Seirus' Motion For JNOV

Case 3:17-cv-01781-HZ Document 431 Filed 01/05/18 PageID.
18595 Page 1 of 47
1 Christopher S. Marchese (SBN 170239), marchese@fr.com

Seth M. Sproul (SBN 217711), sproul@fr.com
2
Michael A. Amon (SBN 226221), amon@fr.com
3 Garrett K. Sakimae (SBN 288453), sakimae@fr.com
Tucker N. Terhufen (SBN 311038), terhufen@fr.com
4
Oliver J. Richards (SBN 310972), orichards@fr.com
5 FISH & RICHARDSON P.C.
12390 El Camino Real
6
San Diego, CA 92130
7 Tel: (858) 678-5070, Fax: (858) 678-5099
8
Renée Rothauge, (SBN 271239), reneerothauge@markowitzherbold.com
9 MARKOWITZ HERBOLD PC
10 1211 SW Fifth Avenue, Suite 3000
Portland, OR 97204
11 Tel: (503) 295-3085, Fax: (503) 323-9105
12
Attorneys for Defendant, Seirus Innovative Accessories, Inc.
13
IN THE UNITED STATES DISTRICT COURT
14 FOR THE SOUTHERN DISTRICT OF CALIFORNIA
15
COLUMBIA SPORTSWEAR NORTH Case No. 3:17-cv-01781
16 AMERICA, INC., an Oregon
17 corporation, MEMORANDUM OF POINTS AND
AUTHORITIES IN SUPPORT OF
18 Plaintiff, SEIRUS’ MOTIONS FOR JUDGMENT
19 AS A MATTER OF LAW OR A NEW
v. TRIAL
20
SEIRUS INNOVATIVE REDACTED
21 ACCESSORIES, INC., a Utah
corporation
22 Judge: Marco A. Hernandez
23 Defendants.
24 Date Action Filed: January 12, 2015
25 Trial Date: September 18, 2017
26
27
28
MEMORANDUM IN SUPPORT OF SEIRUS’S POST-TRIAL MOTIONS

Case No. 3:17-cv-01781
Case 3:17-cv-01781-HZ Document 431 Filed 01/05/18 PageID.18596 Page 2 of 47
1 TABLE OF CONTENTS
2 Page
3 I. INTRODUCTION ............................................................................................. 1
4 II. BACKGROUND AND FACTS ........................................................................ 3
5
A. Prior Proceedings on the Jury Instructions for the “Article of
6 Manufacture” ........................................................................................... 3
7 B. Columbia’s Damages Presentation Was Limited Solely to Assuming
8 that the Entire End-Products, Rather than the Fabric, Were the Article
of Manufacture ........................................................................................ 6
9
III. LEGAL STANDARDS ..................................................................................... 7
10
11 A. Judgment as a Matter of Law .................................................................. 7
12 B. New Trial................................................................................................. 7
13 C. Determining the Appropriate Article of Manufacture ............................ 9
14
IV. ARGUMENT................................................................................................... 10
15
A. The Court Should Grant JMOL That the HeatWave Fabric Is the
16 “Article of Manufacture” and Reduce Damages Accordingly ............. 10
17
1. The HeatWave Fabric Is an “Article of Manufacture” ............... 11
18
2. The HeatWave Fabric, Not the Entire Outer Shell Gloves, Is the
19 Relevant “Article of Manufacture” as a Matter of Law for
20 Calculating § 289 Damages ........................................................ 12
21 3. The Liners, Socks, and Hats Are Not the Appropriate “Article of
22 Manufacture” .............................................................................. 24
23 4. JMOL Reducing the Damages Award to $500,817 is the

Appropriate Remedy ................................................................... 28
24
25 B. Alternatively, the Court Should Grant a New Trial on Damages for Any
of Several Independent Reasons ........................................................... 28
26
1. The Jury’s Award of Total Profits was Excessive and Against the
27 Great Weight of the Evidence..................................................... 29
28
i
MEMORANDUM IN SUPPORT OF SERIUS’S POST-TRIAL MOTIONS
Case No. 3:17-cv-01781
1 2. It was Legally Improper to Shift the Burden to Seirus to Establish

the Article of Manufacture .......................................................... 30
2
3 3. The Article of Manufacture Jury Instruction Did Not Reflect the
Proper Legal Test ........................................................................ 37
4
4. The Verdict Form Improperly Omitted Identification of the
5
Article of Manufacture................................................................ 39
6
V. CONCLUSION ............................................................................................... 40
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Case No. 3:17-cv-01781
1 TABLE OF AUTHORITIES
2 Page(s)
3
Cases
4
Arctic Cat Inc. v. Bombardier Recreational Prods. Inc.,
5 876 F.3d 1350 (Fed. Cir. 2017) .......................................................... 34, 35, 36, 37
6
Bush & Lane Piano Co. v. Becker Bros.,
7 222 F. 902 (2d Cir. 1915), reaffirmed in subsequent appeal 234 F. 79 (2d Cir.
1916) ..................................................................................................... 9, 11, 16, 22
8
9 Cephalon, Inc. v. Watson Pharms., Inc.,
707 F.3d 1330 (Fed. Cir. 2013) .............................................................................. 9
10
Clem v. Lomeli,
11
566 F.3d 1177 (9th Cir. 2009) ................................................................................ 8
12
Egyptian Goddess, Inc. v. Swisa, Inc.,
13 543 F.3d 685 (Fed. Cir. 2008) .............................................................................. 31
14
Experience Hendrix L.L.C. v. Hendrixlicensing.com Ltd.,
15 762 F.3d 829 (9th Cir. 2014) ...................................................................... 8, 29, 30
16 FCC v. NextWave Personal Commc’ns, Inc.,
17 537 U.S. 292 (2003).............................................................................................. 32
18 Garretson v. Clark,
19 111 U.S. 120 (1884).............................................................................................. 33
20 Grand Rapids Refrigerator Co. v. Young,

268 F. 966 (6th Cir. 1920) .......................................................................... 9, 11, 37
21
22 LaserDynamics, Inc. v. Quanta Computer, Inc.,
694 F.3d 51 (Fed. Cir. 2012) ................................................................................ 33
23
Lee v. Dayton-Hudson Corp.,
24 838 F.2d 1186 (Fed. Cir. 1988) ................................................................ 18, 20, 26
25
Lucent Techs., Inc. v. Gateway, Inc.,
26 580 F.3d 1301 (Fed. Cir. 2009) ...................................................................... 30, 32
27 Lucent Techs., Inc. v. Microsoft Corp.,
28 837 F. Supp. 2d 1107 (S.D. Cal. 2011) ...................................................... 7, 28, 33
iii
Case No. 3:17-cv-01781
1 Meghrig v. KFC Western, Inc.,

516 U.S. 479 (1996).............................................................................................. 32
2
3 Molski v. M.J. Cable, Inc.
481 F.3d 724 (9th Cir. 2007) .................................................................................. 8
4
Murphy v. City of Long Beach,
5
914 F.2d 183 (9th Cir. 1990) .................................................................................. 8
6
Nike, Inc. v. Wal-Mart Stores, Inc.,
7 138 F.3d 1437 (Fed. Cir. 1998) ............................................................................ 35
8
OddzOn Prods., Inc. v. Just Toys, Inc.,
9 122 F.3d 1396 (Fed. Cir. 1997) ................................................................ 18, 20, 26
10 Oltz v. St. Peter’s Cmty. Hosp.,
11 861 F.2d 1440 (9th Cir. 1988) ................................................................................ 8
12 Samsung Electronics Co., Ltd. v. Apple, Inc.,
13 137 S. Ct. 429 (2016)..................................................................................... passim
14 Schaffer ex rel. Schaffer v. Weast,

546 U.S. 49 (2005)................................................................................................ 30
15
16 Siebrand v. Gossnell,
234 F.2d 81 (9th Cir. 1956) .................................................................................... 8
17
VirnetX, Inc. v. Cisco Sys., Inc.,
18 767 F.3d 1308 (Fed. Cir. 2014) ............................................................................ 33
19
Williams v. Bridgeport Music, Inc.,
20 2015 WL 4479500 (C.D. Cal. July 14, 2015) ........................................................ 7
21 Winarto v. Toshiba Am. Elecs. Components, Inc.,
22 274 F.3d 1276 (9th Cir. 2001) ................................................................................ 7
23 Wyers v. Master Lock Co.,
24 616 F.3d 1231 (Fed. Cir. 2010) .............................................................................. 9
25 Statutes
26 15 U.S.C. § 1117(a) ................................................................................................... 32
27 17 U.S.C. § 504(b) ..................................................................................................... 32
28
35 U.S.C. § 171(a) ......................................................................................... 18, 20, 26
iv
Case No. 3:17-cv-01781
1 35 U.S.C. § 271(a) ..................................................................................................... 31

2 35 U.S.C. § 284 .......................................................................................................... 32
3
35 U.S.C. § 287(a) ..................................................................................................... 34
4
35 U.S.C. § 289 ................................................................................................... passim
5
Other Authorities
6
7 37 C.F.R. § 1.153(a) (2011) ................................................................................. 13, 20
8 11 C. Wright, A. Miller & M. Kane, Federal Practice & Procedure § 2807 (2012) . 8
9 Fed R. Civ. P. 50 .......................................................................................................... 7
10
H.R. REP. NO. 49-1966 .............................................................................................. 36
11
H.R. REP. NO. 49-1966 (1886) ................................................................................... 31
12
Manual of Patent Examining Procedure § 1503.1 ..................................................... 20
13
14
15
16
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23
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28
v
Case No. 3:17-cv-01781
1 I. INTRODUCTION
2 The Court should grant JMOL that the HeatWave fabric is the appropriate
3 “article of manufacture” under 35 U.S.C. § 289 and reduce the damages judgment to
4 either zero or, at most, $500,817. The Supreme Court established that an “article of
5 manufacture” is not always the end-product sold to customers—it “is simply a thing
6 made by man and machine.” Samsung Electronics Co., Ltd. v. Apple, Inc., 137 S. Ct.
7 429, 435 (2016). The Court did not set a definitive test for determining the relevant
8 “article of manufacture” for damages purposes, but it cautioned that § 289 is meant to
9 compensate for the “profit made from the prohibited conduct.” Id. The DOJ has
10 recommended a four-factor test to “identify the article that most fairly may be said to
11 embody the defendant’s appropriation of the plaintiff’s invention . . . without
12 unnecessarily sweeping in aspects of the product that are unrelated to that design.”
13 [See Ex. A (DOJ amicus brief) at 26.] And, as explained in more detail below, that
14 test dictates as a matter of law that the HeatWave fabric is the article of manufacture,
15 not Serius’s end-products (i.e., its complex gloves, liners, socks, and hats).
16 The common undisputed fact relevant to all four DOJ factors is that the patented
17 design is a relatively minor part of the accused products as a whole. Customers want
18 winter clothing that keeps them warm and dry; they don’t care about the look of a
19 wavy design, which is often not even visible. Columbia’s design patent, by statutory
20 requirement, has no impact on how the accused products function—other technologies
21 and components do that. So Seirus’s end-products cannot be the relevant “article of
22 manufacture”—to find otherwise would give Columbia a windfall on profits that have
23 nothing to do with its design patent. The article is instead the HeatWave fabric to
24 which the design is actually applied. And the only record damages evidence for that
25 article is the $500,817 number provided by Serius’s expert. Columbia did not present
26 any evidence for this article—its presentation (and the jury award) were instead
27 premised on the erroneous assumption that the end-products were the article of
28 manufacture. The Court should thus enter JMOL limiting damages accordingly.
1
Case No. 3:17-cv-01781
1 At a minimum, this Court should order a new trial on damages for three
2 independent reasons. First, the jury’s damages award was against the great weight of
3 the evidence, because, as noted above, the only appropriate article of manufacture is
4 the HeatWave fabric. As a result, the damages awarded were excessive, and the Court
5 should, as a minimum, grant a new trial to determine the appropriate amount of
6 damages limited to the HeatWave fabric.
7 Second, a new trial is required because the jury was erroneously instructed that
8 Seirus, the defendant, bore the burden of proving that the article of manufacture was
9 something less than the entire end-product. That instruction was legally incorrect.
10 The patentee bears the burden to prove all aspects of its damages case, including the
11 identity of the article of manufacture to which the allegedly infringing design is
12 applied. The burden of persuasion never shifts to the defendant, regardless of whether
13 the defendant might have some initial “burden of production” to identify an article of
14 manufacture less than the full product. Here, Seirus discharged any such burden of
15 production when it identified the article of manufacture as the HeatWave fabric. So
16 the only relevant burden was the burden of persuasion, which fell squarely on
17 Columbia. Yet the jury was erroneously instructed that “Seirus bears the burden of
18 proving that the article of manufacture is something less than the entire product.”
19 [App. A1 (Trial Tr.) at 2366:21–22.] That error prejudiced Seirus, requiring a new
20 trial.
21 Third, a new trial is warranted because the article of manufacture instruction
22 did not reflect the proper legal test for determining the article of manufacture. The
23 instruction allowed the jury to bypass the real issue on article of manufacture—i.e.,
24 whether the design patent is actually related to the profits from the entire end-product
25 or to just the profits from a component. The instruction accomplished this by setting
26 up an initial distinction between “single” and “multi-component” products that is not
27
1
28 The parties have provided joint Appendix A consisting of a combined trial transcript
for convenience to the Court and the parties as they continue post-trial briefing.
2
Case No. 3:17-cv-01781
1 appropriate here because all the accused products include multiple components. This
2 allowed the jury the option of ignoring the four factors altogether. A new trial is thus
3 required with correct instructions for determining the relevant article of manufacture.
4 Finally, a new trial is warranted because the verdict form did not require the
5 jury to identify the relevant article of manufacture. The Supreme Court’s § 289
6 framework requires that the article be identified, and this omission prejudiced Seirus,
7 requiring a new trial. See Samsung, 137 S. Ct. at 434 (“First, identify the ‘article of
8 manufacture’ to which the infringed design has been applied. Second, calculate the
9 infringer’s total profits made on that article of manufacture.”).
10 II. BACKGROUND AND FACTS
11 Seirus’s post-trial motions are directed to the jury’s verdict awarding
12 $3,018,174 in damages on the design patent, U.S. Patent No. D657,093. [Dkt. No.
13 377, 403.] Leading up to this point, the Court has had a difficult task, because the
14 Supreme Court’s Samsung decision changed the law of design patent damages without
15 providing much guidance for the specific issues here. Samsung held that “the term
16 ‘article of manufacture’ is broad enough to encompass both a product sold to a
17 consumer as well as a component of that product.” Samsung Elecs. Co., Ltd. v. Apple
18 Inc., 137 S. Ct. 429, 435 (2016). The Supreme Court “decline[d] to lay out a test” for
19 identifying the relevant article of manufacture, id. at 436, so this Court sought
20 guidance from the parties regarding the relevant legal standard. We briefly recount
21 that history below, along with some of the relevant trial evidence to the proper legal
22 standard.
23 A. Prior Proceedings on the Jury Instructions for the “Article of
Manufacture”
24
25 Before trial, the parties proposed legal tests to be used by the jury to determine
26 the appropriate article of manufacture. Seirus advocated for the test proposed by the
27 United States (the “DOJ test”) in its amicus brief in the Samsung case, with one
28 modification: Seirus argued it was incorrect to shift the burden onto Seirus to prove
3
Case No. 3:17-cv-01781
1 that the article of manufacture was something less than the entire product. [Dkt. No.
2 151 at 15-17 (“[T]he burden of establishing the article of manufacture, which is a
3 central element of proving damages in a design patent infringement case, must also
4 fall on the patentee.”).] Columbia invented its own test. [Dkt. No. 150.] The parties
5 subsequently submitted proposed jury instructions, in which Seirus maintained its
6 position that that Columbia should bear the burden of proof on identifying the article
7 of manufacture. [Dkt. No. 223 at 35; Dkt. No. 228 at 31.] At the pre-trial hearing, the
8 Court indicated it would adopt the DOJ test, including its shifting of the burden to
9 Seirus to establish that the article of manufacture is something less than the entire
10 product. [Ex. B (Excerpt Pre-Trial Hearing Tr.) at 84.] Seirus argued against this
11 burden shift, and requested that the Court reconsider. [Id. at 85.] The Court
12 maintained that “the burden is on the defense to prove that [the article of manufacture]
13 is something else” besides the entire product. [Id.] Seirus maintained its objection
14 and represented that it would stand on its briefing on this issue. [Id. at 86.]
15 In its jury instruction, the Court rejected aspects of each party’s proposal and
16 devised its own jury instruction on the article of manufacture. That instruction is
17 reproduced below, with the portions that Seirus has objected to emphasized. In
18 particular, Seirus objected to (1) shifting the burden of proof to Seirus on article of
19 manufacture and (2) adding a predicate step asking the jury to decide whether the
20 accused products were single or multi-component without guidance, creating the
21 likelihood that the jury would bypass the DOJ’s four-factor test entirely:
22 No. 10 Measure of Damages—Article of Manufacture
23 Determining Seirus’s “total profit” attributable to the
infringement of the Design Patent involves two steps. First, identify the
24
“article of manufacture” to which the infringed design has been applied.
25 The article of manufacture may be the product as a whole or a
component of that product. Second, calculate the infringer’s total profit
26
made on that article of manufacture.
27
Columbia bears the initial burden of producing evidence
28
identifying the article of manufacture for which it seeks profits.
4
Case No. 3:17-cv-01781
1 Columbia may meet that burden by showing that Seirus applied the
patented design to a product that was sold and further proving Seirus’s
2
total profit from the sale. Seirus bears the burden of proving that the
3 article of manufacture is something less than the entire product. If
the product as sold to consumers is a single-component product then
4
that product is the relevant article of manufacture. If the product as
5 sold to consumer is a multi-component product then you must use the
factors listed below to determine whether the “article of manufacture”
6
is the whole product or a component of that product.
7
1. The scope of the design in the Design Patent, including the drawings
8
and written description. This factor provides insight into which
9 portions of the underlying product the design is intended to cover, and
10 how the design relates to the product as a whole.
11 2. The relative prominence of the design within the product as a whole.

12 If a design is a minor component of a product, for example a latch on
a refrigerator, or if the product has many other components unaffected
13 by the design, that fact suggests that the article of manufacture should
14 be the component bearing the design. On the other hand, if the design
is a significant attribute of the entire product, affecting the appearance
15 of the product as a whole, that fact might suggest that the article of
16 manufacture should be the entire product.
17 3. Whether the design is conceptually distinct from the product as a

18 whole. If a product contains other components that are conceptually
distinct, it may be appropriate to conclude that the component is the
19 article of manufacture. For example, a book binding and the literary
20 work contained within it are conceptually distinct and different
articles of manufacture.
21
22 4. The physical relationship between the patented design and the rest of
the product. If the component bearing the design can be physically
23 separated from the product as a whole by the user or seller, that fact
24 suggests that the article of manufacture may be the component.
25 In weighing these factors, your objective should be to identify the

26 article of manufacture that most fairly can be said to embody Seirus’s
appropriation of Columbia’s innovation.
27
28
5
Case No. 3:17-cv-01781
1 [Dkt. No. 378 at 15-16; App. A (Trial Tr.) at 2366:9–2368:9.] Seirus objected to this
2 instruction. [App. A (Trial Tr.) at 2210:19-23.]
3 B. Columbia’s Damages Presentation Was Limited Solely to Assuming
that the Entire End-Products, Rather than the Fabric, Were the
4 Article of Manufacture
5 Seirus was the only party that presented a damages analysis based on using the
6 HeatWave fabric as the article of manufacture. Serius’s expert, Carrie Distler,
7 testified that if the HeatWave fabric were the proper article of manufacture, then
8 Columbia would be entitled to damages of, at most, $500,817. [App. A (Trial Tr.) at
9 1780:18-23.] She arrived at that number by starting with the total revenue attributable
10 to the HeatWave fabric used in the accused products. [App. A (Trial Tr.) at 1788:20
11 – 1791:20.] To calculate this, Ms. Distler calculated the percentage of HeatWave
12 fabric cost as a percentage of the total cost to make each accused product. [App. A
13 (Trial Tr.) at 1790:8-16.] She then multiplied the cost percentage of the HeatWave
14 fabric by the average sales price of each product, to find the portion of profits
15 attributable to the HeatWave fabric, on a product-by-product basis. [Id.]
16 Columbia, by contrast, limited its damages presentation to a model that
17 assumed Seirus’s entire end-products were the relevant article of manufacture.
18 Columbia’s damages expert, Serena Morones, initially opined that Columbia should
19 receive $3.4 million in damages based on this assumption. [App. A (Trial Tr.) at
20 1140:6-13; 1145:12-17.] She subsequently adjusted her number downward to
21 $3,018,174 after admitting that some additional costs identified by Seirus’s expert
22 needed to be deducted before arriving at Seirus’s total profit. [App. A (Trial Tr.) at
23 2104:6–2106:12.] Columbia offered no evidence of what the damages would be if the
24 article of manufacture were something less than the entire accused products, and, in
25 fact, Columbia elected not to have its expert present an alternative opinion on this
26 issue that it had disclosed in some of her demonstratives. [App. A (Trial Tr.) at
27 2145:8–2146:13, 2178:9 (Morones).]
28
6
Case No. 3:17-cv-01781
1 Ultimately, the jury seemed to adopt Columbia’s revised expert opinion and
2 awarded damages of $3,018,174 for infringement of the design patent. [Dkt. No. 377.]
3 That award must have been based on an implicit finding that Seirus’s entire end
4 product was the relevant article of manufacture, because Ms. Morones had identified
5 that as an assumption of her calculations, [App. A (Trial Tr.) at 1140:6-13], and there
6 was no evidence from either side suggesting that the damages could be so high if the
7 article of manufacture were a lesser component of the end products.
8 III. LEGAL STANDARDS
9 A. Judgment as a Matter of Law
10 The Court may grant judgment as a matter of law when “a reasonable jury
11 would not have a legally sufficient evidentiary basis to find” for a party on a particular
12 issue. See Fed R. Civ. P. 50. JMOL can be granted “only if, under the governing law,
13 there can be but one reasonable conclusion as to the verdict. In other words, the
14 motion should be granted only if there is no legally sufficient basis for a reasonable
15 jury to find for that party on that issue.” Winarto v. Toshiba Am. Elecs. Components,
16 Inc., 274 F.3d 1276, 1283 (9th Cir. 2001). “For the motion, the district court must
17 view the evidence in the light most favorable to the non-moving party and draw all
18 reasonable evidentiary inferences in favor of the non-moving party.” Lucent Techs.,
19 Inc. v. Microsoft Corp., 837 F. Supp. 2d 1107, 1111–12 (S.D. Cal. 2011). When ruling
20 on a damages JMOL, if substantial evidence does not support the jury’s verdict, then
21 the Court may reduce the judgment to the amount supported by the evidence. See id.
22 at 1126 (reducing damages award from $70 million to $26.3 million and entering
23 judgment on that amount).
24 B. New Trial
25 “If the amount of damages awarded [by a jury] is excessive, it is the duty of the
26 trial judge to require remittitur or a new trial.” Williams v. Bridgeport Music, Inc.,
27 2015 WL 4479500, at *23 (C.D. Cal. July 14, 2015) (quoting Linn v. United Plant
28 Guard Workers, 383 U.S. 53, 65-66 (1966)). A court also has broad discretion to
7
Case No. 3:17-cv-01781
1 grant a new trial on damages when “the verdict is against the weight of evidence.”
2 Siebrand v. Gossnell, 234 F.2d 81, 94 (9th Cir. 1956); see also 11 C. Wright, A. Miller
3 & M. Kane, Federal Practice & Procedure § 2807 at 98-99 (2012). Furthermore, in
4 the Ninth Circuit, “the district court can grant a new trial under Rule 59 on any ground
5 necessary to prevent a miscarriage of justice.” Experience Hendrix L.L.C. v.
6 Hendrixlicensing.com Ltd., 762 F.3d 829, 842 (9th Cir. 2014).
7 “The district court may order a new trial, even though substantial evidence
8 supports the jury’s verdict.” Oltz v. St. Peter’s Cmty. Hosp., 861 F.2d 1440, 1452 (9th
9 Cir. 1988). In considering a motion for a new trial on damages, the district court “is
10 not required to view the trial evidence in the light most favorable to the verdict.
11 Instead, the district court can weigh the evidence and assess the credibility of the
12 witnesses. The district court is not limited to the grounds a party asserts to justify a
13 new trial, but may sua sponte raise its own concerns about the verdict.” Experience
14 Hendrix L.L.C., 762 F.3d at 842 (citations omitted).
15 When considering a motion for a new trial, “the court is ‘bound by those
16 grounds that have been historically recognized.’” Molski v. M.J. Cable, Inc. 481 F.3d
17 724, 729 (9th Cir. 2007) (citing Zhang v. Am. Gem Seafoods, Inc., 339 F.3d 1020,
18 1035 (9th Cir. 2003)). “Historically recognized grounds include, but are not limited
19 to, claims ‘that the verdict is against the weight of the evidence, that the damages are
20 excessive, or that, for other reasons, the trial was not fair to the party moving.’” Id.
21 (citing Montgomery Ward &Co. v. Duncan, 311 U.S. 243, 251 (1940). “It is equally
22 clear that erroneous jury instructions, as well as the failure to give adequate
23 instructions, are also bases for a new trial.” Murphy v. City of Long Beach, 914 F.2d
24 183, 187 (9th Cir. 1990) (citing Rinker v. County of Napa, 831 F.2d 829, 832 (9th Cir.
25 1987) (erroneous instructions); Cleveland v. Southern Pac. Co., 436 F.2d 77, 80-81
26 (9th Cir. 1970) (inadequate instructions)). A party seeking a new trial based on the
27 trial court’s jury instructions must show instructional error and that the error was
28 prejudicial, or not harmless. See Clem v. Lomeli, 566 F.3d 1177, 1181 (9th Cir. 2009).
8
Case No. 3:17-cv-01781
1 C. Determining the Appropriate Article of Manufacture

2 The Supreme Court has set forth a two-step framework for design patent
3 damages: “First, identify the ‘article of manufacture’ to which the infringed design
4 has been applied. Second, calculate the infringer’s total profits made on that article
5 of manufacture.” Samsung, 137 S. Ct. at 434. “The term ‘article of manufacture,’ as
6 used in § 289, encompasses both a product sold to a consumer and a component of
7 that product.” Id. “An article of manufacture then, is simply a thing made by hand or
8 machine.” Id. at 435. “So understood, the term ‘article of manufacture’ is broad
9 enough to encompass both a product sold to a consumer as well as a component of
10 that product.” Id. “That a component may be integrated into a larger product, in other
11 words, does not put it outside the category of articles of manufacture.” Id. “The
12 Patent Office and the courts have understood § 171 to permit a design patent for a
13 design extending to only a component of a multicomponent product.” Id. (citing In
14 re Zahn, 617 F.2d 261, 268 (C.C.P.A. 1980) (“Section 171 authorizes patents on
15 ornamental designs for articles of manufacture. While the design must be embodied
16 in some articles, the statute is not limited to designs for complete articles, or ‘discrete’
17 articles, and certainly not to articles separately sold.”)).
18 Defining the relevant “article of manufacture” should be treated as a question
19 reviewed de novo by the Court, much like other ultimate legal questions in patent law,
20 like obviousness and enablement. See, e.g., Wyers v. Master Lock Co., 616 F.3d 1231,
21 1237 (Fed. Cir. 2010) (“Obviousness is a question of law based on underlying findings
22 of fact.”); Cephalon, Inc. v. Watson Pharms., Inc., 707 F.3d 1330, 1336 (Fed. Cir.
23 2013) (“Enablement is a question of law that we review without deference, based on
24 underlying factual inquiries that we review for clear error.”). Moreover, older cases
25 appear to treat the issue as a legal one, not giving any deference when reviewing
26 determinations by lower courts. See, e.g., Grand Rapids Refrigerator Co. v. Young,
27 268 F. 966, 974 (6th Cir. 1920); Bush & Lane Piano Co. v. Becker Bros., 222 F. 902,
28
9
Case No. 3:17-cv-01781
1 903–05 (2d Cir. 1915), reaffirmed in subsequent appeal 234 F. 79, 81–82 (2d Cir.
2 1916).
3 The Supreme Court left open the proper legal test for identifying the “article of
4 manufacture,” so the discussion in this case has focused on the DOJ’s proposed test.
5 The DOJ brief explains the application of the test:
6 In cases where the identity of the relevant “article of manufacture” is
otherwise open to reasonable dispute, the factfinder may legitimately
7
consider which characterization would appropriately compensate (rather
8 than over-compensate) the patentee for the contribution of the patented
design to the value of the infringer’s finished product.
9
10 [Ex. A at 27.] Thus, where the identity of the relevant article of manufacture is in
11 dispute, the following four-factor test should be used to determine what is the
12 appropriate article to which the infringing design is applied:
13 1. the scope of the patented design;
14 2. the relative prominence of the design within the product as a whole;
15 3. whether the design is conceptually distinct from the product as a
whole; and
16
17 4. the physical relationship between the patented design and the rest of
the product.
18
19 [Ex. A at 27-29.] The jury was charged to apply these factors, but in a different
20 manner than that articulated in the DOJ test. [App. A (Trial Tr.) at 2366-2368.] Seirus
21 discusses the error in the jury instructions in its new trial motion. For purposes of the
22 JMOL motion, it is enough to analyze the DOJ’s four factors and how they apply to
23 the undisputed evidence in this case.
24 IV. ARGUMENT
25 A. The Court Should Grant JMOL That the HeatWave Fabric Is the
“Article of Manufacture” and Reduce Damages Accordingly
26
27 Seirus is entitled to judgment as a matter of law that the HeatWave fabric is the
28 proper article of manufacture to which the accused design is applied. The HeatWave
10
Case No. 3:17-cv-01781
1 fabric is plainly an “article of manufacture”—it is a thing made by man and machine

2 and is even sold separately by a third-party to Seirus as a finished product on its own,
3 separate from the accused products. Under the proper legal test, the fabric is also the
4 relevant article of manufacture to which the allegedly infringing design is applied for
5 determining § 289 damages, for Seirus’s outer shell gloves and both the “black” and
6 “silver” versions of its liners, socks, and hats. See, e.g., Grand Rapids Refrigerator
7 Co. v. Young, 268 F. 966, 974 (6th Cir. 1920) (holding the relevant article was the
8 refrigerator latch to which the design was applied, not the entire refrigerator); Bush &
9 Lane Piano Co. v. Becker Bros., 222 F. 902, 903–04 (2d Cir. 1915), subsequent appeal
10 234 F. 79, 81–82 (2d Cir. 1916) (holding the relevant article was the piano case to
11 which the design was applied, not the entire piano). As a result, the Court should
12 grant this motion, and reduce the damages judgment to zero, or, at most, $500,817,
13 the only amount supported by the evidence when the article of manufacture is properly
14 recognized as the HeatWave fabric.2
15 1. The HeatWave Fabric Is an “Article of Manufacture”
16 As an initial matter, the HeatWave fabric meets the Supreme Court’s broad
17 definition of what an “article of manufacture” may include. The Court noted that “an
18 article of manufacture” is “simply a thing made by hand or machine.” Samsung, 137
19 S. Ct. at 435. Both sides’ witnesses testified that the fabric inside the winter products
20 at issue here meets that standard. For example, Seirus’s Vice President of Operations
21 (Bob Murphy) testified that a third-party, Ventex, manufactures the HeatWave fabric
22 by applying the infringing wave design in the form of a reflective mylar material to a
23 base layer through the use of rollers. [App. A (Trial Tr.) at 1456:10-22.] Although
24 Samsung holds that something can be an article of manufacture without being sold
25
26
2
Seirus preserves its position that the summary judgment of infringement on the
27 design patent was erroneous. [Dkt. No. 82.] Serius’s products do not infringe, so no
28 damages are appropriate. Nevertheless, the present motion is premised on the
maximum appropriate damages award if the infringement judgment is upheld.
11
Case No. 3:17-cv-01781
1 separately, see 137 S. Ct. at 436, the HeatWave fabric is indeed sold separately by
2 Ventex to Seirus and others. [Id. at 1456:23 – 1457:1; 1458:21-24, 1469:18-25.]
3 Columbia’s witnesses acknowledged that the fabric in their gloves was likewise
4 independently made by machine (a “mill”) and sold separately before being
5 incorporated into gloves. [Id. at 2159:11-16 (Morones), 366:1-3, 367:19-20; 367:25
6 – 368:2; 368:24 – 369:1 (Blackford); 1945:4-15 (Criss).] It was thus undisputed that
7 the HeatWave fabric is an “article of manufacture,” because it is a thing made by man
8 or machine. The next sections demonstrate that the fabric is also the appropriate
9 “article of manufacture” to which the allegedly infringed design is applied for
10 determining § 289 damages.
11 2. The HeatWave Fabric, Not the Entire Outer Shell Gloves, Is
the Relevant “Article of Manufacture” as a Matter of Law for
12 Calculating § 289 Damages
13 When the Court applies the proper legal test to the undisputed facts, it is
14 apparent that the HeatWave fabric, not the glove as a whole, is the relevant article of
15 manufacture. As an initial matter, we note that there is no dispute that Seirus’s outer
16 shell gloves are multi-component products. Seirus’s witnesses demonstrated that they
17 are made of many components, including an outer shell, insulation, waterproof
18 material (e.g., Gore-Tex), buckles, straps, zippers, and the accused HeatWave fabric.
19 [See, e.g., App. A (Trial Tr.) at 1453:8–1454:22, 1460:7–1463:19 (Murphy); Trial
20 Exs. 1404, 1404.1–20; Trial Ex. 1227.84 at 3.] Columbia may have quibbled with the
21 number of components involved, but its witnesses and lawyers admitted that the outer
22 shell gloves have at least two components. [See, e.g., App. A (Trial Tr.) at 368:24–
23 370:19 (Blackford); id. at 1537:22–24 (Murphy) (Columbia eliciting testimony that a
24 Seirus glove “is a multi-component product”); id. at 1947: 22–1952:4 (Criss); id. at
25 2153:7–2154:1 (Morones).] As a result, there is no genuine dispute that the DOJ’s
26 four factor test applies to the outer shell gloves. Each DOJ factor demonstrates that
27 the fabric, not the glove, is the article. Columbia’s contrary arguments are irrelevant
28
12
Case No. 3:17-cv-01781
1 under the right legal test or legally outweighed by the undisputed evidence in Seirus’s
2 favor. We discuss each factor in detail below.
3 a. The Scope of the Patented Design Is Limited to Heat-
Reflective Material, Not Any End-Products
4
5 The DOJ’s first factor is “the scope of the design claimed in the plaintiff’s
6 patent.” [Ex. A at 27.] The DOJ explains that the “plaintiff’s patent, including the
7 drawing[s] and written description, provides insights into which portions of the
8 underlying product the design is intended to cover, and how the design relates to the
9 product as a whole.” [Id.] The DOJ adds that “the patent identifies the article of
10 manufacture that the patentee views as the article to which the design is applied.” [Id.
11 at 28 (citing Manual of Patent Examining Procedure § 1503.01).] The DOJ’s position
12 is consistent with the applicable regulations, which require that the patent’s title and
13 claim specify the name of the article of manufacture. [See 37 C.F.R. § 1.153(a) (2011)
14 (“The title of the design must designate the particular article. . . . The claim shall be
15 in formal terms to the ornamental design for the article (specifying name) as shown,
16 or as shown and described.”).]
17 The undisputed facts—i.e., the drawings and descriptions in Columbia’s design
18 patent—establish that the relevant article of manufacture is the material that includes
19 the ornamental design. The title of the patent is “Heat Reflective Material,” indicating
20 that the article is the material, not any end product. [See, e.g., 37 C.F.R. § 1.153(a);
21 Trial Ex. 1.] Moreover, the only claim at issue covers “[t]he ornamental design of a
22 heat reflective material, as shown and described.” [Trial Ex. 1 (emphasis added).]
23 The ornamental design shown is a wavy pattern on the material:
24
25
26
27
28
13
Case No. 3:17-cv-01781
1
2
3
4
5
6
[Id. at 2.] The other figures confirm that the patent covers the heat-reflective material
7
that is covered by the patent, and not the end-product. Figures 5 and 8 are illustrative,
8
as they separate most of the end-product (e.g., a boot or glove) from the heat-reflective
9
material that has the claimed design:
10
11
12
13
14
15
16
17 [Id. at 3.] The patent explains that “broken lines in the drawings depict environmental
18 subject matter only and form no part of the claimed design.” [Id. at 1 (emphasis
19 added).] Thus, Columbia’s suggestion that the entire end-product is the relevant
20 article of manufacture flatly contradicts the patent itself and thus fails as a matter of
21 law in this case. The patent is clear that the article of manufacture to which the
22 claimed design is applied is the material (i.e., the accused HeatWave fabric).
23 When confronted with the plain text of the patent at trial, Columbia’s inventor
24 admitted that the design patent covers the material to which the design is actually
25 applied, not the entire end-product. Indeed, he volunteered that his patented design
26 was applied only to the reflective foil that is attached to a fabric:
27 Q. The claim again reads, the ornamental design of a heat-reflective

material. And that material is referring to the fabric on which the design
28 is placed; is that fair?
14
Case No. 3:17-cv-01781
1
A. Well, for me I guess the way that I see it is that the design itself
2
shows how the heat-reflective material would be used. As far as it
3 applies to how that’s applied, I don’t think that that’s what this is
claiming.
4
5 Q. I’m sorry. You don’t think – I don’t understand your answer. Could
you please clarify.
6
7 A. Yeah. So as I’m hearing it and we’re talking through it, this says the
ornamental design, which is essentially what I would call the
8
illustration or the drawing of the artwork itself of a heat-reflective
9 material. So that means basically, you know, the art itself is
10 representing what the heat-reflective material is, as shown and
described.
11
12 Q. And the heat-reflective material here is the fabric; is that fair?
13 A. No. No, it’s not the fabric we’re talking about. It’s the actual heat-
reflective material itself.
14
15 Q. It’s merely the silver in the case of omni-heat; is that correct?
16 A. Correct. Correct. Yes.
17 Q. Not even the fabric?
18 A. I don’t see it as the fabric myself.
19 [App. A (Trial Tr.) at 418:4 – 419:2 (Snyder); see also id. at 419:3–12 (acknowledging
20 the design is “applied to a fabric”).] That foil is something even less than the
21 HeatWave fabric. And, regardless of whether the patent covers the fabric or the foil
22 attached to the fabric, the inventor’s testimony makes abundantly clear that the patent
23 doesn’t cover any larger end-product like a glove or hat. Indeed, the inventor later
24 agreed that the pictured environments in the figures (like the rest of the boot in Figure
25 5) were not part of the claimed design. [App. A (Trial Tr.) at 420:6-15 (Snyder) (“The
26 boot itself is not part of the claimed design”).] That contradicts Columbia’s demand
27 for damages on the entire end-product, rather than just the material, which is the article
28 of manufacture to which the design is actually applied. See, e.g., Bush and Lane Piano
15
Case No. 3:17-cv-01781
1 Co., 222 F. at 904 (reversing damages award that treated the entire end-product (a
2 piano) as the article of manufacture, because “[w]hat Lane invented was a piano case,
3 not a piano” and “[h]e received a patent for a ‘piano case’ and not for a piano”).
4 b. The Accused Design Is Not Relatively Prominent in the
Outer Shell Gloves
5
6 The DOJ’s second factor also dictates that the HeatWave fabric is the article of
7 manufacture, because the accused design is not prominent in the outer shell gloves.
8 The DOJ explains that “[i]f the design is a minor component of the product, like a
9 latch on a refrigerator, or if the product has many other components unaffected by the
10 design, that fact suggests that the ‘article’ should be the component embodying the
11 design.” [Ex. A. at 28.] That describes the accused design here to a T. It is undisputed
12 that the accused design is not even visible on the accused products when the outer
13 shell gloves are hanging on the wall, and, in some Seirus gloves, you have to dig into
14 the glove to even see any infringing design. [See, e.g., Trial Ex. 1349 (Orange glove);
15 see also App. A (Trial Tr.) at 408:18–25 (Snyder) (admitting that a lining “isn’t always
16 immediately noticeable on the outside”).] It is also undisputed that the accused outer
17 shell gloves have other components besides the HeatWave fabric. [See, e.g., cites at
18 pp. 21-22 below.] And it is undisputed that the accused design has nothing to do with
19 their performance. [See, e.g., cites at pp. 18-20 below.] These facts all compel a
20 finding in Seirus’s favor as a matter of law. See, e.g., Bush and Lane Piano Co., 222
21 F. at 903–04 (holding that the component with the patented design (a piano case) was
22 the relevant article rather than the entire piano and noting that “the music is the same”
23 from the piano regardless of the appearance of its case).
24 It is beyond reasonable dispute that a Seirus outer shell glove includes many
25 features and components separate from the wave design applied to the fabric of the
26 interior liner. The picture below of the Seirus Workman Impact Gripper glove shows
27 both the relatively minor impact of the accused design and the many other features on
28 the glove:
16
Case No. 3:17-cv-01781
1
2
3
4
5
6
7
8
9
10 [Trial Ex. 1349.] Inspection of the exterior of the glove (the portion typically seen
11 first by a consumer) shows that the patented wave design is not noticeable, let alone
12 prominent, relative to other portions and features of the gloves. [Id.] Indeed, even
13 when peering into the glove, it is difficult to discern the liner’s design:
14
15
16
17
18
19
20
21
22
23
24 [Id.] The accused design is not visible when a person is actually wearing the glove
25 either. [Id.] Seirus’s various glove models include many other features—both
26 aesthetic and functional—that have nothing to do with the patented wave design,
27 including buckles, straps, pockets, zippers, different colors, leather palms,
28 SoundtouchTM, different stitching, different types of waterproofing technologies, and
17
Case No. 3:17-cv-01781
1 different insulative materials. [App. A (Trial Tr.) at 622:14-24 (SoundtouchTM);

2 625:8-20 (M. Carey discussing other features); 1461:4 – 1462:16 (Murphy describing
3 zippers, pockets, cinches, labels, buckles, and palm materials); 1464:10-13
4 (insulation); 1465:16-25 (waterproof membrane).] There was no record testimony
5 that purported to assert that consumers buy Seirus gloves because the liner looks
6 wavy, rather than based on one or more of these many other features. [Cf. App. A
7 (Trial Tr.) at 584:13–16 (M. Carey) (testifying it was not important to show customers
8 the wavy design pattern).]
9 In fact, the undisputed evidence demonstrated that customers buy Seirus’s
10 products based mostly on performance, not design or appearance of the HeatWave
11 fabric. The initial indication is the name “HeatWave,” which touts the products’
12 ability to keep customers warm. [See, e.g., Trial Ex. 117 (“Capture your body’s heat”;
13 “The only thing warmer is electric”).] Seirus’s marketing materials also stress
14 performance—they tout the “dual stages of heat” the gloves provide through “kinetic”
15 and “reflective” mechanisms and promote the “warmth” and “comfort” the gloves
16 provide. [Trial Ex. 128 at 10, 14–16.] The gloves’ performance is, as a matter of law,
17 not covered by Columbia’s design patent. “A design patent only protects the novel,
18 ornamental features of the patented design.” OddzOn Prods., Inc. v. Just Toys, Inc.,
19 122 F.3d 1396, 1405 (Fed. Cir. 1997); see also 35 U.S.C. § 171(a). “Design patents
20 do not and cannot include claims to the structural or functional aspects of the article.”
21 Lee v. Dayton-Hudson Corp., 838 F.2d 1186, 1188 (Fed. Cir. 1988). Moreover, other
22 components of the glove (like insulation, waterproofing, etc.) are also responsible for
23 the gloves’ performance and comfort. [See, e.g., App. A (Trial Tr.) at 625:8-20.]
24 Those components are at least as important to customers as the HeatWave fabric, as
25 shown by the fact that customers actually bought more units of a glove without the
26 HeatWave fabric (the All Weather Glove original) than a comparable glove that
27 included the HeatWave fabric (the HeatWave All Weather Glove original) but was
28 otherwise the same. [See, e.g., App. A (Trial Tr.) at 618:6–621:7 (M. Carey); id. at
18
Case No. 3:17-cv-01781
1 1725:12–1727:16 (W. Carey); Trial Exs. 1418, 1423.] It would thus be incorrect as a
2 matter of law to award Columbia damages on those separate components when they
3 are entirely unrelated to the accused wavy design.
4 Even Columbia’s witnesses admitted that customers buy gloves for a variety of
5 reasons other than the design of the interior fabric lining. For example, Columbia’s
6 marketing director (Scott Trepanier) admitted that “individual consumers might have
7 individual features they’re looking for,” including color, sizing, fit, quality, and the
8 design of the cuff of the glove. [Id. at 243:6 – 244:1.] Mr. Trepanier admitted some
9 consumers are drawn to Seirus gloves because of the Seirus brand name as well. [Id.
10 at 243:22-24.] Columbia’s Vice President of Design and Innovation (Woody
11 Blackford) agreed, admitting that brand name is important to consumers as they make
12 purchasing decisions. [Id. at 340:11 – 341:7.] He also identified various performance
13 features that might drive customer purchasing decisions—like waterproof Gore-Tex®
14 and insulating Thinsulate®—that are unrelated to the accused design. [Id. at 341:14-
15 23.] He testified that insulating technology, such as Thinsulate®, might drive a
16 purchasing decision. [Id. at 341:19-23.] And Mr. Blackford testified that some
17 consumers might have a preference for leather, specific colors, gauntlet designs,
18 attachment mechanisms (such as buckles or straps), pockets, and various liner types—
19 none of which relate to the accused design. [Id. at 341:24 – 342:25.] Seirus’s gloves
20 include many variations of these different features, demonstrating that the accused
21 design is, at most, one minor consideration among many in customer purchasing
22 decisions. All of this taken together supports that the patented wave design is not
23 relatively prominent when compared to the outer shell gloves as a whole. See, e.g.,
24 Bush and Lane Piano Co., 222 F. at 903–04 (“One style of [piano] case may appeal
25 to one purchaser and another style to another purchaser but the music is the same in
26 each instance. To attribute the sale of 958 Imperial pianos solely to the design of the
27 case which inclosed them seems unwarranted. Such a supposition is unsupported by
28 the proof and involves too violent a presumption to be accepted.”).
19
Case No. 3:17-cv-01781
1 Columbia’s main response at trial was to argue that Seirus marketed its products
2 based in part on the HeatWave fabric. But Columbia itself took the position that this
3 was tied to the technology of the fabric, not its ornamental design, because Columbia
4 was trying to show the value of its now-invalidated utility patent. [See, e.g., App. A
5 (Trial Tr.) at 193:11–201:1 (Trepanier) (arguing that Seirus’s marketing materials
6 “very clearly” conveyed “a technology message” and used “technology as a primary
7 focus”); Trial Exs. 117, 129, 133, 134, 1192, 1196.] Columbia argued only that the
8 wavy pattern was “reminiscent of the technology,” not that customers purchased the
9 gloves based on how they looked. [See, e.g., App. A (Trial Tr.) at 194:2–4, 198:1–2,
10 200:17–21 (Trepanier).] Those arguments are inadequate as a matter of law, because
11 Columbia cannot now use its design patent to sweep in the functional features of
12 Seirus’s products and the profit associated with them. See, e.g., OddzOn Prods, 122
13 F.3d at 1405; Lee, 838 F.2d at 1188; 35 U.S.C. § 171(a); 37 C.F.R. § 1.153(a) (2011);
14 Manual of Patent Examining Procedure § 1503.1. Columbia nevertheless focused on
15 the presence of the waves in Seirus’ marketing materials, but this is irrelevant. The
16 marketing materials are not themselves accused of infringement, nor could they be—
17 the patent claim is to “[t]he ornamental design of a heat reflective material,” not of
18 anything else. [Trial Ex. 1; App. A (Trial Tr.) at 713:11–714:4 (Cole) (acknowledging
19 Seirus’s hangtags do not infringe).] Columbia presented no evidence, either in the
20 marketing materials or otherwise, that customers were buying Seirus’s gloves based
21 on the ornamental attraciveness of the wave design on the HeatWave fabric, rather
22 than the many other features of the glove. If anything, Columbia’s argument that the
23 fabric’s technical benefits drove demand only underscores that the fabric is separate
24 from the rest of the glove and is the relevant article for damages purposes.
25 c. The Patented Wave Design Is Conceptually Distinct
from the Glove
26
27 The DOJ’s third factor—whether the patented wave design is conceptually
28 distinct from the product as a whole—also dictates that the HeatWave fabric is the
20
Case No. 3:17-cv-01781
1 article of manufacture. The DOJ explained that “[i]f the product contains other
2 components that embody conceptually distinct innovations, it may be appropriate to
3 conclude that a component is the relevant article.” [Ex. A at 29.] That is absolutely
4 the case here: Seirus’s products have dozens of other components, many of which
5 include distinct innovations that help keep customers warm and dry.
6 Seirus at trial provided extensive unrebutted testimony from its Vice President
7 of Operations (Robert Murphy) concerning the many components included in a Seirus
8 outer shell glove that are conceptually distinct from the accused design. [App. A
9 (Trial Tr.) at 1453:8–1454:22, 1460:7–1463:19; see generally 1459-1468 (Murphy’s
10 description of all components included in a particular complex glove).] This
11 description included many exterior components including: a soft shell fabric (Trial
12 Ex. 1404.4), back panels (Trial Ex. 1404.11 and 1404.2), a waterproof zipper (Trial
13 Ex. 1404.10), a cinch (Trial Ex. 1404.13), a bungee cord (Trial Ex. 1404.14), a buckle
14 (Trial Ex. 1404.16), a brand name label (Trial Ex. 1404.17), and the palm portion
15 (Trial Ex. 1404.1). Mr. Murphy also described the significant know-how involved
16 with properly constructing the outer shell. [App. A (Trial Tr.) at 1462:3 – 1463:19.]
17 Many of those components (and others) are shown in the production diagrams for
18 Seirus’s HeatWave Zenith Mitt, shown below:
19
20
21
22
23
24
25
26
27 [Trial Ex. 1227.84 at 3.] Mr. Murphy also described several internal components,
28 including the inner liner, the insulation, and the “key component,” which was a
21
Case No. 3:17-cv-01781
1 waterproof membrane. [Trial Exs. 1404.3, 1404.5, 1404.6; App. A (Trial Tr.) at
2 1463:23 – 1464:16;1465:15 – 1466:1.] The liner with the accused design is “tacked”
3 (not sewn) into the rest of the glove, and can be removed with five pounds of pull
4 force. [App. A (Trial Tr.) at 1467:3-20.] Each of these components embody “distinct
5 innovations” from the accused design.
6 Columbia’s main response at trial was to focus on whether the gloves’ interior
7 lining was conceptually distinct from the rest of the glove, but that is the wrong legal
8 analysis. The question is whether the patented design is conceptually distinct from
9 the glove as a whole. Here, the liner is not the accused design—the wave is. So
10 Columbia’s evidence cannot support the verdict, because it was directed to a legally
11 irrelevant inquiry. Regardless, Columbia’s evidence is insufficient as a matter of law
12 to show even that the liner and the rest of the glove are conceptually related. As
13 discussed above, the accused products had many other components that provided
14 performance or other aesthetic benefits that are unrelated to the accused design. The
15 liner is unrelated to these other features, like the waterproof membrane and insulation.
16 Columbia is thus forbidden as a matter of law from recovering the profits under § 289
17 on all these separate, unpatented innovations. See, e.g., Bush and Lane Piano Co.,
18 222 F. at 904 (“When the patent owner is awarded the profits due to his design he
19 receives all he is entitled to. If the rule be established that a design for a case enables
20 the owner to collect damages for the case not only, but for the contents of the case as
21 well, it will lead to results which shock the conscience.”).
22 d. The Physical Relationship Between the Accused Design
and the Outer Shell Gloves Shows Little Relationship
23 Between the Design and the Products
24 The final DOJ factor—the physical relationship between the accused design and
25 the rest of the product—also dictates that the article of manufacture is the HeatWave
26 fabric. The DOJ explains that that the relevant article of manufacture is likely the
27 component, not the entire product, when the design is on a component that (1) “can
28 physically separate from the product as a whole,” (2) “is manufactured separately from
22
Case No. 3:17-cv-01781
1 the rest of the product,” or (3) “can be sold separately.” [Ex. A at 29.] The undisputed
2 evidence shows that all three of these things are true for Seirus’s Outer Shell Gloves,
3 demonstrating that the HeatWave fabric is the appropriate article of manufacture.
4 First, the accused design can physically separate from the product as a whole.
5 Seirus’s Vice President of Operations (Bob Murphy) testified that the liner with the
6 accused design is “tacked” into the rest of the glove, and can be removed with five
7 pounds of pull force. [App. A (Trial Tr.) at 1467:16-20; see also id. at 1534:17–22.]
8 Second, the accused design “is embodied in a component that is manufactured
9 separately from the rest of the product.” Mr. Murphy testified that a third party,
10 Ventex, manufactures the HeatWave fabric by applying the infringing wave design in
11 the form of a reflective mylar material to a base layer through the use of rollers. [App.
12 A (Trial Tr.) at 1456:10-22.] Likewise, Columbia’s damages expert (Serena Morones)
13 admitted that the HeatWave fabric arrives on a finished roll and is separately
14 assembled with the rest of the components to make the accused globes. [App. A (Trial
15 Tr.) at 2159:11–16.]
16 Third, the fabric with the accused design is sold separately by a third-party
17 (Ventex) to both Seirus and others. Mr. Murphy testified that he is aware that Ventex
18 sells this material to other manufacturers including at least Harley Davidson. [Id. at
19 1456:23 – 1457:1; 1458:21-24.] Mr. Murphy also confirmed that Seirus has
20 purchased over 150 lots, each including at least 500 yards of HeatWave fabric. [Id. at
21 1469:18-25.] Likewise, Columbia’s damages expert admitted that Seirus buys the
22 fabric separately from Ventex. [Id. at 2159:8–13.]
23 Columbia raised little dispute about the evidence above, instead attempting to
24 focus on the physical relationship of the liner to the rest of the glove. But, again, that
25 is not the right legal inquiry. The DOJ’s fourth factor focuses on the physical
26 relationship between the patented design and the rest of the accused product. Here,
27 the wave design only adheres to the liner, not any other part of the glove. That is
28 strong evidence that the article of manufacture is the fabric, not the glove. Regardless,
23
Case No. 3:17-cv-01781
1 even if the Court erroneously considered the relationship between the liner and the
2 glove, this factor still weighs against Columbia as a matter of law given the undisputed
3 facts discussed above. The fabric is removable, manufactured separately, and sold
4 separately from the glove.
5 3. The Liners, Socks, and Hats Are Not the Appropriate “Article
of Manufacture”
6
7 Application of the proper legal test to the accused liners, sock, and hats, also
8 demonstrates that none of those products are the the appropriate article of manufacture
9 under § 289—again, the HeatWave fabric is the appropriate article. The analysis
10 under the DOJ’s test for these products largely mirrors the discussion above for the
11 accused gloves. The main differences are that (1) Seirus’s liners, socks, and hats come
12 in two versions—a “black” version where the patented design is on the inside, and a
13 “silver” version in which the accused design is on the outside—and (2) the sole
14 material in these products is the HeatWave fabric. But these products are still multi-
15 component and, for example, include custom stitching needed to transform the fabric
16 into a finished end-product. [See, e.g., Trial Ex. 1227.15
17
18 ; Trial Ex. 1227.164
19 .] And,
20 although the accused design is more visible in the “silver” products than all the others,
21 the result for all products is ultimately the same: the HeatWave fabric is, as a matter
22 of law, the article of manufacture. We turn to a discussion of each of the DOJ factors
23 below.
24 a. The Scope of the Patented Design Is Limited to Heat-
Reflective Material
25
26 The analysis of the DOJ’s first factor for the accused liners, socks, and hats is
27 exactly the same as the one above for the accused gloves. [See Section IV.A.2.a.] The
28 design patent’s title, claim, and drawings limit it to a wavy design applied to a heat-
24
Case No. 3:17-cv-01781
1 reflective material. They exclude all other aspects of the end-product, as the dashed
2 lines in Figures 5–8 illustrate. Particularly relevant here is Figure 7, which shows a
3 picture of the patented design on “the heat-reflective material as used in a sock” and
4 has dashed lines excluding most of the sock from what is claimed, as shown below.
5
6
7
8
9
10
11 For example, the dashed lines exclude the stitching that must be added to the fabric
12 to make the sock. [See, e.g., Trial Ex. 1227.15
13
14 .]
15 b. The Accused Design Is Not Relatively Prominent in the
16 Liners, Socks, and Hats
17 The accused wave design is especially not prominent in Seirus’s liners, socks,
18 and hats. In the “black” products, the wavy design faces inward and is not visible, as
19 in the pictures below of the HeatWave socks, glove liner, and skull cap:
20
21
22
23
24
25
26
27
28
25
Case No. 3:17-cv-01781
1
2
3
4
5
6
7
8 [Trial Exs. 221, 225 (silver also pictured), 1433 (silver also pictured).] Given that the
9 wavy design is not even visible in these products, it is certainly not prominent. In the
10 “silver” products, the design is visible, but that does not outweigh the other
11 considerations discussed below.
12 In particular, the accused design is also not prominent in any of the products,
13 because it is one of many considerations in the customer’s purchasing decision. As
14 with the complex gloves, the most important consideration is performance—the fabric
15 used in all these products keeps the customer warm and dry. [App. A (Trial Tr.) at
16 633:7-20; 1823:8 – 1824:2; 2091:7 – 2092:12.] Seirus’s marketing materials reflect
17 that reality, touting the hats, liners and socks as “the first dual stage heating system
18 for heads, hands, and feet” through “kinetic” and “reflective” heating, thereby by
19 “increas[ing] the heat” of any glove or footwear. [Trial Ex. 128 at 40, 42.] This has
20 nothing to do with the design patent, because design patents cannot cover functional
21 aspects of the product. See, e.g., OddzOn, 122 F.3d at 1405; Lee, 838 F.2d at 1188;
22 35 U.S.C. § 171(a). Moreover, Columbia’s witnesses admitted that customers also
23 make purchasing decisions based on brand, color, sizing, fit, and quality, none of
24 which relate to the accused design. [App. A (Trial Tr.) at 340:14-23 (Blackford),
25 243:9-24 (Trepanier).] The accused design thus plays only a minor role in the accused
26 products, so the relevant article is the fabric that includes it—otherwise, Columbia
27 would be overcompensated based on features that having nothing to do with its
28 patents.
26
Case No. 3:17-cv-01781
1 c. The Patented Wave Design is Conceptually Distinct

from the Liners, Socks, and Hats
2
3 There is no conceptual connection whatsoever between the accused wavy
4 design and the Seirus liners, socks, and hats. No reasonable juror could conclude that
5 these products are coextensive with a wave. The liners, socks, and hats consist of
6 different components, many of which reflect innovations distinct from the wave
7 design. For example, Seirus’s Vice President of Operations discussed special die cut
8 and sewing techniques needed to make the special shapes to create a lining and ensure
9 the customer is comfortable and does not feel a lot of stitching. [App. A (Trial Tr.) at
10 1463:20 – 1464:9 (Murphy).] He also described the special sewing techniques
11 involved with liners because the consumer does not want to feel a lot of stitching.
12 [Id.] Likewise, Seirus’s “production request” documents for the liners, socks, and
13 hats illustrate the complexity involved in creating these products, which, again, is an
14 innovation separate from the design. [Trial Ex. 1227.13 (liner); 1227.15 (sock);
15 1227.164 (skull cap).] This factor thus demonstrates, as a matter of law, that the
16 relevant article is the fabric with the patented design, not the end products.
17 d. The Physical Relationship Between the Accused Design
and the Liners, Socks, and Hats is Inconsequential
18
The final DOJ factor—the physical relationship between the accused design and
19
the rest of the product—also dictates that the article of manufacture is the HeatWave
20
fabric, not the end-products. As noted above, the DOJ identifies two relevant
21
considerations as whether the fabric “is manufactured separately from the rest of the
22
product” and “can be sold separately.” [Ex. A. at 29.] The undisputed evidence shows
23
that both of these things are true for the fabric used in Seirus’s socks, liners, and hats.
24
[App. A (Trial Tr.) at 1456:10-22; 1456:23 – 1457:1; 1458:21-24, 1469:18-25.]
25
Columbia did not dispute either fact above, but instead stressed that the socks,
26
liners, and hats were made solely from the HeatWave fabric. But this argument
27
ignored the fact that the fabric must be cut and stitched to produce the end-products,
28
27
Case No. 3:17-cv-01781
1 using intricate techniques. [See, e.g., Trial Ex. 1227.13 (liner); 1227.15 (sock);
2 1227.164 (hat).] Moreover, it again misunderstands the relevant legal test, which is
3 the physical relationship between the patented design and the rest of the accused
4 product. Here, the wave design appears only on the inside of many of the accused
5 products, and, in all cases, it is applied to the fabric when as it is separately
6 manufactured and before it is separately sold.
7 4. JMOL Reducing the Damages Award to $500,817 is the
Appropriate Remedy
8
The discussion in Sections IV.A.2 and IV.A.3 demonstrates as a matter of law
9
that the relevant article of manufacture in all Seirus’s accused products is the
10
HeatWave fabric, not the entire end product. Columbia did not present any damages
11
evidence under this scenario. Instead, the only record evidence on the appropriate
12
damages under § 289 for that article of manufacture comes from Seirus’s expert
13
testimony, which explained that the total profit on that article is $500,817. Therefore,
14
the Court could enter JMOL of no damages, because Columbia failed to meet its
15
burden, but, at a minimum the Court should enter judgment reducing the jury’s
16
damages award to $500,817, along with indicating that the fabric is the relevant
17
article. See, e.g., Lucent, 837 F. Supp. 2d at 1111–12; 1126-27 (entering JMOL
18
reducing the damages award from $70 million to $26 million, because the latter
19
number was the highest amount that the evidence supported under the correct legal
20
standard). Alternatively, if the Court were to agree with Seirus that the relevant article
21
for the outer shell gloves is the HeatWave fabric but disagree with Seirus about the
22
relevant article for the liners, socks, and skull caps, it should still enter JMOL that
23
damages are no more than $500,817, because Columbia did not present any higher
24
number for this scenario.
25
B. Alternatively, the Court Should Grant a New Trial on Damages for
26 Any of Several Independent Reasons
27 If the Court does not enter JMOL, it should nevertheless grant a new trial on
28 damages for several reasons. First, the damages award on the entire end products is
28
Case No. 3:17-cv-01781
1 excessive and against the great weight of the evidence. Second, it was legally
2 incorrect to place on Seirus the burden to prove the relevant article of manufacture,
3 and the erroneous jury instruction on this issue prejudiced Seirus. Third, the jury
4 instruction did not properly embody the legal test for determining the article of
5 manufacture for purposes of 35 U.S.C. § 289 and prejudiced Seirus by allowing the
6 jury to bypass the relevant legal inquiry. Finally, the jury verdict form improperly
7 omitted identification of the relevant article of manufacture, which also allowed the
8 jury to bypass the relevant legal inquiry.
9 1. The Jury’s Award of Total Profits was Excessive and Against
the Great Weight of the Evidence
10
As described above in the JMOL discussion, the HeatWave fabric, not the end
11
products, are the relevant article of manufacture to which the allegedly infringing
12
design has been applied under § 289. No reasonable jury could have found otherwise.
13
But, at a minimum, the jury’s verdict was against the great weight of the evidence,
14
especially under the new trial standard, where the Court “is not required to view the
15
trial evidence in the light most favorable to the verdict” and can weigh the evidence
16
itself. Experience Hendrix, 762 F.3d at 842. Therefore, for all the same reasons gives
17
above for JMOL, the Court should, at a minimum, grant a new trial on damages,
18
because the jury’s award (which was based on an implicit finding that the end products
19
are the relevant article of manufacture) is against the great weight of the evidence.
20
In addition, Seirus moves for a new trial on the basis that the damages awarded
21
were excessive, because they were based on an inappropriate article of manufacture
22
finding. See Experience Hendrix L.L.C., 762 F.3d at 842 (citations omitted). The jury
23
awarded over $3 million, which must mean that the jury awarded damages on the
24
entire end products. As illustrated in Seirus’ renewed motion for judgment as a matter
25
of law, that finding is inappropriate, and rewards Columbia for much more than the
26
ornamental appeal of the wave design. Columbia is entitled to no more than $500,817
27
for infringement of the design patent, yet the jury awarded 6 times that much. The
28
29
Case No. 3:17-cv-01781
1 Court should thus order a new trial on the issue of design patent damages to avoid a
2 miscarriage of justice. Id.
3 2. It was Legally Improper to Shift the Burden to Seirus to
Establish the Article of Manufacture
4
A new trial is also warranted because the jury was incorrectly instructed on the
5
relevant burden of proof for design patent damages, and that error severely prejudiced
6
Seirus. Seirus has previously explained its position on this issue, [Dkt. No. 151 at 15-
7
17 (“[T]he burden of establishing the article of manufacture, which is a central element
8
of proving damages in a design patent infringement case, must also fall on the
9
patentee.”); Ex. B at 84-86.], but does so once again to ensure all its arguments are
10
preserved. The plaintiff traditionally has the burden of proof on damages, both in
11
patent cases and in most others. Nothing justifies shifting or changing that burden in
12
this case—the statute requires no such burden shifting, nor do policy considerations.
13
Yet, by putting the burden of proof on Seirus on the article of manufacture issue, the
14
Court erroneously shifted the burden on the central element of Columbia’s damages
15
case. The Court should thus order a new trial where the jury should be instructed that
16
the plaintiff bears the burden of proving the relevant article of manufacture on a
17
product-by-product basis.
18
a. Plaintiffs Traditionally Bear the Burden of Persuasion
19
on All Patent Damages Issues, and § 289’s Text is
20 Consistent With that Approach
21 The burden of pleading and proving all elements of its case, including damages,
22 traditionally falls on the plaintiff. See, e.g., Schaffer ex rel. Schaffer v. Weast, 546
23 U.S. 49, 57 (2005) (“we have usually assumed without comment that plaintiffs bear
24 the burden of persuasion regarding the essential aspects of their claims.”). Following
25 that general rule, the Federal Circuit has instructed that “[t]he burden of proving
26 damages falls on the patentee.” Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301,
27 1324 (Fed. Cir. 2009). Identifying the relevant article of manufacture to which the
28
30
Case No. 3:17-cv-01781
1 infringing design has been applied is part and parcel of the plaintiff’s damages case,
2 so the plaintiff therefore bears the burden of proof on that issue.
3 The text of § 289 is consistent with imposing the burden of proof (persuasion)
4 on the patentee to show the relevant article of manufacture to which the patented
5 design has been applied. The statute sets out the boundaries of infringement liability
6 as follows:
7 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
8
of manufacture for the purpose of sale, or (2) sells or exposes for sale any
9 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. . . .
10
11 35 U.S.C. § 289 (emphasis added). This statutory language imposes the burden of
12 proof for infringement of a design patent on the plaintiff. See Egyptian Goddess, Inc.
13 v. Swisa, Inc., 543 F.3d 685, 678 (Fed. Cir. 2008) (“Thus, as is always the case, the
14 burden of proof as to infringement remains on the patentee.”). And it does not include
15 any language that would shift the burden of proof on any damages issue to the
16 defendant. Indeed, the legislative history suggests that there was no such intent and
17 that the plaintiff had the burden of proving all elements of its damages case. See, e.g.,
18 H.R. REP. NO. 49-1966, at 3 (1886) (“the patentee recovers the profit actually made
19 on the infringing article if he can prove that profit”).
20 The text of § 289 mirrors the text of the analogous statutes for utility patents,
21 which established that the same burden of proof on the patentee should apply to each.
22 The relevant statutory language for utility patents reads as follows:
23  Utility patent infringement: “[W]hoever without authority makes,
uses, offers to sell, or sells any patented invention, within the United
24 States or imports into the United States any patented invention during the
25 term of the patent therefor, infringes the patent.” 35 U.S.C. § 271(a).
26  Utility patent damages: “Upon finding for the claimant the court shall
27 award the claimant damages adequate to compensate for the
infringement, but in no event less than a reasonable royalty for the use
28
31
Case No. 3:17-cv-01781
1 made of the invention by the infringer, together with interest and costs as
fixed by the court.” 35 U.S.C. § 284.
2
3 These statutes impose the burden of proving all aspects of infringement damages on
4 the patentee, regardless of their mandatory-sounding language (e.g., “infringes” in §
5 271 and “shall award” in § 284). See, e.g., Lucent Techs., Inc. v. Gateway, Inc., 580
6 F.3d 1301, 1324 (Fed. Cir. 2009). So the same type of language in § 289 (e.g., “shall
7 be liable”) likewise does not change the fact that the burden of proof for all aspects of
8 the damages claim is on the plaintiff.
9 Section 289 also makes clear that it does not shift the burden of proof on the
10 relevant article of manufacture, because it lacks any explicit language to that effect.
11 By contrast, where Congress wants to shift the burden of proof on damages in an IP-
12 related area, it does so expressly. For example, in the trademark infringement context,
13 the statute provides for an award of the defendant’s profits and adds that “[i]n
14 assessing profits the plaintiff shall be required to prove defendant’s sales only;
15 defendant must prove all elements of cost or deduction claimed.” 15 U.S.C. § 1117(a).
16 Likewise, in the copyright infringement context, the statute provides for an award of
17 the defendant’s profits and again says that “the copyright owner is required to present
18 proof only of the infringer’s gross revenue, and the infringer is required to prove his
19 or her deductible expenses and the elements of profit attributable to factors other than
20 the copyrighted work.” 17 U.S.C. § 504(b). The design patent statute, by contrast,
21 contains no such language. The upshot is that the plaintiff bears the burden of proving
22 all aspects of its damages case, including the identity of the relevant article of
23 manufacture. See, e.g., Meghrig v. KFC Western, Inc., 516 U.S. 479, 485 (1996)
24 (“Congress . . . demonstrated in CERCLA that it knew how to provide for the recovery
25 of cleanup costs, and . . . the language used to define remedies under RCRA does not
26 provide that remedy.”); FCC v. NextWave Personal Commc’ns, Inc., 537 U.S. 292,
27 302 (2003) (when Congress has intended to create exceptions to bankruptcy law
28 requirements, “it has done so clearly and expressly”).
32
Case No. 3:17-cv-01781
1 b. The Federal Circuit Has Held the Plaintiff Bears the

Burden of Proof on Other, Analogous Damages Issues
2
3 The Federal Circuit has also made clear the plaintiff’s burden of proving
4 damages extends to all sub-issues. Those holdings apply directly here and require that
5 Columbia bear the burden of proof on the relevant article of manufacture. Examples
6 from other aspects of patent damages law illustrate the point.
7 First, in the context of utility patents, the patentee “must in every case give
8 evidence tending to separate or apportion the defendant’s profits and the patentee’s
9 damages between the patented feature and the unpatented features, and such evidence
10 must be reliable and tangible, and not conjectural or speculative . . . .” Garretson v.
11 Clark, 111 U.S. 120, 121 (1884) (emphasis added). The EMVR is a “narrow
12 exception” to this “general rule” of apportionment. See LaserDynamics, Inc. v.
13 Quanta Computer, Inc., 694 F.3d 51, 67 (Fed. Cir. 2012). “If it can be shown that the
14 patented feature drives the demand for an entire multi-component product, a patentee
15 may be awarded damages as a percentage of revenues or profits attributable to the
16 entire product.” Id. “These strict requirements limiting the entire market value
17 exception ensure that a reasonable royalty ‘does not overreach and encompass
18 components not covered by the patent.’” VirnetX, Inc. v. Cisco Sys., Inc., 767 F.3d
19 1308, 1326 (Fed. Cir. 2014) (quoting LaserDynamics, 694 F.3d at 70). In either case,
20 the plaintiff bears the burden of either proving that the EMVR applies or proving that
21 it has apportioned damages so that they are confined to the patented feature. See, e.g.,
22 Garretson, 111 U.S. at 121 (“[T]he patentee must show in what particulars his
23 improvement has added to the usefulness of the machine or contrivance.”);
24 LaserDynamics, 694 F.3d at 68–69; VirnetX, 767 F.3d at 1329–30; Lucent, 580 F.3d
25 at 1337–39.
26 Similar considerations apply to the “article of manufacture” analysis for design
27 patents. The Supreme Court in Samsung recognized that—similar to EMVR—the
28 patentee is entitled to damages for only those components actually bearing the
33
Case No. 3:17-cv-01781
1 patented design (or damages attributed to the proper “article of manufacture”). See
2 Samsung Elecs. Co., Ltd. v. Apple Inc., 137 S. Ct. 429, 436 (2016) (“Thus, reading
3 ‘article of manufacture’ in § 289 to cover only an end product sold to a consumer gives
4 too narrow a meaning to the phrase.”). Likewise, the DOJ’s proposed test seeks to
5 award damages that would “appropriately compensate (rather than over-compensate)
6 the patentee for the contribution of the patented design to the value of the infringer’s
7 finished product.” [Ex. A. at 27.] This is essentially the same policy underlying the
8 EMVR, and it would make sense that the burdens of proof in design patent damages
9 should follow a similar protocol, where the patentee bears the burden of proving all
10 underlying aspects of its case, including the relevant article of manufacture to which
11 the accused design has been applied. Just as in the case of EMVR, the plaintiff here
12 should have to prove that it is entitled to damages on the entire product, by proving
13 that the entire product is the article of manufacture, after application of the DOJ test
14 to the evidence adduced at trial. Every plaintiff will assert that the entire product is
15 the article of manufacture; the law must require something more than merely making
16 an infringement allegation. Setting the default recovery as the entire product over-
17 compensates Columbia, especially where, as here, the accused products include so
18 many other components and features that drive sales, and the wave design contributes
19 essentially nothing to their value.
20 Second, the Federal Circuit recently reiterated that the patentee bears the burden
21 of proving that it complied with the marking requirement of § 287 and rejected a jury
22 instruction that attempted to shift that burden in a less extreme way than the one here.
23 Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 876 F.3d 1350, 1368-69 (Fed.
24 Cir. 2017). The patent marking statute (§ 287) prevents a patentee who sells or
25 licenses another to sell products covered by its patent from recovering pre-suit
26 damages unless either (a) the patented products were marked with the patent number
27 or (b) the patentee gave the defendant actual notice of infringement. See 35 U.S.C. §
28 287(a); Arctic Cat, 876 F.3d at 1365-66. The marking statute applies equally to design
34
Case No. 3:17-cv-01781
1 and utility patents. See, e.g., Nike, Inc. v. Wal-Mart Stores, Inc., 138 F.3d 1437, 1446
2 (Fed. Cir. 1998). The Federal Circuit observed that “the patentee bears the burden of
3 pleading and proving he complied with § 287” but noted that the parties disagreed on
4 who bore the burden to prove that someone sold products that needed to be marked in
5 the first place. Arctic Cat, 876 F.3d at 1367. Nevertheless, the trial court had held on
6 summary judgment that “the burden of proving compliance with marking is placed on
7 the defendant and that the burden of production does not shift to the plaintiff to show
8 compliance with a marking statute.” Id. The trial court subsequently instructed the
9 jury that the defendant had to prove that someone sold products that needed to be
10 market and reiterated that point at JMOL. Id. The Federal Circuit found this to be an
11 improper shift in burden to the defendant, vacated the judgment, and remanded for a
12 new trial. Id. at 1368-69. Resolving a split among district courts, the Federal Circuit
13 held that the defendant did indeed bear an initial burden of production to identify
14 products that were allegedly unmarked but emphasized that the burden of proof on
15 this issue remained at all times with the patentee:
16 We hold an alleged infringer who challenges a patentee’s compliance
with § 287 bears an initial burden of production to articulate the
17
products it believes are unmarked “patented articles” subject to § 287.
18 To be clear, this is a low bar. The alleged infringer need only put the
patentee on notice that he or his authorized licensees sold specific
19
unmarked products which the alleged infringer believes practice the
20 patent. The alleged infringer’s burden is a burden of production, not
one of persuasion or proof.
21
...
22
Once the alleged infringer meets its burden of production, however, the
23 patentee bears the burden to prove the products identified do not
practice the patented invention.
24
25 Id. at 1368 (emphasis added).
26 A similar analysis applies here. As with the text of § 287, the text of § 289
27 makes proving the relevant article of manufacture to which the patented design has
28 been applied a part of the plaintiff’s damages case. The plaintiff thus bears the burden
35
Case No. 3:17-cv-01781
1 of proof (persuasion) on that issue. It may be that the defendant bears some initial
2 burden of production on the issue—i.e., to identify what it believes the article of
3 manufacture is—but that is a low bar that Seirus surely met here once it alleged that
4 the relevant article was the HeatWave fabric. At that point, the patentee should
5 properly bear the burden to prove that the article of manufacture is the end-product
6 rather than the component. Yet the jury instruction here requires the opposite and thus
7 committed the same error that caused the Federal Circuit to set aside the jury verdict
8 in Arctic Cat.
9 c. The Arguments for Shifting the Burden of Proof Onto
Seirus Are All Misplaced
10
11 Given the arguments above, nothing justifies shifting the burden of proof on the
12 article of manufacture issue onto the defendant (Seirus). In arguing for the burden
13 shift that this Court adopted, the DOJ did not identify anything in the text of § 289 or
14 in relevant patent precedent that would justify the burden shift. The DOJ instead
15 offered a policy reason—viz., that the defendant supposedly “has superior knowledge
16 of the identity of the product’s components, as well as some of the factors relevant to
17 the ‘article’ determination.” [Ex. A at 31.] That is not correct in many cases, including
18 this one. For example, the DOJ’s first factor requires an analysis of the patentee’s
19 patent, the drafting of which is entirely within the patentee’s control. Moreover, as
20 for the DOJ’s other factors, the plaintiff has access (through discovery or otherwise)
21 to physical samples of the accused products, documentation showing how they are
22 manufactured, and testimony about the other technologies incorporated into the
23 product. Regardless, this type of policy analysis cannot displace the legal
24 considerations above, including the statutory text and history and analogous precedent
25 from other areas. What’s more, Congress already addressed any issues with putting
26 the burden of proof on the plaintiff by setting a statutory floor for damages in case the
27 plaintiff has difficult meeting its burden. See H.R. REP. NO. 49-1966, at 3 (“[T]o meet
28 the case where the exact profit in dollars and cents cannot be proved … the bill
36
Case No. 3:17-cv-01781
1 prescribes a minimum recovery of $250.”); S. REP. NO. 49-206, at 2 (1886) (similar);

2 Young, 268 F. at 974 (explaining that the statutory minimum was enacted “to provide
3 for cases” where the plaintiff could not prove the profits attributable to the component
4 of a larger end-product). To shift the burden anyway would just encourage plaintiffs
5 holding design patents on minor components to sue manufacturers of complex and
6 costly products, knowing that the plaintiff need only allege infringement, and then the
7 burden of defending the allegations will shift to the defendant.
8 d. The Error in the Jury Instructions Prejudiced Seirus,
Requiring a New Trial
9
10 The instruction erroneously shifting the burden of proof on the “article of
11 manufacture” issue prejudiced Seirus, requiring a new trial. By shifting the burden of
12 proof, the erroneous instruction necessarily skewed the jury’s deliberations—its
13 default position was to give Columbia all the damages it sought, unless Seirus could
14 show that a lower number was appropriate. But the inquiry should have been reversed:
15 the burden should have been on Columbia to show that it was entitled to damages for
16 something more than just the fabric to which the design was actually applied. The
17 Federal Circuit has set aside other jury verdicts where the jury was instructed on the
18 wrong burden of proof. Arctic Cat, 876 F.3d at 1368-69 (remanding where the jury
19 was erroneously instructed on the burden of proof related to marking). The same
20 result is appropriate here.
21 3. The Article of Manufacture Jury Instruction Did Not Reflect
the Proper Legal Test
22
In addition to the improper burden shift, the jury was not instructed on the
23
correct legal standard for identifying the article of manufacture, and that error
24
prejudiced Seirus, requiring a new trial. Before articulating the DOJ’s four factors,
25
the instruction first interposed a distinction between single and multi-component
26
products. That distinction is not found anywhere in the statutory text of § 289. The
27
DOJ did not recommend including such a threshold inquiry before its four factor test.
28
And the new distinction creates significant confusion in the legal analysis, because it
37
Case No. 3:17-cv-01781
1 provides no further guidance on how to distinguish between “single” and “multi-

2 component” products. For example, Seirus’s accused liners, socks, and skull caps all
3 include both the HeatWave fabric and stitching that is used to convert the fabric into
4 a finished product. These are, by dictionary definition, multi-component products
5 because it includes at least two separate items: the fabric and the stitching, each of
6 which is “a constituent part” of the end-product. See, e.g., https://www.merriam-
7 webster.com/dictionary/component. Yet the jury instruction seemingly left it open for
8 the jury to find otherwise given its lack of guidance on the issue. The Court should
9 have eliminated these problems by simply instructing the jury to use the DOJ’s four
10 factors to identify the appropriate article of manufacture, without reference to the
11 distinction between single and multi-component products. [See, e.g., Ex. A at 27 (“In
12 cases where the identity of the relevant ‘article of manufacture’ is otherwise open to
13 reasonable dispute, the factfinder may legitimately consider which characterization
14 would appropriately compensate (rather than over-compensate) the patentee for the
15 contribution of the patented design to the value of the infringer’s finished product.”).]
16 Instead, the instruction as given allowed the jury to bypass the DOJ’s four
17 factors entirely if it concluded that the accused products were each only a “single
18 component” product. That is legally problematic for multiple reasons. First, the
19 instruction misstates the relevant law, which does not require making any such initial
20 distinction. Second, by allowing the jury to circumvent the DOJ’s four factors, it
21 effectively allowed the jury to avoid grappling with all the considerations relevant to
22 identifying the correct article of manufacture. Third, the instruction is internally
23 inconsistent. It mandates that the jury first determine whether the product is a single
24 or multi-component product. It then mandates that the jury should apply the factors
25 to determine whether the article of manufacture is the whole product or a component
26 of that product. Finding that the article is the whole product is the same as finding
27 that the product is a single component product. More appropriately, the jury should
28 just apply the evidence to the DOJ factors and determine what the relevant article of
38
Case No. 3:17-cv-01781
1 manufacture is that “would appropriately compensate (rather than over-compensate)”

2 Columbia “for the contribution of” the wavy design to Seirus’ products. [Ex. A at
3 27.] Fourth, taken as a whole, the instruction suggests the outcome should be that the
4 entire product is the appropriate article of manufacture. It renders the factors
5 essentially useless, and is confusing. Seirus’ proposed instruction, which more closely
6 tracks the language and intent of the DOJ amicus brief, is the correct formulation.
7 Finally, it was error to give any instruction that suggested Seirus’s accused
8 products were anything other than multi-component products, because each and every
9 one of them was indisputably made up of multiple parts. This error is most apparent
10 with the outer shell gloves, which both sides agreed included multiple components.
11 The instruction thus should, at a minimum, have made clear that the jury had to find
12 that those were multi-component products and to apply the DOJ’s four factors to them.
13 But the error was equally present for the accused socks, liners, and hats, which
14 included at least fabric and stitching, which are multiple parts of the end-product.
15 The erroneous instruction on article of manufacture was necessarily prejudicial,
16 because it did not apprise the jury of the right legal inquiry and instead allowed them
17 to bypass the critical legal considerations. A new trial is thus warranted so that a
18 correctly instructed jury can make the relevant legal determination.
19 4. The Verdict Form Improperly Omitted Identification of the
Article of Manufacture
20
Another reason that Seirus is entitled to a new trial is because the verdict form
21
omitted identification of the article of manufacture. [See Dkt. No. 377 (verdict form).]
22
This omission allowed the jury to skip the step of identifying the article of
23
manufacture, which they were required to do by the jury instruction, and simply award
24
a disgorgement number without underlying justification. It also created an ambiguity
25
as to whether the jury needed to determine the article of manufacture to find damages
26
for the design patent. This omission was amplified by the fact that Columbia was
27
allowed to inform the jury multiple times during the trial that Seirus infringed the
28
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Case No. 3:17-cv-01781
1 design patent and that the patent was not invalid. Indeed, over Seirus’ objection,
2 Columbia was allowed to show the partial judgment to the jury that—when coupled
3 with the lack of a box to check on the verdict form for the article of manufacture—
4 created a misimpression in the jury’s mind that it need not make findings concerning
5 the article of manufacture, which is legally wrong.
6 The erroneous verdict form was prejudicial, because it allowed the jury to
7 bypass this critical step—one that is necessary under the Supreme Court’s Samsung
8 opinion, and that should be carried out for each individual product. See Samsung, 137
9 S. Ct. at 434 (“First, identify the ‘article of manufacture’ to which the infringed design
10 has been applied. Second, calculate the infringer’s total profits made on that article
11 of manufacture.”). A new trial is thus warranted so that a correctly tailored verdict
12 form can be used.
13 V. CONCLUSION
14 The Court should grant Seirus’ renewed motion for judgment as a matter of law,
15 and properly reduce Columbia’s damages to zero or, at most, $500,817, those
16 attributable to the proper article of manufacture—the HeatWave fabric. Alternatively,
17 Seirus respectfully requests a new trial on damages with legally correct jury
18 instructions.
19
20 Dated: January 5, 2018 FISH & RICHARDSON P.C.
21
By: /s/ Christopher S. Marchese
22
Christopher S. Marchese
23 marchese@fr.com
24
Attorneys for Defendant, Seirus Innovative
25 Accessories, Inc.
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Case No. 3:17-cv-01781
1 CERTIFICATE OF SERVICE
2 The undersigned hereby certifies that a true and correct copy of the above and
3 foregoing document has been served on January 5, 2018, to all counsel of record who
4 are deemed to have consented to electronic service via the Court’s CM/ECF system
5 per Civil Local Rule 5.4. Any other counsel of record will be served by electronic
6 mail, facsimile and/or overnight delivery.
7
8 /s/ Christopher S. Marchese
9
marchese@fr.com
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Case No. 3:17-cv-01781
Case 3:17-cv-01781-HZ Document 431-1 Filed 01/05/18 PageID.18642 Page 1 of 4
1 Christopher S. Marchese (SBN 170239), marchese@fr.com

Seth M. Sproul (SBN 217711), sproul@fr.com
2
Michael A. Amon (SBN 226221), amon@fr.com
3 Garrett K. Sakimae (SBN 288453), sakimae@fr.com
Tucker N. Terhufen (SBN 311038), terhufen@fr.com
4
Oliver J. Richards (SBN 310972), orichards@fr.com
5 FISH & RICHARDSON P.C.
12390 El Camino Real
6
San Diego, CA 92130
7 Tel: (858) 678-5070, Fax: (858) 678-5099
8
Renée Rothauge, (SBN 271239), reneerothauge@markowitzherbold.com
9 MARKOWITZ HERBOLD PC
10 1211 SW Fifth Avenue, Suite 3000
Portland, OR 97204
11 Tel: (503) 295-3085, Fax: (503) 323-9105
12
Attorneys for Defendant, Seirus Innovative Accessories, Inc.
13
IN THE UNITED STATES DISTRICT COURT
14 FOR THE SOUTHERN DISTRICT OF CALIFORNIA
15
COLUMBIA SPORTSWEAR NORTH Case No. 3:17-cv-01781
16 AMERICA, INC., an Oregon
17 corporation, DECLARATION OF CHRISTOPHER
S. MARCHESE IN SUPPORT OF
18 Plaintiff, SEIRUS’ MOTION FOR JUDGEMENT
19 AS A MATTER OF LAW OR A NEW
v. TRIAL
20
SEIRUS INNOVATIVE Judge: Marco A. Hernandez
21 ACCESSORIES, INC., a Utah
corporation
22
23 Defendants. Date Action Filed: January 12, 2015
Trial Date: September 18, 2017
24
25
26
27
28
DECLARATION OF CHRISTOPHER S. MARCHESE ISO SEIRUS’ MOTIONS FOR JMOL
OR A NEW TRIAL
Case No. Case No. 3:17-cv-01781
1 I, Christopher S. Marchese, do hereby declare and say:

2 1. I am an attorney at law licensed to practice in the State of California, and
3 I am an attorney at the law firm of Fish & Richardson P.C., counsel for Defendant
4 Seirus Innovative Accessories, Inc. (“Seirus”) in this action. I submit this declaration
5 in support of Seirus’ Motion for Judgment as a Matter of Law or a New Trial.
6 2. I have personal knowledge of the facts recited below, they are true and
7 correct, and if called upon as a witness, I could and would competently testify as stated
8 herein.
9 3. Attached hereto as Appendix A is a true and correct copy of the trial
10 transcript from the trial held before this Court from September 18, 2017 through
11 September 28, 2017.
12 4. Attached hereto as Exhibit A is a true and correct copy of the brief
13 submitted on behalf of the United States as amicus curiae in the Samsung v. Apple
14 case.
15 5. Attached hereto as Exhibit B is a true and correct copy of excerpted
16 portions of the pre-trial hearing transcript from September 11, 2017.
17 6. Attached hereto as Trial Exhibit 1 is a true and correct copy of admitted
18 exhibit 1, U.S. Design Patent No. D657,093.
19 7. Attached hereto as Trial Exhibit 117 is a true and correct copy of
20 admitted exhibit 117, a HeatWave hangtag.
22 admitted exhibit 128, Seirus’ 15/16 Winter catalog.
24 admitted exhibit 129, a page including various Seirus products and advertising
25 including the HeatWave Sock, HeatWave Liner, and HeatWave Skull products.
27 admitted exhibit 133, a HeatWave advertisement.
28 1
DECLARATION OF CHRISTOPHER S. MARCHESE ISO SEIRUS’ MOTIONS FOR JMOL
OR A NEW TRIAL
2 admitted exhibit 134, a HeatWave glove advertisement.
3 12. Attached hereto as Trial Exhibit 221 is a true and correct copy of an
4 image corresponding to physical exhibit 221, a HeatWave skull liner product sample.
5 13. Attached hereto as Trial Exhibit 225 is a true and correct copy of an
6 image corresponding to physical exhibit 225, a HeatWave sock product sample.
8 admitted exhibit 1192, a Seirus catalog from 2013/2014.
10 admitted exhibit 1196, a Seirus workwear and hunting catalog from 2013/2014.
11 16. Attached hereto as Trial Exhibit 1227.13 is a true and correct copy of
12 admitted exhibit 1227.13, a production document related to Seirus’ glove liners.
14 admitted exhibit 1227.15, a production document related to Seirus’ sock products.
16 admitted exhibit 1227.84, a production document related to Seirus’ complex gloves.
18 admitted exhibit 1227.164, a production document related to Seirus’ skull liners.
19 20. Included within Seirus’ brief as Trial Exhibit 1349 are true and correct
20 pictures of admitted exhibit 1349, Seirus HeatWave Workman Impact Gripper Glove,
21 which is in Seirus’ possession at this time.
23 admitted exhibit 1404, which includes pictures of various components of a Seirus
24 complex glove, each component corresponding to a physical exhibit that was admitted
25 at trial (Exs. 1404.1-1404.20).
26 22. Attached hereto as Trial Exhibit 1418 are true and correct images of
27 admitted exhibit 1418, Seirus HeatWave All Weather glove, which is in Seirus’
28 possession at this time.
2
DECLARATION OF NAME IN SUPPORT OF SEIRUS’ MOTION FOR JMOL THAT THE
ARTICLE OF MANUFACTURE IS THE HEATWAVE FABRIC
1 23. Attached hereto as Trial Exhibit 1423 are true and correct images of
2 admitted exhibit 1423, Seirus Original All Weather glove, which is in Seirus’
3 possession at this time.
5 admitted exhibit 1433, depicting a webpage of the Seirus liner.
6
7 I declare under penalty of perjury under the laws of the United States of
8 America and the State of California, that the foregoing is true and correct and that this
9 declaration is executed in San Diego, California on January 5, 2018.
10
11
/s/ Christopher S. Marchese
12
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DECLARATION OF NAME IN SUPPORT OF SEIRUS’ MOTION FOR JMOL THAT THE
ARTICLE OF MANUFACTURE IS THE HEATWAVE FABRIC

Seirus' Motion For JNOV

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Case 3:17-cv-01781-HZ Document 431 Filed 01/05/18 PageID.

1 Christopher S. Marchese (SBN 170239), marchese@fr.com

MEMORANDUM IN SUPPORT OF SEIRUS’S POST-TRIAL MOTIONS

23 4. JMOL Reducing the Damages Award to $500,817 is the

1 2. It was Legally Improper to Shift the Burden to Seirus to Establish

20 Grand Rapids Refrigerator Co. v. Young,

1 Meghrig v. KFC Western, Inc.,

14 Schaffer ex rel. Schaffer v. Weast,

1 35 U.S.C. § 271(a) ..................................................................................................... 31

11 2. The relative prominence of the design within the product as a whole.

17 3. Whether the design is conceptually distinct from the product as a

25 In weighing these factors, your objective should be to identify the

1 C. Determining the Appropriate Article of Manufacture

1 fabric is plainly an “article of manufacture”—it is a thing made by man and machine

26 was applied only to the reflective foil that is attached to a fabric:

27 Q. The claim again reads, the ornamental design of a heat-reflective

16 A. Correct. Correct. Yes.

17 Q. Not even the fabric?

18 A. I don’t see it as the fabric myself.

1 different insulative materials. [App. A (Trial Tr.) at 622:14-24 (SoundtouchTM);

1 c. The Patented Wave Design is Conceptually Distinct

1 b. The Federal Circuit Has Held the Plaintiff Bears the

1 prescribes a minimum recovery of $250.”); S. REP. NO. 49-206, at 2 (1886) (similar);

1 provides no further guidance on how to distinguish between “single” and “multi-

1 manufacture is that “would appropriately compensate (rather than over-compensate)”

1 Christopher S. Marchese (SBN 170239), marchese@fr.com

1 I, Christopher S. Marchese, do hereby declare and say:

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