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NORDOCK, INC.,
Plaintiff,
Civil Action No. 11-cv-118
v.
Magistrate Judge William E Duffin
SYSTEMS, INC.,
Defendant.
DEFENDANTS RESPONSE TO COURTS QUESTIONS REGARDING THE
RELEVANT ARTICLE OF MANUFACTURE AND ISSUES RELATING THERETO
Defendant Systems, Inc., by undersigned counsel, hereby provides its answers to the
questions asked by this Court during the Status Conference of June 20, 2017 and set out in its
Minute Order of that date. In particular, Systems, Inc., addresses the following questions posed
by the Court: (1) what the article of manufacture is in this case; (2) what factors are to be
considered in determining the article of manufacture; and (3) who has the burden of proof with
respect to the question of the article of manufacture.
To provide meaningful answers to the above-questions, and in recognition that the
current assigned Judge did not handle this matter at its beginning and did not preside over the
trial, a brief review of the relevant facts and history of this case may be helpful.
I. FACTS
[S]ee also Nordock, Inc. v. Systems Inc., 803 F. 3d 1344, 1355 (CA
Fed. 2015) (declining to limit a 289 award to a design for a lip
and hinge plate because it was welded together with a leveler
and there was no evidence it was sold separate[ly] from the
leveler as a complete unit).
Thus, the Supreme Court has indicated that neither the welded structure of Systems products
nor the lack of evidence that the lip and hinge plate are sold separately are controlling.
The Supreme Court in Samsung v. Apple expressly declined to to set out a test for
identifying the relevant article of manufacture and instead invited the Federal Circuit to,
address any remaining issues on remand. On remand, the Federal Circuit, too, declined to
specify a test at this time and, instead, remanded the case to this Court for further action.
2. This Court May And Should Adopt The Test Proposed By The United
States As Amicus Curiae Before The Supreme Court
In the Samsung proceedings before the Supreme Court, the United States, appearing as
Amicus Curiae in support of neither party, proposed a test and framework for determining the
relevant article of manufacture for purposes of 289. (A copy of the Amicus brief filed by the
United States is attached as Exhibit B to the accompanying Declaration of Philip P. Mann.)
Although the Supreme Court declined to adopt that or any other test in the absence of adequate
briefing by the parties, the test proposed by the United States is, nevertheless, workable,
C. Who Has The Burden Of Proof With Respect To The Question Of The
Article Of Manufacture
Both the Supreme Court and the Federal Circuit have apparently declined to clarify who,
exactly, has the burden of proof regarding what is the article of manufacture. In the absence of
such clarification, the ordinary rule that a plaintiff bears the initial burden of proof on all issues,
including the issue of damages, should not be disturbed. Having requested, under 35 U.S.C.
289 Systems profits from the sale of any article of manufacture to which [the patented]
design...has been applied, Nordock should be charged with the burden of establishing what that
article of manufacture is, as such is an essential part of its case in chief.
However, as Systems, Inc., has already offered, and remains fully prepared to continue
offering evidence establishing that the relevant article of manufacture is the lip and hinge plate
actually shown in the 754 Patent, Systems, Inc., without waiver of its position stated above, is
prepared to offer proof on this issue should the Court so require.
the Clerk of the Court using the CM/ECF system which will send notification of such filing to
the following: