manufacture.
The DOJ submitted an amicus curiae brief in Apple-Samsung supporting neither party, in
which it offered four considerations for determining the article of manufacture under section
289. DOJ Br. at 17 (Dkt. 138, Exh. F). This test involves the application of four considerations
that the DOJ explains can help identify the article that most fairly may be said to embody the
defendants [alleged] appropriation of the plaintiffs innovation and identify the article in
which the patented design prominently features, without unnecessarily sweeping in aspects of the
product that are unrelated to that design. Indeed, the DOJs characterization of its own test is
instructive:
In cases where the identity of the relevant article of manufacture is otherwise

open to reasonable dispute, the factfinder may legitimately consider which
characterization would appropriately compensate (rather than over-compensate)
the patentee for the contribution of the patented de-sign to the value of the
infringers finished product. See, e.g., Sheldon v. Metro-Goldwyn Pictures Corp.,
309 U.S. 390, 402-408 (1940) (discussing principles applied by equity courts in
awarding profits for patent and copyright infringement). When a product is com-
posed of distinct components, choosing the article that most fairly embodies the
plaintiffs invention will help to ensure that neither party will have what justly
belongs to the other. Id. at 408.
DOJ Br., at 27.
In its test, the DOJ noted that the courts and the Patent Office construed the term article
30558502 Telephone: 503.290.2400
of manufacture, as used in the statutory predecessors to sections 289 and 171, to include
components of larger products. Id. at 19; accord Apple-Samsung, 137 S. Ct. at 435. The
Supreme Court largely adopted the DOJs reasoning and vacated the Federal Circuits decision.
Ultimately, however, the Court declined to reach the question of what test should apply because
the parties had not briefed the question and it was not necessary to answer the question on
certiorari. Id. at 436.
1. Where a Product Is Undisputedly a Single Component, the DOJ Test May

Be Unnecessary.
The Apple-Samsung decision did not purport to vacate earlier precedent governing the
relevant article of manufacture for a single component product. See Apple-Samsung, 137 S. Ct. at
434. (The only question we resolve today is whether, in the case of a multicomponent
product, the relevant article of manufacture must always be the end product sold to the
consumer or whether it can also be a component of that product.) (emphasis added). Thus,
where the accused product consists of a single component that completely embraces the patented
design, and that fact is not in reasonable dispute, the DOJ test may be unnecessary to draw out
the distinctions and overlaps between the patented design and the accused product. It is
anticipated, however, that in many instances the accused product and relevant patent may present
a reasonable dispute as to whether the design patent claims the entire accused product as the
article of manufacture, and thus that the accused product should be treated as a single component
(even if the accused product could be broken down into discrete parts); or whether the product
consists of multiple components, some of which are not covered by the relevant patent. In such
cases, the DOJ test will be invaluable to draw out the true scope of the patent and the true nature
of the accused product relative to the patented design.

30558502 Telephone: 503.290.2400
2. Where the Product is Alleged by Either Party to Be Multicomponent, the

DOJ Test Will Determine What the Relevant Article of Manufacture Is.
The DOJ has proposed four considerations that it describes as relevant to this case-
specific examination of the relationship among the design, any relevant components, and the
product as a whole. DOJ Br. at 27. In summary form, those considerations include the following
factors:
4. the physical relationship between the patented design and the rest of the
product.
These factors were expounded upon by the DOJ in its amicus brief, and they deserve
further consideration here with some exemplary explanations. Because each is fact-specific, the
following explanations are not deemed to be limiting on the scope of the factors or the evidence
that may be relevant to each factor.
First, the factfinder should consider the scope of the design claimed in the plaintiffs
patent, including the drawing[s] and written description, which provides insight into which
portions of the underlying product the design is intended to cover, and how the design relates to
the product as a whole. Id. This factor will require a close reading and examination of the
design patent in question, with an eye toward identifying precisely what the scope of the design
patent is. The DOJ contemplated that the patent will identify the article of manufacture, as
intended by the patentee, though it further noted that the patents designation of the article should
not be treated as conclusive. Id. at 28. The factfinder should consider whether the drawings
contained in the patent contemplate the product in question at all, or expressly disclaim any

30558502 Telephone: 503.290.2400
portion of a product as drawn through the use of dashed lines. Evidence regarding the scope of
the claimed design, including the prosecution history, would be relevant to this factor.6
Second, the factfinder should consider the relative prominence of the design within the
product as a whole. Id. at 28. For example, the DOJ stated:
If the design is a minor component of the product, like a latch on a

refrigerator, or if the product has many other components unaffected by the
design, that fact suggests that the article should be the component embodying
the design. Conversely, if the design is a significant attribute of the entire product,
affecting the appearance of the product as a whole, that fact might suggest that the
article should be the product.
Id. This factor, then, will look both to the patent and the accused product, using scale and
prominence to evaluate the importance of the design patent to the product. A small or
insignificant feature bearing the patented design, or non-prominent use of the design, would
favor a narrower definition of the article of manufacture. Conversely, a prominent display of the
design would favor a broader definition. Evidence considering placement of the design within
the product, including how the product is displayed, as well as evidence to establish whether the
design as used in the product tends to drive its popularity, would be relevant to this factor.
Third, the factfinder should consider whether the design is conceptually distinct from
the product as a whole. Id. If the product contains other components that embody conceptually
distinct innovations, it may be appropriate to conclude that a component is the relevant article.
6
In a related case, the Department of Justice has provided further insight into this element. Brief
for the United States as Amicus Curiae Supporting Petitioners, Life Techs. Corp. v. Promega
Corp., at 27, No. 14-1538 (S. Ct. Sep. 8, 2016) (a true and correct copy of which is attached
hereto as Exhibit A) (noting that the Supreme Court has held that the term component is
commonly defined as a constituent part, element, or ingredient and that 271(f)(1)
contemplates components amenable to combination[.]) (citing Microsoft, 550 U.S. at 449
n.11). Thus, the defining characteristic of a component is that it can be combined with other
components to form a final product. (All Exhibit references herein refer to the Exhibits to the
contemporaneously filed Declaration of Matthew D. Murphey.)
30558502 Telephone: 503.290.2400
Id. at 29. Again, this factor will primarily depend upon a comparison of the patented design to
the accused product, this time considering not the prominence or scale of the patented design
relative to the overall accused product (as in the second factor), but the existence of distinct
components of the accused product, regardless of their prominence or scale, that can be
identified separately from the entire product. Again, as with the first consideration, disclaimed
elements in the design drawing may be relevant, but claiming an element is not dispositive that
the patent, whose scope is properly construed, protects that element. As with the second factor,
evidence related to the popularity of the product, as distinct from a design embedded within the
product, would be relevant to this factor.
Fourth, the factfinder should consider the physical relationship between the patented
design and the rest of the product[,] which may reveal that the design adheres only to a
component of the product. Id. For example, the DOJ explained, if the design is embodied in a
component that is manufactured separately from the rest of the product, it suggests that the
design has been applied to the component alone rather than to the complete product.7 Evidence
regarding manufacturing of the product, and specifically the number and type of components that
comprise the product, would be relevant to this factor.
The parties are in apparent agreement that the DOJ test should apply. What is not clear is
how these considerations would come up organically in litigation filed hereafter, and how the
parties should address these considerations now, in the midst of this litigation with trial just a
7
While the DOJ suggested that whether the component can be sold separately was relevant to
the determination of the article of manufacture, DOJ Br. at 29, the Supreme Court indirectly
rejected this aspect of the fourth factor, explicitly noting that an article of manufacture (and thus
a component) need not be sold separately. Apple-Samsung, 137 S. Ct. at 436 ([T]he term article
of manufacture is broad enough to embrace both a product sold to a consumer and a component
of that product, whether sold separately or not.).
30558502 Telephone: 503.290.2400
few months away. To that end, additional and necessary considerations include the evidentiary
burdens on both parties and the identification and distinction, if any, between issues of fact to be
decided by the jury and legal issues for determination by the Court. These issues will influence
the discovery obligations and opportunities afforded to each party, and must be consistent with
the Courts trial schedule for this case.
D. The Burden of Proof Should Be on the Plaintiff in the First Instance.
Of course, the burden of pleading always falls to the plaintiff, in any case. To survive a
motion under Rule 12(b)(6), a plaintiff filing a design patent infringement complaint in the wake
of Apple-Samsung should be expected plausibly to plead the elements of its claims, including the
elements of its claim for damages under 289. See, e.g., Bell Atl. Corp. v. Twombly, 550 U.S.
544 (2007). This pleading standard should require that the plaintiff identify the purportedly
infringing products as well as the alleged article of manufacture for which it seeks recovery.
1. A Plaintiff Always Bears the Burden of Persuasion on Damages.
It is axiomatic that [t]he burden of proving damages falls on the patentee. Lucent
Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1324 (Fed. Cir. 2009). Thus, the burden of
establishing the article of manufacture, which is a central element of proving damages in a
design patent infringement case, must also fall on the patentee. See Reply Brief for Petitioners,
Apple Inc. v. Samsung Elecs. Co., at 16-18, No. 15-777 (S. Ct. Aug. 29, 2016) (a true and
correct copy of which is attached hereto as Exhibit B); Brief for Petitioners, Apple Inc. v.
Samsung Elecs. Co., at 53, No. 15-777 (S. Ct. June 1, 2016) (a true and correct copy of which is
attached hereto as Exhibit C) (describing the presentation of proof that Samsungs profits arose
from the articles of manufacture to which Apples narrow design-patent claims were applied or
that Samsungs profits otherwise resulted from infringement of the patented designs as
30558502 Telephone: 503.290.2400
unquestionably Apples burden).
The DOJ proposes reversing this burden. DOJ Br. at 30-31. It would have the defendant
bear the burden of producing evidence that the relevant article of manufacture in a particular
case is a portion of an entire product as sold. Id. at 30. It would then place the burden to prove
the defendants total profit upon the plaintiff. Id. The DOJs logic is that this is comparable to
having the defendant identify the untainted portions of a defendants profit. Id. at 31 (citing by
analogy SEC v. Teo, 746 F.3d 90, 112 (3d Cir. 2014)). This analogy does not hold here, however,
unless and until the plaintiff has identified the specific products which it claims infringe its
design patent, and produced evidence supporting the conclusion that those products are the
relevant article of manufacture. Unlike the defendants profits and expenses, which Courts
understandably often conclude are most easily parsed by the defendant, the DOJs test to identify
the article of manufacture does not only look at the defendants product, but also requires a close
reading and presentation of evidence related to the plaintiffs patent. Requiring the defendant to
parse the plaintiffs patent in the first instance, and present expert evidence of how that patent
should apply to the defendants product before the plaintiff has presented any evidence
especially evidence that the patent covers the entire accused productunfairly shifts the burden.
Such a rule would encourage plaintiffs holding design patents on minor components to sue
manufacturers of complex and costly products, knowing that the plaintiff need only allege
infringement, and then the burden of defending the allegations will shift to the defendant.
2. There Is No Evidence of Legislative Intent to Reverse the Burden of

Persuasion on Damages under 289.
The ordinary default rule is that Plaintiff bears the burden of persuasion. Schaffer v.
Weast, 546 U.S. 49, 56-57 (2005) (describing the ordinary default rule as requiring the

30558502 Telephone: 503.290.2400
plaintiff[] bear the burden of persuasion regarding the essential aspects of the [his] claims. . .
.). In limited circumstances, howeverand only by the express will of Congressdamages
burdens have been shifted to defendants. For example, the trademark damages statute allows the
plaintiff to seek an accounting or disgorgement of profits and provides for a shifted burden. 15
U.S.C. 1117(a) (the plaintiff shall be entitled . . . subject to the principles of equity, to recover
(1) defendants profits . . . .). Under that remedy, the plaintiff need only prove defendants sales,
and then the statute explicitly shifts the burden of proving damages to the defendant. Id. (In
assessing profits the plaintiff shall be required to prove defendants sales only; defendant must
prove all elements of cost or deduction claimed.). Section 289 contains no such explicit shift.
This is despite the similarities between the statutes: both being intellectual property provisions;
and both allowing for disgorgement of profits. It must therefore be assumed that Congress made
this choice deliberately. See, e.g., Meghrig v. KFC Western, Inc., 516 U.S. 479, 485 (1996)
(Congress . . . demonstrated in CERCLA that it knew how to provide for the recovery of
cleanup costs, and . . . the language used to define the remedies under RCRA does not provide
that remedy.); FCC v. NextWave Personal Commcns, Inc., 537 U.S. 293, 302 (2003) (when
Congress has intended to create exceptions to bankruptcy law requirements, it has done so
clearly and expressly).
Therefore, once the parties have come forward with whatever evidence they may have to
offer on the subject of the article of manufacture, it should be the plaintiffs burden of persuasion
to convince the finder of fact that the article of manufacture is whatever it claims. The opposite
result would have the defendant arguing against itself, which, is not the default rule and, while it
has been explicitly authorized by Congress in trademark disputes, is not the rule for design
patents. These distinctions regarding the proper placement of the burden are important. In the
30558502 Telephone: 503.290.2400
event that the plaintiff were to put on no evidence establishing what the relevant article of
manufacture is, and instead simply offer evidence of the defendants total profits, the DOJs
proposed formulation would improperly shift the burden immediately to the defendant to
establish the proper scope of the plaintiffs patenta fundamentally inapposite result in
American jurisprudence. Schaffer, 546 U.S. at 56-57. Rather, the plaintiff should have to come
forward with evidence establishing by a preponderance of the evidence that the product (or some
component thereof) is in fact the relevant article of manufacture.
E. The Plaintiff is Entitled to Discovery on the Accused Products to Identify the

Relevant Article of Manufacture and the Instant Litigation Should Proceed with
Plaintiff Disclosing Its Theory Regarding the Relevant Article of Manufacture
and the Parties Exchanging Discovery.
As argued above, it should be without question that the plaintiff has the burden, in the
first instance, to identify what products it alleges infringe its patent. In the instant litigation,
Columbia should be able to identify the products that infringe its design patent without need for
further discovery, given that it has already obtained summary judgment of infringement. [Dkt.
105.] Columbia must also explicitly state whether it claims that the relevant article of
manufacture is, in each instance, the entire product; or, if not, what component of the product
Columbia claims is the article of manufacture. Columbia will also need to come forward with
evidence to support its theory, under the DOJ considerations. It may also elect to use survey
evidence to demonstrate the value that consumers assign to the relevant articles of manufacture
in the accused products or show the price differential between [products] with and without
articles embodying the infringing designs. Statement of Defendants-Appellants in Supp. of
Remand for New Trial, Apple Inc. v. Samsung Elecs. Co., at 56, No. 2014-1335 (Fed. Cir. Jan.
12, 2017) [Dkt. 138-1 at Ex. B].

30558502 Telephone: 503.290.2400
In the event that expert testimony is necessary to support its case, Columbia should be
required to disclose such testimony, so that Seirus has the opportunity to depose Columbias
expert and prepare a rebuttal report. Given the time constraints here, it is advisable for the parties
to disclose the substance of any expert reports in advance of opening deadlines, to permit
sufficient time for the identification and engagement of rebuttal experts without unduly
extending discovery.
Presumably the parties will also exchange written requests for discovery on the subject of
the relevant article of manufacture. This and any other evidence beyond expert reports should be
exchanged and disclosed well in advance of trial. Again, this will facilitate timely discovery,
since additional depositions will likely be necessary, including both depositions of any experts
that may be disclosed and depositions of any fact witnesses that offer testimony elucidating non-
expert evidence relevant to determining the article of manufacture.
In keeping with the foregoing, Seirus proposes the following timeline for the parties to
exchange their discovery requests and disclosures. This timeline is similar to one previously
proposed by Seirus [dkt. 137], prior to this Courts setting of a September trial date, but includes
additional disclosure deadlines in keeping with the burdens described above. These deadlines are
proposed with the understanding that the Court will receive responsive briefs on the subject of
the appropriate standard on March 23, 2017 and based on the assumption that the Court will rule
on this matter within a week thereafter; deadlines may need to be extended further if those
assumptions are incorrect.
Plaintiffs preliminary disclosure of alleged article(s) of manufacture: April 6,

30558502 Telephone: 503.290.2400
20178
Supplemental discovery request deadline: April 28, 2017
Expert reports due: June 9, 2017
Rebuttal expert reports due: July 7, 2017
Expert discovery cut-off: July 31, 2017
Pre-trial: September 11, 2017
Trial: September 19, 2017
As with the schedule Seirus previously proposed, this schedule would permit the parties,
witnesses, and the Court ample time to prepare for a complete and thorough presentation of the
relevant evidence, without unduly burdening witnesses or parties, or failing to discover relevant
evidence due to insufficient time.
IV. CONCLUSION
For the foregoing reasons, Seirus respectfully requests that the Court adopt the above-
described considerations for determining the article of manufacture to which a design patent
applies; placing the burden upon Columbia, in the first instance, to identify what it alleges to be
the relevant article of manufacture and produce evidence supporting that allegation; and further
placing the burden upon Columbia to persuade the finder of fact that the article of manufacture it
has identified is the correct article under the totality of the circumstances.
8
This preliminary disclosure deadline is proposed as a substitute for amending Plaintiffs
Complaint to fulfill the pleading standard, as described above. It is not proposed as a final
statement of Plaintiffs position, which may be subject to modification based upon the results of
discovery and expert analysis, and presumably will be disclosed through the fact and expert
discovery process.
30558502 Telephone: 503.290.2400
DATED: March 9, 2017 Respectfully submitted,
TROUTMAN SANDERS LLP
s/ Matthew D. Murphey
Portland, OR 97205
Telephone: (503) 290-2344
Facsimile: (503) 290-2405
MATTHEW D. MURPHEY (admitted pro hac vice)

Irvine, CA 92614
Telephone: (949) 662-2700
Facsimile: (949) 622-2739
PAUL E. MCGOWAN (admitted pro hac vice)

Atlanta, GA 30308
Telephone: (404) 885-3000
Facsimile: (404) 962-6842
Attorneys for Defendant Seirus Innovative

Accessories, Inc.

30558502 Telephone: 503.290.2400

Portland, OR 97205
MATTHEW D. MURPHEY, CSB #194111 (admitted pro hac vice)
Irvine, CA 92614
PAUL E. MCGOWAN, GSB #360460 (admitted pro hac vice)
Atlanta, GA 30308
Attorneys for Defendant Seirus Innovative Accessories, Inc.
UNITED STATES DISTRICT COURT

PORTLAND DIVISION

SEIRUS REPLY BRIEF REGARDING
PLAINTIFF, LEGAL STANDARD FOR DESIGN
PATENT INFRINGEMENT DAMAGES
v. UNDER 35 U.S.C. 289
SEIRUS INNOVATIVE ACCESSORIES, Request for Oral Argument

DEFENDANT.
SEIRUS REPLY BRIEF REGARDING LEGAL Troutman Sanders LLP

100 SW Main Street, Suite 1000
30660350 Telephone: 503.290.2400
Page
I. PRELIMINARY STATEMENT ........................................................................... 1
II. COLUMBIAS PROPOSED TEST IS FATALLY DEFICIENT AND
SHOULD BE REJECTED ..................................................................................... 3
A. Columbias Proposal Is Incomplete, Unclear, Biased, and Without
Legal Support ............................................................................................. 3
1. Columbias Proposal Is Incomplete ............................................... 3
2. Columbias Proposal Is Confusing, Ambiguous, and
Internally Inconsistent .................................................................... 5
3. Columbias Proposal Is Not Neutral .............................................. 8
4. Columbias Proposal Is Not Sufficiently Tied to Section
289 or Apple-Samsung ................................................................. 10
B. The Test Proposed by the Department of Justice Is a Reasonable
and Balanced Method to Identify the Article of Manufacture ................. 13
C. This Court Should Not Reverse the Customary Allocation of
Burdens .................................................................................................... 19
III. CONCLUSION .................................................................................................... 21

Page i SEIRUS REPLY BRIEF REGARDING LEGAL 100 SW Main Street, Suite 1000
30660350 Telephone: 503.290.2400
Page
CASES
Apple, Inc. v. Samsung Elecs. Co.,

No. 11-CV-01846-LHK, 2014 U.S. Dist. LEXIS 29721 (N.D. Cal. Mar. 6, 2014) ..................1
Apple Inc. v. Samsung Elecs. Co.,

Nos. 2014-1335, 2015-1029, 2017 U.S. App. LEXIS 2140 (Fed. Cir. Feb. 7, 2017) ...............1
Bell Atl. Corp. v. Twombly,

550 U.S. 544 (2007) .................................................................................................................19
Bilski v. Kappos,
561 U.S. 593 (2010) .................................................................................................................11
Garretson v. Clark,
111 U.S. 120 (1884) .................................................................................................................12
LaserDynamics, Inc. v. Quanta Computer, Inc.,

694 F.3d 51 (Fed. Cir. 2012)....................................................................................................12
Life Techs. Corp. v. Promega Corp.,

197 L. Ed. 2d 33 (U.S. 2017) .................................................................................................5, 6
Nordock, Inc. v. Sys., Inc.,

No. 11-C-118, 2014 U.S. Dist. LEXIS 104746 (E.D. Wis. July 31, 2014) ...............................1
Nordock, Inc. v. Sys., Inc.,

Nos. 2014-1762, 2014-1795, 2017 U.S. App. LEXIS 4732 (Fed. Cir. Mar. 17, 2017) .............1
Rite-Hite Corp. v. Kelley Co.,

56 F.3d 1538 (Fed. Cir. 1995)..................................................................................................11
Samsung Elecs. Co. v. Apple Inc.,

137 S. Ct. 429 (2016) ....................................................................................................... passim
Versata Software, Inc. v. SAP Am., Inc.,

717 F.3d 1255 (Fed. Cir. 2013)................................................................................................12
VirnetX, Inc. v. Cisco Sys.,

767 F.3d 1308 (Fed. Cir. 2014)..........................................................................................11, 12
Westinghouse Elec. & Mfg. Co. v. Wagner Elec. & Mfg. Co.,
225 U.S. 604 (1912) .................................................................................................................12

Page ii SEIRUS REPLY BRIEF REGARDING LEGAL 100 SW Main Street, Suite 1000
30660350 Telephone: 503.290.2400
(continued)
Page
STATUTES
35 U.S.C. 271(f) ............................................................................................................................6
35 U.S.C. 284 ........................................................................................................................10, 11
35 U.S.C. 289 ...................................................................................................................... passim

Page iii SEIRUS REPLY BRIEF REGARDING LEGAL 100 SW Main Street, Suite 1000
30660350 Telephone: 503.290.2400
I. PRELIMINARY STATEMENT
When the Supreme Court vacated the legal standard for design patent damages in
December, 2016, it specifically left the determination of a new standard to the lower courts. The
lower courts have thus been charged with determining how best to identify the relevant article
of manufacture in light of the scope of a given patented design and the manner in which the
design has been applied in an accused product. As this Court enters these uncharted waters,1 it is
in need of even-handed and practical guidance to devise a test for these damages. The test
proposed by the DOJ2 provides both; Columbias proposal offers neither. Instead, Columbia has
cherry-picked those elements of the DOJ test it finds most favorable in the current casenone of
which even involve a close review of the design patent itselfand proposed a test that it believes
supports its ultimate conclusion that the accused products in this case must be the relevant article
of manufacture. In doing so, Columbia essentially ignores the possibility that the Court might
ever be confronted with a situation in which less than the entire end product constitutes the
article of manufacture. Columbias test simply restates the now-vacated law, and it is designed to
achieve disgorgement of profits attributable to the entire product sold to consumers without
regard to determining what the article of manufacture really is.
To determine the relevant article of manufacture, the Court will need to determine if the
accused product contains multiple components, and if it does, which component(s) embodies the
1
Seirus has identified two other Courts that may face similar questions in the near future, though
apparently neither has yet solicited briefing on this specific issue. See Apple Inc. v. Samsung
Elecs. Co., Nos. 2014-1335, 2015-1029, 2017 U.S. App. LEXIS 2140 (Fed. Cir. Feb. 7, 2017)
(District Court docket available at Apple, Inc. v. Samsung Elecs. Co., No. 11-CV-01846-LHK
(N.D. Cal.)); Nordock, Inc. v. Sys., Inc., Nos. 2014-1762, 2014-1795, 2017 U.S. App. LEXIS
4732 (Fed. Cir. Mar. 17, 2017) (District Court docket available at Nordock, Inc. v. Sys., Inc., No.
11-C-118 (E.D. Wis.)).
2
Seirus will continue to use the defined terms from its opening brief (doc. 151).
Page 1 SEIRUS REPLY BRIEF REGARDING LEGAL 100 SW Main Street, Suite 1000
30660350 Telephone: 503.290.2400
article of manufacture protected by the design patent. To be sure, the product as sold will not
always comprise multiple components. But, the Court needs to determine that threshold question,
and Columbia provides almost no guidance. Instead, Columbia focuses on its self-serving goal of
equating the article of manufacture with the accused product, and nothing less.
The parties were in agreement that the DOJ test from its Apple-Samsung amicus brief was
an even-handed and well-designed test. Indeed, it was Columbia that initially advocated for
using that testincluding on multiple occasions in front of this Court. Now, however, Columbia
has backtracked. The self-serving nature of Columbias test is made worse by the fact that it is
unworkable. For example, Columbias legal standard is presented in the form of a jury
instruction with multiple parts and sub-parts. It is not realistic or feasible for a jury to parse
Columbias multipart proposed test, that usesbut does not define or explainterms like
material part of all of the components or ingredient parts or portion of the product to which
the design has been applied.
At bottom, Columbias proposal fails in at least four ways. First, it offers an incomplete
answer to the question of how to identify the article of manufacture, offering the Court no
meaningful guidance when the article of manufacture is anything less than the entire product as
sold, or how to practically determine whether a product is single- or multi-component. Second,
what guidance it does offer is ambiguous and internally inconsistent, raising many questions that
Columbia makes no effort to answer. Third, Columbias proposal is not neutral to the problem at
hand. Fourth, Columbias proposal is insufficiently grounded in the principles articulated in
289 and Apple-Samsung, the only binding guidance on this subject. For these reasons,
Columbias proposal should be rejected.

30660350 Telephone: 503.290.2400
II. COLUMBIAS PROPOSED TEST IS FATALLY DEFICIENT AND SHOULD

BE REJECTED
A. Columbias Proposal Is Incomplete, Unclear, Biased, and Without Legal Support.
1. Columbias Proposal Is Incomplete.
This Court directed the parties to define what the appropriate standard should be for
design patent damages. (Tr. of Feb. 13, 2017 hearing (Feb. Tr.), excerpts of which are attached
as Exhibit A to the declaration of Matthew Murphey, filed contemporaneously herewith, at
117:16-18; accord Dkt No. 153.) In discussing the appropriate legal standard during the hearing,
Columbia suggested it involved two issues: Are you dealing with a multi-component product?
If not, all the old rules apply, [] 289 applies. Then the question is: Are you dealing with a multi-
component product? . . . . [T]hen what test do you apply to determine what specific component
within the multi-component article the patented design has been applied to and how should it be
treated? (Feb Tr. at 120:9-20.) Notably, Columbia has failed to even respond to these questions
in its brief as it framed them for the Court.
Columbias proposal contemplates three conditions under which a Court will treat the
entire product as the relevant article of manufacture.3 In Columbias first formulation, if the
product is a single component, the product will be the relevant article of manufacture. The
3
Columbia proposes a test designed to ensnare the entire product as sold. Rather than propose a
test to determine what is the relevant article of manufacture without any preconceived notion of
whether it encompasses the entire product as sold, Columbia begins with the premise that the
relevant article of manufacture is the entire product if one of three conditions is satisfied. If
not satisfied, however, Columbia provides no meaningful guidance in determining what
constitutes the relevant article of manufacture. Further, Columbia ignores the specific teachings
of Apple-Samsung in which the Supreme Court jettisoned the idea that the entire product must be
the relevant article of manufacture and plainly held that a component could be the relevant article
of manufacture under 289, whether or not that component had been sold separately. 137 S. Ct.
429, 435-36 (2016).
30660350 Telephone: 503.290.2400
parties agree on this point; Seirus made the same argument in its opening brief.4 (Seirus
Opening Brief (Dkt No. 151) (Ser. Br.) at 10.) If the product is not a single component
product, however, Columbia argues the entire product should nonetheless be treated as the
relevant article of manufacture in the second and third circumstances it describes: if the
patented design is applied to all or a/the5 material part of all of the components[,] or if the
component or components to which the patented design is applied creates the basis for the
consumers demand for the product, or substantially creates the value of the other component
parts of the product[.] (Columbias Opening Brief (Dkt No. 150) (Col. Br.) at 2.)
To further complicate matters, however, if the relevant article does not satisfy one of the
three conditions that Columbia proposed, Columbia asserts that the relevant article of
manufacture for calculating disgorgement of profits is the portion of the product to which the
design has been applied. (Id.) At no point in Columbias brief does it expand upon this directive
or even attempt to answer basic questions such as: What is a portion of a product? What is the
design? What does it mean for the design to have been applied to that portion? Columbia
devotes an entire page to describing the largely uncontroversial first circumstance (or
condition) described above, in which the product is a single componentthough it offers no
workable definition of component, as discussed below at subsection 2yet Columbia
completely neglected to provide this Court with any guidance on how to identify the relevant
article of manufacture if it is not determined to be the entire product. The question the parties
were directed to brief, as even Columbia described it, was what test do you apply to determine
4
Unlike Columbia, however, Seirus acknowledged the possibility of a reasonable dispute
between the parties on this question. An objective test such as that proposed by the DOJ will be
invaluable in such a circumstance.
5
See Col. Br. at 6. This inconsistency is addressed below in subsection 2.
30660350 Telephone: 503.290.2400
what specific component within that multi-component article the patented design has been
applied to and how should it be treated? (Feb. Tr. at 120:18-20.) Columbia at no point in its
brief answers the question of what test should be applied to determine the specific component
within the multi-component product to which the patented design has been applied. For this
reason alone, Columbias test is unhelpful and should be disregarded.
2. Columbias Proposal Is Confusing, Ambiguous, and Internally

Inconsistent.
Throughout its proposal, Columbia uses undefined terms that could easily be construed in
many different ways. Terms such as component and phrases such as material part and
portion of the product are susceptible to reasonable disagreement on their meaning, and as
such a discussion of what these terms mean is essential before a standard can be adopted that
uses such terms. Moreover, Columbia has failed to set forth its own standard consistently
throughout its brief, raising questions as to exactly what the test is and how it is to be applied.
Accordingly, Columbias proposal should be rejected.
Columbia utterly fails to offer a detailed analysis of what a component is or how the
Court or a jury should understand that term. See Life Techs. Corp. v. Promega Corp., 197 L. Ed.
2d 33, 39 n.2 (U.S. 2017) (declining to consider how to identify the components of a patent
where the parties had stipulated to the components in the case before the Court). Instead,
Columbia appears to point to the Supreme Courts suggestion of a dinner plate and a kitchen
oven as examples of a single component and multi-component product, respectively, as
conclusive determinations that a dinner plate is, as a matter of law, a single component product,
while a kitchen oven is, as a matter of law, a multi-component product. (Col. Br. at 2, 5.) To the
contrary, these were offered by the Supreme Court as illustrative examples of ordinary products

30660350 Telephone: 503.290.2400
with which most readers would be familiar, not legal determinations. Apple-Samsung, 137 S. Ct.
at 432.
Similarly, Columbia fails to explain its second condition in which the product will be the
article of manufacture if the patented design is applied to all or a material part of all of the
components of a multicomponent product. (Col. Br. at 2.) Columbia does not explain how a
material part should be defined or evaluated. This critique is not a straw man; Supreme Court
case law has specifically addressed similar questions, and Columbia fails to include any such
references in its discussion of its proposed standard. See, e.g., Life Techs. Corp., 197 L. Ed. 2d at
40-44 (analyzing the meaning of all or a substantial portion of the components in the context
of 35 U.S.C. 271(f)). Instead, Columbia proposed an ambiguous rule that does little to aid the
finder of fact.
Moreover, within Columbias proposal, there are repeated inconsistencies that render the
proposed standard unworkable and unreliable. These inconsistencies include:
Columbia states that the defendant must bear the burden of producing
evidence and proving that the relevant article of manufacture is a portion of
an entire product as sold[,] (Col. Br. at 2), but Columbias proposal does not
direct the jury that a presumption exists that the entire product is the article of
manufacture, as would apparently be required for the burden to apply as
Columbia suggests. Whose burden is it to establish one of the three
conditions in which the relevant article of manufacture is the entire product?
Columbias brief is silent on this issue.
Columbia alternately describes its second condition as applying when the

patented design is applied to all or a material part of all of the components of
the product (Id. at 2; see also id. at 8 (describing when the third condition may
apply)); or when the patented design is applied to all or a material part of the
infringing product as sold (Id. at 6) (emphasis added); or when the patented
design is applied to all or the material part of an entire end product sold at
market. (Id.) (emphasis added). These are three completely separate
formulations of the condition Columbia proposes to enforce, each with a
different meaning in plain English. Which does Columbia actually propose for
the jury to apply?
30660350 Telephone: 503.290.2400
Columbia repeatedly describes the two-step test necessary to arrive at a

damages award under 35 U.S.C. 289 as beginning with identify[ing] the
article of manufacture to which the infringed design has been applied. Id. at
2. Yet, critically, no part of Columbias proposal attempts to identify the
article of manufacture to which a patented design has been applied, or to
provide guidance on how to do so. Thus, Columbia appears to have missed the
entire point of the Supreme Courts remand in Apple-Samsung that a test for
determining the relevant article of manufacture was necessary. Apple-
Samsung, 137 S. Ct. at 436 (Doing so would require us to set out a test for
identifying the relevant article of manufacture at the first step of the 289
damages inquiry and to parse the record to apply that test in this case.)
Each of these inconsistencies undermines the credibility and reliability of Columbias proposal.
In addition to the internal inconsistencies, Columbias multiple steps and undefined terms
provide further uncertainty for the jury. For example, each of Columbias three conditions for
defining the article of manufacture as the entire product is increasingly complex and convoluted
with nested tests and sub-tests. While the first condition is concise, it contains the undefined term
component. The second condition also contains the undefined term component as well as the
undefined phrase all or a material part of all of the components, while also consisting of two
separate conditions (i.e., the product is multicomponent AND the design is applied to all or a
material part of all of the components). The third condition takes this complexity to another
plane, requiring that the product be multicomponent AND that the component or components
to which the design is applied creates the basis for the consumers demand for the product OR
that the component to which the design is applied substantially creates the value of the other
component parts of the product. To make matters worse, this third condition then adds a further
qualification: it applies where damages on the entire product are necessary to remedy
infringement of the patented design. (Col. Br. at 2.) Whether this is truly an addition to the third
condition, or rather an alternative basis to apply the third condition where the other elements are
met, is entirely unclear.

30660350 Telephone: 503.290.2400
In short, no juror could understand such a complicated and confusing (and legally
incorrect6) set of instructionsmuch less be able to apply it in the setting of a design-patent
infringement case. The standard this Court adopts must be consistent, readily applied to a variety
of patented designs and accused products, and understandable to a reasonable jury. Columbias
proposal lacks all of these characteristics and should not be adopted.
3. Columbias Proposal Is Not Neutral.
Columbias proposed standard was plainly reverse-engineered for the express purpose of
reaching the conclusion that Seirus products are the relevant articles of manufacture in this case.
This purpose is exposed by Columbias failure to actually answer the question of how to identify
the specific component within that multi-component article the patented design has been
applied to . . . [.] (Feb. Tr. at 120:18-20.) This is not an acceptable approach to defining a test
that will be applied in a case of first impression in the courts of the United States. Whatever test
this Court adopts must be unbiased and impartial to the patented design and the accused product
and sufficiently flexible to permit application to the incredibly broad array of patented designs
and accused products that may come before this Court or others in the future. The confusing and
ambiguous terminology in Columbias proposal undermines those goals and thus Columbias
proposal should be rejected.
Rather than apply the DOJ test, which the parties have already agreed is an acceptable
and neutral proposal, and which was the only test mentioned by the Supreme Court, Columbia
has cherry-picked favorable elements from the DOJ test. It identifies its cherry-picked elements
6
See subsection 4, infra.
30660350 Telephone: 503.290.2400
as dispositive, offering no explanation for its rejection of the other DOJ factors.7 And, Columbia
abandons identification of the component to which the patented design has been applied. Indeed,
under Columbias proposal, there is no point at which the Court is even required to look to the
scope of the design patent in question to aid it in determining what the relevant article of
manufacture is. Columbia simply refers to the patented design (or simply the design), but
nowhere does it guide the Court on how to apply the design patent to the infringing product to
evaluate whether all or a material part of the product bears the infringing design. Columbia
includes an image of one of Seirus accused products in its brief,8 but never once refers to its
own design patent. (See Col. Br. at 8.) This effort to construct a result that favors Columbias
7
For example, Columbia proposes that whether portions of [the] product are sold separately
should be a consideration in determining whether the infringing product is a single-component
product or a multicomponent product. (Col. Br. at 2.) Columbia appears to have lifted this
from the fourth factor of the DOJs proposed test for determining what the article of manufacture
is. See DOJ Br. at 29 (discussing relevant elements to evaluate the physical relationship between
the patented design and the rest of the product, including whether the component is
manufactured or sold separately); Ser. Br. at 2. But Columbia blatantly ignores that the DOJ
offered this consideration before the Supreme Court directed that whether the component is sold
separately is not a determinative factor to identifying the article of manufacture. Apple-Samsung,
137 S. Ct. at 436. And Columbia further ignores that the DOJ offered this consideration as but
one part of the evaluation of a single factor to determine what the article of manufacture is, not
whether the accused product is single- or multicomponent. While this consideration is relevant, it
certainly should not be dispositive.
Similarly, Columbia offers the complexity of the infringing product as another consideration in
this analysis. (Col. Br. at 2.) The reference to complexity is a red herring to the extent this term
is used to incorporate functional aspects of the accused products. Functionality is irrelevant to
the analysis of design patent infringement and damages. (Ser. Br. at 14.) The only way in which
complexity is relevant, is the extent to which a complex product might be one that consists
of multiple components, where a simple product might be one that consists of a single
component. In that case, complexity is merely a semantic device, and not a useful tool for
determine whether a product consists of a single component or multiple components, or whether
the article of manufacture should be the entire product or a component thereof.
8
The Court should be aware that the product Columbia chose to depict in its brief is certainly not
representative of the array of Seirus HeatWave products, including those products with multiple
components, but where only one such component bears the allegedly infringing design.
30660350 Telephone: 503.290.2400
damages theory should be rejected in favor of a more objective, neutral standard that will be
workable in all cases that may look to this Court for guidance in the future.
4. Columbias Proposal Is Not Sufficiently Tied to Section 289 or Apple-

Samsung.
Perhaps the most egregious flaw in Columbias proposal is its failure to tie the governing
statute and case law to its proposal. The Supreme Courts decision in Apple-Samsung provides
the starting point for any determination of design patent damages. That decision does not offer a
test to determine the article of manufacture, but it does tell us that:
An article of manufacture is simply a thing made by hand or by machine. 137 S.

Ct. at 435.
A component of a product, no less than the product itself, is [also] a thing made by
hand or machine, and the fact [t]hat a component may be integrated into a larger
product, in other words, does not put it outside the category of the articles of
manufacture. Id.
[T]he term article of manufacture is broad enough to embrace both a product sold
to a consumer and a component of that product, whether sold separately or not. Id. at
436.
(Ser. Br. at 6.)
Despite this guidance, Columbia proposes to import the language of 35 U.S.C. 284,
requiring damages adequate to compensate for the infringement, into 289, without offering
any legal basis for adopting such an approach. Indeed, such an approach is flawed as there is no
justification for intertwining these alternative statutes. As Columbia has acknowledged, 289 is
an alternative remedya plaintiff can instead elect to pursue damages under 284 without the
need for identifying the relevant article of manufacture. So, not surprisingly, the case law
Columbia cites on the applicability of the entire market value rule all involves 284, not 289.
The two statutes are intended to be applied differently. In Apple-Samsung, the Court

30660350 Telephone: 503.290.2400
enforced the Congressionally adopted limitation of the equitable remedy of disgorgement by
requiring that damages under 289 be applied only to the article of manufacture that
encompasses the patented design. 137 S. Ct. at 436; 35 U.S.C. 289. In contrast, the entire
market value rule approach proposed by Columbia is an exception to the general principle, under
284, that a patentee will recover only for damages arising from the individual component
patented, not for all of the components of a multicomponent product. This exception expands,
rather than limits, the calculation of damages to include other components not protected by the
utility patent. See Rite-Hite Corp. v. Kelley Co., 56 F.3d 1538, 1549-51 (Fed. Cir. 1995). Thus,
while Apple-Samsung limits disgorgement damages available to a design patent holder in the
context of an infringing multicomponent product, the entire market value rule expands the
damages available to a utility patent holder in the context of an infringing multicomponent
product. Those two approaches are irreconcilable.
Further, VirnetX, which Columbia relies on heavily, is inapplicable for at least two
reasons. VirnetX, Inc. v. Cisco Sys., 767 F.3d 1308 (Fed. Cir. 2014). First, VirnetX is not a design
patent case but rather is concerned with infringement of utility patents.9 Second, VirnetX did not
apply the entire market value rule. Instead, it held that the plaintiffs expert committed error
when failing to apportion damages under 284. See VirnetX, 767 F.3d at 1328-29. Moreover,
VirnetX is indeed altogether critical of the entire market value rule. In fact, it explicitly held that
when claims are drawn to an individual component of a multi-component product, it is the
9
The entire market value rules focus on function indicates that the rule was developed in the
context of utility patents, and that the rule was only contemplated in that context. Compare Rite-
Hite, 56 F.3d at 1550 (the entire market value rule requires that the unpatented components
must function together with the patented component in some manner so as to produce a desired
end product or result.) (emphasis added), with Bilski v. Kappos, 561 U.S. 593, 601 (2010)
(finding that design patents cannot protect functional features). Columbia ignores this glaring
flaw in its proposed use of the entire market value rule.
30660350 Telephone: 503.290.2400
exception, not the rule, that damages may be based upon the value of the multi-component
product. VirnetX, 767 F.3d at 1326-27 (citing LaserDynamics, Inc. v. Quanta Computer, Inc.,
694 F.3d 51, 67-68 (Fed. Cir. 2012)). The Court in VirnetX only reaffirmed the existing rule as
applied to utility patents that, in the absence of a showing that the patented feature creates the
basis for customer demand or substantially creates the value of the component parts[,] . . .
principles of apportionment apply. Id. (quoting Versata Software, Inc. v. SAP Am., Inc., 717
F.3d 1255, 1268 (Fed. Cir. 2013)).
Columbia then improperly argues that the entire market value rule is applicable to design
patents because of two antiquated Supreme Court decisions. (Col. Br. at 9-10 (citing Garretson
v. Clark, 111 U.S. 120, 121 (1884); Westinghouse Elec. & Mfg. Co. v. Wagner Elec. & Mfg. Co.,
225 U.S. 604, 615 (1912).) This line of argument is flawed, however, becauseas Columbia
admitsthe approaches used to award damages for infringement of design patents and utility
patents diverged decades after these cited cases, when disgorgement of profits was no longer
available as a damages remedy in the utility patent context. (Id. at 10 (The remedy of
disgorgement was removed for utility patent damages in the Act of August 1, 1946.)). Indeed,
and unsurprisingly, Columbia offers no citations to cases after Westinghouse that apply the
reasoning of Westinghouse in the context of design patent damages. More than a century later, in
the wake of Apple-Samsung, the Supreme Court has made clear that 289 is not a traditional
disgorgement remedy. The statute explicitly limits the accounting of profits to those attributable
to the article of manufacture. Apple-Samsung, 137 S. Ct. at 436; 35 U.S.C. 289. Thus, even if
Columbias strained theory on the relevance of the entire market value rule for disgorgement of
profits is true, it is not applicable to 289 because the legislatively proscribed limitation of
disgorgement damages under 289 creates a unique, alternative remedy.

30660350 Telephone: 503.290.2400
Because Columbias proposal is not sufficiently tied to either the Congressionally
approved language of 289 or the Supreme Court directives of Apple-Samsung, it should not be
adopted.
B. The Test Proposed by the Department of Justice Is a Reasonable and Balanced

Method to Identify the Article of Manufacture.
The Department of Justice has already offered a workable, neutral framework for
determining the relevant article of manufacture. The parties agreed that this standard was
reasonable and reliable in their previous submissions to this Court. (See Columbias Mot. Am.
Scheduling Order (Dkt. No. 129 at 2 (asking the Court to adopt the recommended test proffered
by the Department of Justice as the governing legal standard to be applied in this case to the
determination of articles of manufacture pursuant to 35 U.S.C. 289); Seirus Resp. to Mot.
Am. (Dkt. No. 137 at 14) (responding to Columbias motion by proposing a stay or continuance,
and arguing that the Court should not adopt a binding determination of the applicable test, but
noting the parties agreement that they will both utilize this [DOJ] test to guide their discovery
efforts in the absence of a stay); letter dated December 27, 2016, from David Axelrod to the
Court at 2 (stating that Columbia has proposed that the parties agree to the standard offered by
the DOJ as amicus in Samsung, and that Seirus has offered no objection); letter dated December
30, 2016, from Matthew Murphey to Court at 2 (acknowledging the DOJ test is the only
standard available to the parties to evaluate the article of manufacture).) Columbia has now
attempted to rewrite this history, claiming that Seirus did not stipulate to using that test[.] (Col.
Br. at 2 n.1.) Seirus primary objections to the DOJs proposal, as addressed fully in its opening
brief, were (1) its reliance, at least in part, on whether the component bearing the patented design
was sold separately to determine whether it could be the article of manufacturea consideration

30660350 Telephone: 503.290.2400
the Supreme Court expressly rejected in Apple-Samsung; and (2) the DOJs allocation of
burdens. Nothing short of full briefing of this issueas ordered by this Courtwould permit
these issues to be fully teased out. See also Tr. of Jan. 10, 2017 telephonic hearing, excerpts of
which are attached as Exhibit B to the declaration of Matthew Murphey, filed
contemporaneously herewith, at 6:20-7:1 (Your Honor, we dont believe we have exact
agreements. Theres a motion pending before you, I believe, filed by Columbia, that addresses
this topic [of adopting the DOJ test for design patent damages under 289] in whole or in part.
[Seirus] still wish[es] to submit a brief on that to the Court, because Mr. Aldrich used the word
minor, and we believe that the change in the law is major, and its going to require more.); id.
at 7:3-5 (So at this point -- at this point I think the Court would benefit from briefing [on this
issue], and even the sides would benefit from briefing on the issue.); accord Dkt No. 140.)
Seirus requested the opportunity to identify its concerns with how the DOJs proposed test was
to be applied. Columbia, on the other hand, advocated the DOJ test until the Court provided an
opportunity to support that position fully, and then abandoned the test entirely.
Whatever one is to make of the proposal Columbia has spun from whole cloth, the reality
is that the DOJ test remains the only standard that was actually cited by the Supreme Court
among the various proposals cited by numerous amici. Apple-Samsung, 137 S. Ct. at 436
An Exemplary Application of the DOJ Test
As Seirus argued in its opening brief, the DOJ has proposed a flexible and neutral
standard that will work with a great variety of patented designs and accused products. How that
test will apply to this design patent and these accused products will be determined by the results
of further discovery, the evidence put on at trial, the jury instructions agreed to between the

30660350 Telephone: 503.290.2400
parties or decided upon by the Court,10 and the enlightened conscience of the jury. It may be
worth considering, however, how the DOJ test would apply to the example raised in Columbias
brief: the design patent for a chair. (Col. Br. at 7-8.) This is an imperfect analog for the case at
bar, of course, because the exemplar patent Columbia cites covers the design of a single product
in its entirety (i.e., a chair with a seat, a back, and support bars), whereas Columbias patent
covers only the design born by fabric to be incorporated into various products, as illustrated by
the dashed-out lines in Columbias patent that expressly disclaim the global products bearing its
patented designs, such as the shoe:

Columbias design patent covers The example design patent cited by
only the ornamental design of a Columbia (Col. Br. at 7) covers the
heat reflective material but entire chair and thus includes all of
expressly excludes the footwear the constituent parts (i.e., seat,
into which it is incorporated. back, support bars) within the
D093 Patent, cover. scope of the design patent.
The broken
linesform
no part of
the claimed
design.
Nonetheless, applying the DOJ test to Columbias selected example demonstrates the flexibility
and impartiality of the DOJ test.
10
While the Court will presumably issue an order directing the parties what standard to apply to
guide their discovery efforts going forward, the time for preparing jury instructions is still many
months away. To the extent the Court is inclined to fashion a jury instruction at this stage,
however, Seirus respectfully reserves the right to respond to such instruction.
30660350 Telephone: 503.290.2400
The DOJ test consists of four considerations to determine whether the relevant article of
manufacture in a multicomponent product is the product itself, or a component of that product.
These considerations are:
4. the physical relationship between the patented design and the rest of the product.
(Ser. Br. at 2.) Beginning with the first element, the scope of the patented design: based on the
information offered in Columbias example, the chair patent covers the design of an entire chair,
consisting of approximately 3 separate partsa seat, a back, and multiple lengths of a pipe or
rod that serves as the legs and support for the seat and back. Nothing in the figures of the
patented design is disclaimed, indicating that the design patent claims all elements of the design
of the chair: the trapezoidal, curved-edge shape of the seat and back, the lower back support legs,
the connection of the support elements to the seat and back without any visible screws or
attachment points from the users point of view.
With this careful analysis of the patented design itself, one then moves to consider the
second factor, the relative prominence of the design within the product as a whole.
Unfortunately, Columbias example failed to identify what the hypothetical product would be in
proposing its test. There are two obvious possibilities, very generally speaking: Scenario A
where the accused product is simply a chair that looks much like the chair in the images of the
patented design, or Scenario B where the accused product is a larger productperhaps a
school childs desk of the type that has a chair attached to itthat contains the patented design
within it, but also includes additional features (in this hypothetical, perhaps an additional arm
30660350 Telephone: 503.290.2400
with a writing surface attached, and/or a basket beneath the seat for storing books).11 In Scenario
A, the analysis is quite simple: the design patent and the accused product overlap 100%, with no
additional unpatented features included on the product. The relative prominence of the design
would thus presumably be quite high. In Scenario B, however, the relative prominence of the
design would likely depend upon the prominence of the unpatented features of the overall
product. For sake of discussion, it will be assumed that even in the case of a larger product
incorporating the patented chair design, the patented design is somewhat prominent, though less
so than in the former example.
This leads directly into the third consideration: whether the design is conceptually distinct
from the product as a whole. In Scenario A, where the accused product is the chair, the answer is
simply no; the accused product is entirely subsumed within the patented design. In Scenario B,
by comparison, the answer would be yes, at least because the product as a whole includes
additional features such as a writing surface and basket that is beyond the scope of the patented
design.
Consideration of such features is offered by the fourth factor of DOJ test, the physical
relationship between the patented design and the rest of the product. In Scenario A, this physical
relationship cannot be minimized; the product embodies the design, and there is no rest of the
product to consider. In Scenario B, however, it is relevant whether the additional elements of
the larger product are manufactured separately from the infringing chair and added later, or
whether it is all manufactured together. Lets assume, for the sake of discussion, that the product
is manufactured all in one facility in a single process, and not through the construction of several
11
For purposes of discussion, it is assumed that the accused product infringes and in fact bears
the patented design on at least some component(s).
30660350 Telephone: 503.290.2400
separate sub-parts that are compiled at a final assembly facility.
Taking these considerations together, for Scenario A there can be no question that using
the DOJ test the design patentee would be able to establish that where the accused product is the
chair, that chair is the relevant article of manufacture as to which it should recover profits under
289. There is a close match between the claims of the design patent and the hypothetical chair
itself. While Columbia would have the Court compress this conclusion into a single step that
asks whether the patented design is applied to all or a material part of all of the components,
(Col. Br. at 2, 6), the DOJ test provides the more logical analysis in asking the Court to both
provide a careful review of the patented design (to determine the patents scope) and the accused
product (to identify in what manner and to which component(s) the design has been applied to
the product).
Perhaps more importantly for this case, for Scenario B the DOJ test is the only competent
analysis for the larger accused product. Under the DOJ test, one can see that the design is
entirely embodied within the accused product, but that the product does not only embody the
design (i.e., the design patent covering the entirety of the chair is included within the accused
product even though the accused product also includes additional features such as a writing
surface or storage basket). The jury would thus be instructed to consider what is the scope of the
patented design (first DOJ factor), how much of the patented design is included within the
accused product (second DOJ factor), whether the accused product embodies distinct aspects not
captured within the patented design (third DOJ factor), and the physical relationship between
aspects of the accused product that incorporate the patented design and the rest of the product
(that does not incorporate the patented design) (fourth DOJ factor).
The jury might reasonably conclude, from these considerations, that the patented design
30660350 Telephone: 503.290.2400
is so significant within the context of the accused product that the article of manufacture must
nonetheless be the accused product. The jury might also reasonably conclude that the additional
features of the larger accused product are sufficiently distinct and significant to warrant
distinguishing the chair itself as the article of manufacture and the attached writing surface and
basket as simply other features of the accused product for which the patentee should not recover.
In either case, the jury will have had the benefit of significantly more meaningful evidence and
guidance than simply asking it to determine whether all or a material part of all of the
components bear the patented design as Columbia proposes.
The example above is, of course, only a hypothetical. There are unlimited adjustments
that could be made to these hypothetical facts that could affect the outcome of the article of
manufacture analysis. This is precisely why the DOJ test is so useful: it is designed to permit the
unique facts of each case to drive the outcome of the analysis rather than a backward-looking
analysis that is designed to reach only a given outcome. The DOJ test is the best option available
to the Court, and should be adopted.
C. This Court Should Not Reverse the Customary Allocation of Burdens.
The burden of pleading always falls upon the plaintiff; Columbia has not argued
otherwise. As such, as Seirus argued in its opening brief, the plaintiff should be expected
plausibly to plead the elements of its claims, including the elements of its claim for damages
under 289. (Ser. Br. at 15 (citing Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007)).)
The burden of establishing the article of manufacture should also fall on the patentee.
Though the DOJ and Columbia would both have the Court reverse this burden, Columbia merely
parrots the DOJs own words and offers no independent justification for the reversal of the
customary burdens. (Col. Br. at 11-12.) As Seirus addressed in its opening brief, the DOJs logic
30660350 Telephone: 503.290.2400
(adopted by Columbia) is flawed in its analogizing the defendants burden to prove the
untainted portions of a defendants profits. (Ser. Br. at 16.) Unless and until the patentee
identifies the accused products and produces evidence supporting the patentees belief that those
products are the relevant article of manufacture, the defendant will be left fencing a paper tiger.
A party defending a patent infringement suit should not be forced to parse the patentees patent
and incur significant expense to present expert testimony on the subject of the appropriate
construction of the patentees patent in the context of the defendants accused product(s) until
some minimum showing is made by the patentee. Likewise, the patentee should not be permitted
to demand extortionate settlement figures to permit the defendant to extract itself from patent
litigation that places zero burden upon the plaintiff. Such an outcome would be unfair and
irresponsible. As cited in Seirus opening brief, the case law supports the conclusion that the
burden of persuasion typically lies with the plaintiff, and should not be reversed here until after
the patentee has presented a prima facie case.
The reversed burden that Columbia proposes is particularly confounding under its own
proposal. Columbias formulation of the legal standard suggests three exceptions to the
apparent default assumption that the relevant article of manufacture for calculating
disgorgement of profits is the portion of the product to which the design has been applied. (Col.
Br. at 2.) However, it proposes allocating the burden to the defendant to prov[e] that the
relevant article of manufacture is a portion of the entire product as sold. (Id.) Apparently,
then, the defendant would need to disprove the existence of one of the three exceptions in order
to establish that the relevant article of manufacture is only that portion of the product to which
the design has been applied. This simply does not comport with Columbias proposed legal
standard; this is an inherent flaw in Columbias approach. Columbias proposal is plainly

30660350 Telephone: 503.290.2400
designed to capture the accused products in this case within one of the three exceptions
Columbia has defined. Indeed, Columbias intent is belied by its failure to even address how the
Court would proceed if the fact finder were to find that none of the three exceptions applied. It
offers no guidance on how to determine the portion of the product to which the patented design
has been applied. The Supreme Court did not say, in Apple-Samsung, that there may be
exceptions to the general rule that the entire product is the article of manufacture. Rather, the
Supreme Court jettisoned the idea that the entire product must be the article of manufacture and
plainly held that a component could be the relevant article of manufacture under 289, whether
that component has been sold separately or not. 137 S. Ct. at 436.
Columbias proposed legal standard is stated completely inverse to how it would need
to be stated for the defendant to properly bear the burden of proof, as opposed to the burden to
rebut whichever of these conditions the patentee asserts and presents evidence to support. As
discussed above, this is yet another shortcoming of Columbias self-serving proposal that further
supports rejecting Columbias proposal in favor of the DOJ test for determining the relevant
article of manufacture and the usual allocation of burdens between plaintiff and defendant.
III. CONCLUSION
For the foregoing reasons, Seirus respectfully requests that the Court reject the standard
and burden allocation proposed by Columbia and instead adopt the DOJ test, placing the burden
upon the plaintiff in the first instance as discussed in Seirus opening brief (Dkt. No. 151). Seirus
further requests that the Court direct discovery as described in Seirus opening brief.

30660350 Telephone: 503.290.2400
DATED: March 23, 2017 Respectfully submitted,
TROUTMAN SANDERS LLP
s/ Matthew D. Murphey
Portland, OR 97205
Telephone: (503) 290-2344
Facsimile: (503) 290-2405
MATTHEW D. MURPHEY (admitted pro hac vice)

Irvine, CA 92614
Telephone: (949) 662-2700
Facsimile: (949) 622-2739
PAUL E. MCGOWAN (admitted pro hac vice)

Atlanta, GA 30308
Telephone: (404) 885-3000
Facsimile: (404) 962-6842
Attorneys for Defendant Seirus Innovative

Accessories, Inc.

30660350 Telephone: 503.290.2400

Email: daxelrod@schwabe.com
Email: seads@schwabe.com
Email: naldrich@schwabe.com
Pacwest Center
1211 SW 5th Ave., Suite 1900
Portland, OR 97204
Telephone: 503.222.9981
Facsimile: 503.796.2900
Attorneys for Plaintiff
IN THE UNITED STATES DISTRICT COURT

PLAINTIFF COLUMBIA SPORTSWEAR
Plaintiff, NORTH AMERICA, INC.S RESPONSE TO
DEFENDANT SEIRUSS OPENING BRIEF
vs. REGARDING LEGAL STANDARD FOR
DESIGN PATENT INFRINGEMENT
SEIRUS INNOVATIVE ACCESSORIES, DAMAGES
Defendant.

Page 1 - COLUMBIAS RESPONSE TO SEIRUSS OPENING Attorneys at Law
Pacwest Center
BRIEF REGARDING THE LEGAL STANDARD FOR 1211 SW 5th Ave., Suite 1900
Portland, OR 97204
DESIGN PATENT DAMAGES Telephone: 503.222.9981
Fax: 503.796.2900
I. INTRODUCTION
The Supreme Court issued its decision in Samsung Elects. Co. v. Apple Inc., 135 S. Ct.
429 (2016) (Samsung) on December 6, 2016. 1 At that time, trial on damages for Seiruss
infringement of the design patent and on the two utility patents in suit was scheduled for April
2017. [Dkt. No. 40.] Columbia immediately sought a meet and confer with Seirus to discuss the
impact of Samsung on this case, and to discuss a path forward toward trial in April. (Ex. 1 2 ) In
light of the short time frame, and the fact that the test offered by the Department of Justice
(DOJ) as amicus curiae in the Samsung case was the only test offered for determining the
relevant article of manufacture, Columbia proposed that the parties agree to adopt the DOJ
test for this case, to simplify the Courts and the parties work. (Id.) An agreement to use the
DOJ test would allow the parties to complete supplemental discovery in time for trial in April.
By letter and motion, Columbia proposed that the Court adopt the DOJ test for this case, and
modify the operative Scheduling Order to allow the parties to supplement their disclosures in
light of the change in the law. (Ex. 2; [Dkt. No. 129].)
In response, Seirus requested a stay of the trial date. (Ex. 3) For two months, Seirus
refused to engage in any discovery or supplementations required under Rule 26 and necessary for
the parties to prepare for trial. Then, at the February 13, 2017 summary judgment hearing, the
Court asked the parties whether they would agree to use the test proposed by the DOJ. Columbia
responded that the DOJ test was acceptable. [Tr. at 116:17-19.] Seirus responded that it was
not of that opinion. [Tr. at 116:21.] Again, Seirus refused to engage in discovery respecting
any issues pertaining to the impact of Samsung. As a result of Seiruss disagreement with the
DOJ test, the Court continued the trial date until September 2017 and ordered the parties to
1
Contrary to Seiruss hyperbole, Samsung did not vacate or jettison or dramatically alter[]
the landscape for design patent damages. [Cf. Dkt. No. 151 p. 6 & n. 1 (emphasis in original).]
The majority of design patent cases will be unaffected by the Courts decision, which was
narrowly tailored to multi-component products.
2
Ex. ___ refers to the exhibits to the Declaration of Nika Aldrich in support hereof.
Pacwest Center
Portland, OR 97204
Fax: 503.796.2900
submit briefs concerning the standard that should be applied to section 289. [Tr. at 116-122;
Dkt. No. 144.]
Thus, it is telling that, having successfully sought a delay in the trial on the utility patents
by informing the Court that it disagreed with the DOJ test, thereby allowing it to continue to sell
infringing goods for yet another season, Seirus now proposes to adopt that very test. Indeed, it
appears that Seirus never actually disagreed with the DOJ test at all, and never had an alternative
to provide.
As explained below, although Columbia would have stipulated to using that test given an
impending trial deadline, it believes that the test it proposes is more consistent with legal
precedent, and puts the factual inquiries posited by the DOJ into a proper and workable
framework for the jury, consistent with longstanding patent damages jurisprudence.
II. THE DEFICIENCIES OF THE DOJ TEST

The DOJ test, upon reflection, contains a number of deficiencies, because the test is
not a legal test but a recitation of factors. The DOJs factors are to be evaluated after a
determination that the defendants infringing product is, in fact, a multicomponent product.
The DOJ test does not address this threshold question and provides neither a standard nor
considerations for making this initial determination. Seirus concedes that this is a threshold
inquiry, Dkt. No. 151, pp. 9 (the parties dispute whether the product at issue is a
multicomponent product in the first instance), 10, but proffers no standard for instructing the
jury on this issue.
If the threshold inquiry is passed and a multicomponent product is at issue, the DOJ test
fails to set forth a standard by which to determine when the relevant article of manufacture may
be a component or some portion thereof rather than the entire product as sold to the consumer.
Instead, it only identifies several relevant factors without teaching a jury how these factors are to
be weighed or applied. How, for example, do the various factors relate to each other, how are
they to be balanced, and how is a jury supposed to use these facts? How does the analysis help
Pacwest Center
Portland, OR 97204
Fax: 503.796.2900
the jury to then decide what the relevant article of manufacture is for a given case? How will
the Court determine whether the jury properly assessed these factors and determined the relevant
article of manufacture?
To this end, some parts of the DOJ test are ambiguous. For example, the third inquiry
states that [i]f the product contains other components that embody conceptually distinct
innovations, it may be appropriate to conclude that a component is the relevant article. (Ex. 4,
p. 37) But, under what facts would it be so appropriate? Similarly, the first prong states:
In some cases, the patent will indicate that the design is intended to be
applied to a component of the product. . . . But the factfinder should not
treat the patents designation of the article as conclusive.
(Id., p. 36) How will a jury know, with this instruction, how much relevance to give to the fact
that the design is intended to be applied to only a component of the product?
For these reasons, the DOJs test does not articulate a legal standard that can be
consistently followed, and that risks confusing the jury, while providing little guidance to the
Court. On the other hand, the standard offered by Columbia is based on the Supreme Courts
language in Samsung and 130 years of binding Supreme Court and Federal Circuit jurisprudence,
while also incorporating the DOJs factors. 3
III. COLUMBIAS PROPOSED LEGAL STANDARD PROVIDES AN

APPROPRIATE FRAMEWORK FOR THE DOJ FACTORS
Columbias proposed legal standard provides what is missing from the DOJ brief: a
legally supported framework with which to assess the relevance of the factual inquiries. As
explained in its opening brief [Dkt. No. 150], Columbia asserts that disgorgement applies to the
entire product bearing the patented design as sold to the consumer where:
3
The DOJ relies primarily on two cases in support of its analysis. (Ex. 4, pp. 35-37 (citing Bush
& Lane Piano Co. v. Becker Bros., 222 F. 902 (2d Cir. 1915) (Piano I), following remand, 234
F. 79 (2d Cir. 1916) (Piano II); Young v. Grand Rapids Refrigerator Co., 268 F. 966 (6th Cir.
1920)).) Each of these cases was decided approximately 100 years ago, under the Act of
February 4, 1887, not the statute before the Court. Neither of the cases is precedential. South
Corp. v. United States, 690 F.2d 1368, 1370-71 (Fed. Cir. 1982) (decisions from the circuit
courts of appeals are not precedential authority in any patent dispute).
Pacwest Center
Portland, OR 97204
Fax: 503.796.2900
1. The product is a single-component product; or
2. The product is a multicomponent product and the patented design is applied to

all or a material part of all of the components; or
3. The product is a multicomponent product and the component or components to

which the patented design is applied creates the basis for the consumers demand
for the product, or substantially creates the value of the other component parts of
the product.
If none of these conditions is met, then disgorgement is applied to the component or portion of
the product to which the design is applied.
A. Unitary products are by definition the relevant article of manufacture.

The first condition of the Columbia proposed standard addresses the threshold issue:
where the product sold to the end user is a single component, or unitary, product. Columbia
identifies a standard for that determination. For such unitary products, the Supreme Court has
expressly held that disgorgement applies to all of the profits from the entire product. 4 Samsung,
136 S. Ct. at 432. If this condition is met, further inquiry is unnecessary.
B. Where the design covers a material portion of the product.

The second condition provides a legal standard for assessing whether disgorgement
applies to an entire multicomponent product. Under this second condition, the finished good
sold to the consumer is the relevant article of manufacture where the patented design is applied
to all or a material part of all of the components of the product. Thus, where the scope of the
design is drawn to a component or components that play prominently in the design of the product
as a whole, the second condition may be satisfied. On the other hand, a design that has an
insignificant role in the overall product design will not satisfy the second condition.
4
In its brief, Seirus hedges on this issue, suggesting that, even for a single component product, a
test may still be necessary to determine whether disgorgement applies to that product. [Dkt. No.
151, p. 11 (Where a Product is Undisputedly a Single Component, the DOJ Test May Be
Unnecessary. (emphasis added)).] However, the Supreme Court was unmistakably clear on this
point: In the case of a design for a single-component product . . . the product is the article of
manufacture to which the design has been applied. (emphasis added).
Pacwest Center
Portland, OR 97204
Fax: 503.796.2900
Applying this legal standard, the four factors posited by the DOJ may be still relevant in a
given case. For example, the DOJs first and second factors cover the scope of the [patented]
design and the relative prominence of the design within the product as a whole. (Ex. 4, pp.
35-36 5) These factors are used to determine whether the patented design is applied to all or a
material part of all of the components. Similarly, the DOJs third and fourth factors, whether
the design is conceptually distinct from the product as a whole, and the physical relationship
between the patented design and the rest of the product, will also help inform the jury about
whether the patented design is applied to a material part of all of the components. Accordingly,
Columbias second condition provides a legal standard that can be assessed by resort to the
DOJs four factors.
C. Where the component or portion to which the design is applied drives

consumer demand.
The DOJs factors may also be relevant to Columbias third condition, that the
components drive consumer demand for the finished product. As explained in Columbias
opening brief, Columbias third condition implements longstanding principles in patent litigation
for determining when recovery of damages based on the value of the entire apparatus containing
several features, where the patent related feature is the basis for customer demand. State Indus.,
Inc. v. Mor-Flo Indus., Inc., 883 F.2d 1573, 1580 (Fed. Cir. 1989). Consistent with longstanding
precedent, in such a case, it is proper to attribute the profits for the entire product to the
infringing component. In the context of section 289 after Samsung, the patentee is entitled to
disgorge the profits of the entire good as sold to market when the component to which the design
is applied sufficiently drives consumer demand.
This application of entire market value rule principles in the design patent context flows
from an important feature of section 289. Section 289 was adopted by Congress to relieve that
design patentee of the burden of proving the value of, or damages attributable to, the design
5
Throughout this brief, the page numbers provided are to the exhibit page number, not to the
page number in the underlying document as it was originally numbered.
Pacwest Center
Portland, OR 97204
Fax: 503.796.2900
itself. To achieve that goal, section 289 mandates disgorgement of the total profits attributable to
the article of manufacture to which the design has been applied. It is the article of
manufacture, not the design or its value, that measures the total profit under section 289. Under
longstanding principles, where the article to which the design is applied drives consumer demand
for the entire product, profits from the entire product are attributable to the component bearing
the design.
At the Supreme Court, Samsung argued for a contrary rulethat damages should be
based off of the profits made from the infringing design, not the profits from the article of
manufacture to which the design was applied. 6 The DOJ repudiated that idea, noting the
language in the statute and the significant conceptual and practical difference between the profit
attributable to the infringing article and the profit attributable to the infringement. (Ex. 4, p. 23)
Section 289 makes the infringer liable for all the profits it received from sales of that article,
even if the articles other attributes contributed to those profits. (Id., p. 18; see also id., pp. 22-
23, 33, 34-35.)
But if the component to which the design is applied creates the basis for the customer
demand, or substantially creates the value of the other component parts, then the profits for that
article really encompass the profits for the finished product as a whole. VirnetX, Inc. v. Cisco
Sys. Inc., 767 F.3d 1308, 1326 (Fed. Cir. 2014). This is because the patented component [is] of
such paramount importance that it substantially create[s] the value of the component parts.
Rite-Hite Corp. v. Kelley Co., 56 F.3d 1538, 1549 (Fed. Cir. 1995) (en banc) (quoting Marconi
Wireless Telegraph Co. v. United States, 99 Ct. Cl. 1, 49 (U.S. 1942), aff'd in part and vacated
in part, 320 U.S. 1 (1943)). Accordingly, where the patented design is applied to a component
6
The Supreme Court expressly noted Samsungs abandonment of this argument. Samsung, 137
S. Ct. at 434, n.2.
Pacwest Center
Portland, OR 97204
Fax: 503.796.2900
that drives consumer demand for the entire product, disgorgement of the profits attributable to
that component includes all profits earned from sales of the entire product. 7
The DOJ anticipates and thus supports Columbias third condition. [I]n cases where the
relevant article of manufacture is not sold separately but is instead a component of a larger
product, identifying the infringers profit on that article may require an inquiry that is
functionally similar to a traditional causation analysis. (Ex. 4, p. 23) The entire market value
rule is such a traditional causation analysis. See, e.g., Garretson v. Clark, 111 U.S. 120, 121
(1884) (requiring that the entire value of the whole machine be properly and legally
attributable to the patented feature.). Several of the DOJ factors not surprisingly are applicable
to Columbias third condition. For example, Seirus acknowledges that the popularity of the
product, as distinct from a design embedded within the product, would be relevant to the DOJs
third factor. [Dkt. No. 151, p. 14.] Thus, the DOJs third factor would help establish the extent
to which the designed components drive consumer demand for the product.
D. Where none of the three conditions apply.

If none of the three conditions of Columbias standard apply, then section 289 and
Samsung authorizes disgorgement of only the total profits attributable to the component or
portion of the product to which the design is applied. In this circumstance, no DOJ factors apply
but the allocation of the infringers profits would be made on the particular facts of the case. No
separate test is needed.
Accordingly, Columbias standard does not ignore the efforts, analysis, or suggestions of
the DOJ, but rather incorporates them into a framework that is consistent with extensive
precedential authority. For these reasons, Seiruss proposal to adopt the DOJs four factors,
without more, should be rejected, and Columbias proposed legal standard should be adopted.
7
Under Columbias third condition, whether the relevant article of manufacture is considered the
component or the full product, the results are the same.
Pacwest Center
Portland, OR 97204
Fax: 503.796.2900
IV. SEIRUSS CONSTRUCTION OF COMPONENT SHOULD BE REJECTED

It is important to appropriately construe component, because it is used to determine the
threshold question provided in Samsungwhether the accused product is a single-component or
a multicomponent product.
While pretending to be a disinterested proponent of a universal standard, Seiruss self-
interested advocacy is nowhere more blatant than its proposal to define a component as any
piece or part of a product. Seirus relies on out-of-context dictionary definitions and a court
decision that was asked in claim construction to define the term garment component in a utility
patent in support of its construction. But that authority has nothing to do with the inquiry before
this Court: ascertaining whether a finished product sold to market is a single component or a
Seirus argues that a component is anything that is, or could be, part of a larger whole.
[Dkt. No. 151, p. 8.] It suggests, on the one hand, that a component is something that may
not be susceptible to disassembly, like a dinner plate or a screw. [Id.] But on the other hand, it
contends that a rounded rim or a front face of a device may be a component of the device.
[Id., p. 14.] Neither a rounded rim nor a front face of a device such as a smartphone or a
glove can be disassembled from the finished good. Taking this construction, any surface to
which a design has been applied (rather than a part itself) could be considered an independent
component, reducing the Supreme Courts threshold determination to absurdity. Even Seirus
acknowledges that at some level of abstraction anything could be considered a component.
[Dkt. No. 151, p. 9 n. 5.]
Fortunately, both Congress and the Supreme Court have provided guidance as to the
meaning of component. Not every discrete part of a finished good is a separate component.
For example, in Samsung, the Supreme Court declared that a dinner plate is a single-
component product. Samsung, 137 S. Ct. at 432. Of course, dinner plates, like every other
article of manufacture, are made of constituent parts. Dinner plates are made from ceramic,

Pacwest Center
Portland, OR 97204
Fax: 503.796.2900
glazes, dyes, foils, metals, and other discrete ingredients. (Ex 5, Ex. 6.) Any plate with a
design, almost by definition, has multiple ingredients, as is necessary to effectuate the design.
A walk through any china shop confirms this fact, but U.S. design patents to dinner plates make
the point, such as the following:
(Ex. 7, Fig. 3 ). Clearly, this design-patented dinner plate has multiple ingredients, though the
Supreme Court holds that it is a single component product.

Thus, the term component cannot mean a mere surface of a finished good. And a
single-component product can still include many separate ingredients. To suggest that the
Supreme Court in Samsung held otherwise would serve to eliminate the existence of single-
component products. But the Supreme Court affirmed that there are single-component products.
Samsung, 137 S. Ct. at 432.
Similarly, 35 U.S.C. 271(c) and (f) both use the term component when determining
the significance of a portion of a larger product for infringement liability and damages purposes.
Seirus cites those same provisions, but they directly support Columbias proposed standard.
Interpreting these sections, the Supreme Court has held that a component under 271(c) can

Pacwest Center
Portland, OR 97204
Fax: 503.796.2900
include complex computer software programs, Microsoft Corp. v. AT & T Corp., 127 S. Ct.
1746, 1756 (a copy of Windows . . . qualifies as a component under 271(f)); and multi-part
machinery for cleaning shrimp, Deepsouth Packing Co. v. Laitram Corp., 406 U.S. 518, 524
(1972) (applying 271(c)). Therefore, a component can include a combination of multiple
parts, and, by extension, so can a single-component product.
Seirus has provided no guidance for identifying a single-component product, though it
is the threshold question identified by the Supreme Court in the opening paragraph in Samsung.
For this reason alone, Seiruss test should be rejected.
Moreover, Columbias proposed standard for a single-component product is consistent
with the Supreme Courts guidance. Columbia proposed the following standard:
In evaluating whether the infringing product should be considered a single-

component product or a multicomponent product, you should consider the
complexity of the infringing product, the separability of its ingredient parts, and
whether portions of that product are sold separately or made by independent
vendors and assembled by or for the infringer. For example, a dinner plate is
considered a single-component product while a modern kitchen oven is
considered a multicomponent product.
[Dkt. No. 150, p. 2.] Thus, this standard looks to the complexity and separability of the
constituent parts in determining whether the product should be considered a single-component
product. 8 Columbias standard also includes, for guidance to the jury, the analogy provided by
the Supreme Court: a dinner plate is a single-component product, and a kitchen oven is a
multicomponent product. Samsung, 137 S. Ct. at 432.
Columbias standard also aligns with the DOJs analysis of the overriding purpose of the
inquiry:
In cases where the identity of the relevant article of manufacture is
otherwise open to reasonable dispute, the factfinder may legitimately
consider which characterization would appropriately compensate (rather
than over-compensate) the patentee for the contribution of the patented
design to the value of the infringers finished product
8
This part of the standard should be unobjectionable to Seirus, which notes that a single
component product may not be susceptible to disassembly. [Dkt. No. 151, p. 8.]
Pacwest Center
Portland, OR 97204
Fax: 503.796.2900
(Ex. 4, p. 35) Columbias standard allows the jury to find that a finished product may be
considered a single-component product, thereby allowing disgorgement of total profits from its
sale so as to appropriately compensate . . . the patentee for the infringers wrongdoing.
Accordingly, the Court should adopt Columbias proposed standard for ascertaining
whether a product is a single-component product, and should reject Seiruss internally
inconsistent construction of component that contradicts the Supreme Courts holding in
Samsung.
V. THE BURDENS TO DEPART FROM SECTION 289s FOCUS ON THE

PRODUCT AS SOLD TO THE CONSUMER SHOULD BE ON THE INFRINGER
Seirus objects to the burden of persuasion being on the infringer, but makes no
meaningful objection to the infringer bearing the burden of production. As explained by the
DOJ, [t]he defendant, as the manufacturer or seller of the accused product, has superior
knowledge of the identity of the products components, as well as of some of the factors relevant
to the article determination, including the physical relationship between the design and the
product; the manner in which the product is manufactured; and the extent to which the product
reflects the innovations of parties other than the plaintiff. (Ex. 4, p. 39) These are longstanding
and well-accepted factors in allocating the burden of production.
Seirus makes three contrary arguments, none of which has merit. First, Seirus argues
that:
Requiring the defendant to parse the plaintiffs patent in the first instance, and
present expert evidence of how that patent should apply to the defendants
product before the plaintiff has presented any evidenceespecially evidence that
the patent covers the entire accused productunfairly shifts the burden.
[Dkt. No. 151, p. 16.]

But this argument makes no sense. The patentee must identify the infringing product in
its Complaint. See Rule 8. The parties then have the various tools of discovery, including
contention interrogatories, available to develop the record. This all takes place before the
defendant is required to produce evidence establishing that the relevant article of manufacture
Pacwest Center
Portland, OR 97204
Fax: 503.796.2900
is less than the whole. The burden is not unfairly shifted at all. To the contrary, it would be
unfair to require that the plaintiff prove a negativethat there is a lack of components that might
qualify as the relevant article of manufacture for purposes of section 289.
Seiruss second argument is equally unavailing. It argues that:
Such a rule would encourage plaintiffs holding design patents on minor

components to sue manufacturers of complex and costly product, knowing that
the plaintiff need only allege infringement, and then the burden of defending the
allegations will shift to the defendant.
[Dkt. No. 151, p. 16.] This is manifestly untrue. The burden of proving infringement
indisputably lies with the patentee. Bn v. Jeantet, 129 U.S. 683 (1889). The rule is no
different for design patents. Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679 (2008) (en
banc). The burden of defending the allegations will never shift to the defendant.
Regardless, in this case, that infringement is already determined. The issue here is the
defendants attempt to limit its liability for that infringement by proving that damages should be
reduced from the profits it earned by selling an infringing article to the public.
Seirus finally argues that there is no evidence of legislative intent to reverse the burden
of persuasion on damages under 289. [Dkt. No. 151, p. 16.] But that argument also makes no
sense. At the time of the passing of section 289, the law was clear that the article of
manufacture was always the finished product sold to the end consumer. That has been the law
for the last 130 years, since [t]he Act of 1887, specific to design patents, removed the
apportionment requirement. Nike, Inc. v. Wal-Mart Stores, Inc., 138 F.3d 1437, 1441 (Fed. Cir.
1998). 9 The language in the Act of 1887 has become what, as of the Patent Act of 1952, is
Section 289. Id., at 1442. Given the stable state of the law for, at that time, 75 years, there was
no need for Congress to include express language about the burden of proof in section 289. Only
the advent of more complex, sophisticated products and the Supreme Courts decision in
9
The Piano cases cited in the DOJ brief were based on the commercial practice in 1915 in
which ordinary purchasers regarded a piano and a piano case as distinct articles of manufacture.
Apple Inc. v. Samsung Elects Co., 786 F.3d 983, 1002 (Fed. Cir. 2015) (reversed in Samsung).
Pacwest Center
Portland, OR 97204
Fax: 503.796.2900
Samsung have necessitated a test for determining the relevant article of manufacture, which
Congress could not have anticipated. Even Seirus admits that this is a case of first impression.
[Dkt. No. 151, p. 2.] Moreover, Congressional intent is clear insofar as Congress intended to
allow the patentee to disgorge the total profit from the infringer. That remains the law post-
Samsung.
As with the burden of production, the burden of persuasion should also rest with the
infringer. That burden is dictated by the language in section 289 itself: anyone who applies [a]
patented design . . . to any article of manufacture for the purpose of sale shall be liable for
his total profit. As articulated by the DOJ, Congress enacted the total profit standard now
contained in Section 289s first paragraph to relieve the patentee of the burden of demonstrating
the portion of the infringers profit that is attributable to the infringement. (Ex. 4, p. 23) The
total profit is recoverable (the infringer shall be liable) upon proof that an infringing design has
been applied to an article of manufacture for the purpose of sale or who sells or exposes for
sale such article. The total profit attributable to the article of manufacture is recoverable
regardless of the contribution to that profit from the design itself as contrasted with other
attributes of the article. (Id., pp. 18, 22-23, 33, 34-35.) In context, section 289 itself and 100
years of decisional law applying it, without more, qualify the entire article of manufacture sold
as a relevant article of manufacture.
As the DOJ recognizes throughout its amicus brief, it is common to allocate the burdens
of production (pleading and proffer of evidence) and proof in the calculation and entitlement to
profits to the defendant in intellectual property cases where the equitable remedy of
disgorgement is applicable. (Id., pp. 38-39.) This practice was an established rule in copyright
and trademark cases when section 289 was enacted. And it is utilized elsewhere. In cases
involving disgorgement of ill-gotten gains, the burden is on the wrongdoer to prove that some of
the identified profits were not tainted. For example, courts have adopted a burden shifting
approach to causation in which the SEC is required to produce evidence supporting a reasonable
Pacwest Center
Portland, OR 97204
Fax: 503.796.2900
approximation of actual profits on the tainted transactions . . . This creates a presumption of
illegal profits. Once the SEC has made this showing, the burden shifts back to the defendant to
demonstrate that the disgorgement figure [is] not a reasonable approximation. SEC v. Teo, 746
F.3d 90, 105 (3d Cir. 2014) (internal citations and quotations omitted). The Court noted that, in
such a disgorgement case, the risk of uncertainty should fall on the wrongdoer whose illegal
conduct created the uncertainty. Id. (quoting Rest. (Third) Restitution 51(5)(d)). Importantly,
the defendants burden is not simply one of carrying the ball back across the fifty-yard line by
presenting a merely plausible alternative explanation for the profit. Rather, the defendant must
adduceat a minimumspecific evidence explaining why the disputed profits should not be
disgorged. Id. at 107-08.
Because Seirus has failed to rebut the DOJs well-reasoned position on this issue, the
Court should adopt the DOJ position.
VI. SEIRUS MUST PRODUCE ITS CONTENTIONS

Seirus asserts that Columbia should explicitly state whether it claims that the relevant
article of manufacture is, in each instance, the entire product . . . [Dkt No. 151, p. 18.] But as
noted above Columbia long ago notified Seirus of its position. This case deals with unitary
articles that cannot be disassembled and are analogous to carpets, dinner plates and wallpaper.
Hats, gloves, socks, and liners are the productsnecessarily the articles of manufactureon
which Columbias damages claim have been predicated for more than a year. For the avoidance
of doubt and shortly after the Samsung decision issued, Columbia wrote to Seiruss counsel:
Columbia contends that each of Seiruss HeatWave marketed products is an article
of manufacture pursuant to Section 289, with respect to the D093 Patent. (Ex. 1.) That
position has not changed. Columbia also asked Seirus to identify:
what articles of manufacture Seirus thinks are at issue. We assume, but tell us
if we are wrong, that Seirus does not contest that its hats, socks, and glove liners,
which are all made exclusively from HeatWave fabric bearing the infringing
wavy lines design, are each an article of manufacture with respect to the D093
Patent. We also assume that Seirus will contend a glove is not the relevant article
Pacwest Center
Portland, OR 97204
Fax: 503.796.2900
of manufacture with respect to the D093 Patent. Please confirm and advise us of
Seiruss ultimate position with respect to its gloves. This will save
everyone significant work as we enter the few months before trial.
There is a distinction in this case between Seiruss gloves, which have the HeatWave
fabric only on the inside, on the one hand, and its hats, socks, and glove liners, which are made
entirely from the HeatWave fabric, on the other hand. Columbia repeated its request for Seirus
to state its position multiple times. (Ex. 8; Ex. 9; Ex. 2, p. 2 n. 1) Seirus has still failed to
respond, though an answer is long overdue pursuant to Fed. R. Civ. P. 26(e).
Seirus must start by articulating what it contends are the relevant articles of
manufacture in this case and the basis for such contentions. Then the parties can engage in
meaningful, efficient discovery based on the actual disputed issues in this case.
VII. RESPONSE TO SEIRUSS PROPOSED SCHEDULE

On pages 20-21 of its opening brief, Seirus proposes a schedule for completion of
damages discovery. [Dkt. No. 151.] Clearly, that schedule will not work. The first two dates in
Seiruss proposed schedule, including a Supplemental discovery request deadline, are in April.
But the Court said that it could be the end of May before it decides what standard will apply to
this issue. [Tr. at 121:16-21.]
Once the standard that will be adopted for this case is established and Seirus produces its
required contentions, Columbia is amenable to an expedited exchange of discovery such that
discovery will be completed with sufficient time before the scheduled September 19 trial date.
Given the narrow issues and the extensive damages discovery requests already outstanding to
both parties, the panoply of written discovery available under the Federal Rules is not
necessaryboth parties can produce the evidence they will rely on at trial in support of their
contentions, pursuant to Rule 26. Seirus, as the party with the burden of production, should
produce its evidence first.
Thus, Columbia proposes the following schedule, giving each party approximately three
weeks to produce its evidence following the Courts decision:

Pacwest Center
Portland, OR 97204
Fax: 503.796.2900
Three weeks after the Courts ruling on this issue Seirus produces its evidence in
support of its contentions, including supplemental disclosures and expert reports
Six weeks after the Courts ruling Columbia produces its evidence in support of its
contentions, including supplemental disclosures and expert reports
Nine weeks after the Courts ruling Close of discovery.
CONCLUSION
For the reasons provided above, Seiruss proposed legal standard should be rejected, and
the Court should adopt the legal standard and jury instructions proposed by Columbia.
Dated this 23rd day of March, 2017.
Respectfully submitted,
By: s/ Nicholas F. Aldrich

Telephone: 503.222.9981
Facsimile: 503.796.2900
Of Attorneys for Plaintiff

Columbia Sportswear North America, Inc.

Pacwest Center
Portland, OR 97204
Fax: 503.796.2900
PDX\106477\192966\NFA\20314802.4

Columbia v. Seirus - 289 Briefing

Uploaded by

Document Information

Copyright

Available Formats

Share this document

Share or Embed Document

Sharing Options

Did you find this document useful?

Is this content inappropriate?

Copyright:

Available Formats

Columbia v. Seirus - 289 Briefing

Uploaded by

Copyright:

Available Formats

Case 3:15-cv-00064-HZ Document 150 Filed 03/09/17 Page 1 of 12

David W. Axelrod, OSB #750231

Attorneys for Plaintiff

IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF OREGON

COLUMBIA SPORTSWEAR NORTH No. 3:15-cv-00064-HZ

SEIRUS INNOVATIVE ACCESSORIES,

pursuant to 35 U.S.C. 289:

SCHWABE, WILLIAMSON & WYATT, P.C.

PROPOSED LEGAL STANDARD

1. The product is a single-component product; or

2. The product is a multicomponent product and the patented design is applied to

3. The product is a multicomponent product and the component or components to

In evaluating whether the infringing product should be considered a single-

Specifically, 35 U.S.C. 289 reads:

retain no profit from their wrong.)

product is a multicomponent product; the damages analysis for single-component products

SCHWABE, WILLIAMSON & WYATT, P.C.

patent covers only a single component.

II. THE PREAMBLE A TWO-STEP TEST

137 S. Ct. at 434.

manufacture is only a component of the product as sold. Columbia proposes three

manufacture. Each circumstance is explained in the following sections. If no circumstance

III. THE ENTIRE INFRINGING PRODUCT IS THE RELEVANT ARTICLE OF

an assembly of complex components including cameras, microprocessors, software programs,

Accordingly, where the infringing product sold to market is a single-component product,

infringing product is a single-component product (i.e., a dinner plate), or a multicomponent

Department of Justice in its proposed test.

SCHWABE, WILLIAMSON & WYATT, P.C.

IV. THE ENTIRE INFRINGING PRODUCT IS THE RELEVANT ARTICLE OF

For example, U.S. Design Patent 150,685 is for a Chair.

SCHWABE, WILLIAMSON & WYATT, P.C.

those multiple components. In such a case, it would be inequitable to allow an infringer to

all made entirely from the infringing HEATWAVE fabric:

SCHWABE, WILLIAMSON & WYATT, P.C.

infringing product as sold to market.

V. THE ENTIRE INFRINGING PRODUCT IS THE RELEVANT ARTICLE OF

When a patentee seeks damages on unpatented components sold with a patented

on the unpatented components or technology [are] necessary to fully compensate for

Hewlett-Packard Co., 609 F. Supp. 2d 279, 285 (N.D.N.Y. 2009).

Elec. & Mfg. Co., 225 U.S. 604, 615 (1912).

preserved the right of profit disgorgement for design patents.

Westinghouse, 225 U.S. at 615 (same).

affirmed that when claims are drawn to an individual component of a multi-component

717 F.3d 1255, 1268 (Fed. Cir. 2013)).

components to which the design that has been applied.

VI. BURDEN OF PRODUCTION AND PROOF OF THE ARTICLE OF

Samsung amicus brief:

SCHWABE, WILLIAMSON & WYATT, P.C.

By: s/ Nicholas F. Aldrich

Of Attorneys for Plaintiff

SCHWABE, WILLIAMSON & WYATT, P.C.

In the Supreme Court of the United States

BRIEF FOR THE UNITED STATES

DONALD B. VERRILLI, JR.

Table of ContentsContinued: Page

Statutes and regulation:

Act of Feb. 4, 1887, ch. 105, 24 Stat. 387 ............................. 12

Statutes and regulationContinued: Page

In the Supreme Court of the United States

BRIEF FOR THE UNITED STATES

INTEREST OF THE UNITED STATES

but also for ornamental designs. Gorham Co. v.

Subsec. III (rev. 9th ed. 2015); see 37 C.F.R. 1.153(a).