United States District Court, E.D. Wisconsin
DECISION AND ORDER
WILLIAM E. DUFFIN U.S. MAGISTRATE JUDGE.
Facts and Procedural History
Inc. holds a design patent regarding a “lip and hinge
plate for a dock leveler.” U.S. Patent No. D579,
754 (the ‘D754 Patent). When a semi-trailer is
backed into a loading dock, a dock leveler bridges the gap
between the floor of a loading dock and the bed of a
semi-trailer. (ECF Nos. 258-1, ¶ 5; 221 at 17.) A dock
leveler allows people and equipment such as forklifts to
easily pass between the building and the trailer when loading
or unloading cargo onto or from the trailer. (Id.)
and hinge plate is the portion of the dock leveler that
actually spans any gap between the building and the trailer
and makes contact with the trailer bed. (See ECF
Nos. 164 at 12, 13, 22-23, 64; 221 at 15.) When not in use,
the lip normally hangs down perpendicular to the deck of the
dock leveler; when in use, it comes up to be generally
parallel with the deck. (ECF No. 164 at 23.)
filed this action alleging that Systems, Inc. was selling
products that infringed the ‘D754 Patent. On March 26,
2013, the jury returned a verdict in favor of Nordock. (ECF
No. 172.) Concluding that Systems had no profit on the sales
of its infringing dock levelers, the jury awarded Nordock
$46, 825 as a reasonable royalty. (ECF No. 172 at 3.)
sides appealed. The Court of Appeals for the Federal Circuit
concluded that there was no evidence to support the
jury's conclusion that Systems did not have any profit on
the sales of its infringing dock levelers, Nordock, Inc.
v. Sys., Inc., 803 F.3d 1344, 1356 (Fed. Cir. 2015), and
remanded the matter for a new trial on damages. Id.
The Federal Circuit stated that at that new trial damages
under 35 U.S.C. § 289 must be based on the profit from
the sale of the entire dock leveler and not just the profit
attributable to the lip and hinge plate. Nordock,
803 F.3d at 1355.
United States Supreme Court granted Systems's request for
review, summarily reversed, and remanded the case to the
Federal Circuit in light of its recent decision in
Samsung Elecs. Co. v. Apple Inc., 137 S.Ct. 429, 196
L.Ed.2d 363 (2016). Sys., Inc. v. Nordock, Inc., 137
S.Ct. 589, 196 L.Ed.2d 471 (2016).
Samsung Apple alleged that Samsung infringed its
design patents for mobile phones. The design patents covered
“a rectangular front face with rounded edges and a grid
of colorful icons on a black screen.” Id. at
431. A jury found that several Samsung smartphones infringed
Apple's design patents and awarded Apple nearly $400
million in damages--the entire profit Samsung made from its
sales of the infringing smartphones.
appeal Samsung argued “that the profits awarded should
have been limited to the infringing ‘article of
manufacture'” (for example, the case of the Samsung
smartphone) and not the entire smartphone. Apple Inc. v.
Samsung Elecs.Co., 786 F.3d 983, 1002 (2015). The
Federal Circuit rejected that argument, reasoning that
limiting the damages award in this manner was not appropriate
because the “innards of Samsung's smartphones were
not sold separately from their shells as distinct articles of
manufacture to ordinary purchasers.” Id.
Supreme Court disagreed with the Federal Circuit's
conclusion that the article of manufacture must always be the
product sold to consumers. It concluded that the term
“article of manufacture” as used in § 289
“encompasses both a product sold to a consumer and a
component of that product.” Samsung, 137 S.Ct.
at 434. However, the Supreme Court did not articulate how a
court is to identify the “article of
the Supreme Court's decision remanding Nordock
to the Federal Circuit, Systems, 137 S.Ct. 589, the
Federal Circuit in a brief per curiam opinion remanded the
case to this court for a new trial on damages. Nordock,
Inc. v. Sys., Inc., 681 Fed.Appx. 965 (Fed. Cir. 2017).
The Federal Circuit stated, “The trial court will also
have the opportunity to consider the parties' arguments
with respect to the relevant ‘article of
manufacture' in the first instance.” Id.
the death of the prior presiding judge, the case was randomly
assigned to this court. All parties consented to this
court's jurisdiction. Thus, it is now for this court to
decide how the article of manufacture should be determined.
The issue comes before the court on the parties' cross
motions for partial summary judgment.
Summary Judgment Standard
court shall grant summary judgment if the movant shows that
there is no genuine dispute as to any material fact and the
movant is entitled to judgment as a matter of law.”
Fed.R.Civ.P. 56(a). “Factual disputes are
‘material' only when they ‘might affect the
outcome of the suit under the governing law'” and
“‘genuine' only ‘if the evidence is
such that a reasonable jury could return a verdict for the
[nonmovant].'” Oest v. Ill. Dep't of
Corr., 240 F.3d 605, 610 (7th Cir. 2001) (quoting
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248
(1986)). “The burden on the moving party may be
discharged by demonstrating ‘that there is an absence
of evidence to support the nonmoving party's
case.'” Id. (quoting Celotex Corp. v.
Catrett, 477 U.S. 317, 325 (1986)). “The
controlling question is whether a reasonable trier of fact
could find in favor of the non-moving party on the evidence
submitted in support of and [in] opposition to the motion for
summary judgment.” White v. City of Chi., 829
F.3d 837, 841 (7th Cir. 2016).
support of its motion for summary judgment Nordock submitted
75 proposed findings of fact (ECF No. 258-1) supported by
voluminous documentation (ECF Nos. 258-3 - 261-15; 268-1 -
268-9; 266-1 - 266-3). Systems requested “that it be
relieved from responding to each of Nordock's proposed
statements of fact at this time and that, if the Court
believes Nordock's statements are material or otherwise
potentially dispositive, it be given a meaningful opportunity
to depose these witnesses before responding specifically and
individually to each of these statements under Local Rule
56(b)(2)(B).” (ECF No. 269 at 11.) Given the posture of
this case and the context of the present dispute, where the
foremost issue is determining the test that should apply for
identifying the article of manufacture, the court grants this
unusual request. Many of Nordock's proposed findings of
fact are not material. Others are not properly proposed
findings of fact but rather represent legal conclusions. And
others are not properly supported by appropriate citations.
Of those material proposed findings of fact that are properly
presented, the court does not find that any is reasonably
subject to dispute. Therefore, as referenced below, the court
will consider certain of the relevant proposed findings of
fact for purposes of this motion.
argues that, in the absence of clarification from the Supreme
Court or the Federal Circuit as to which party bears the
burden of proof on what constitutes the article of
manufacture, “the ordinary rule that a plaintiff bears
the initial burden of proof on all issues, including the
issue of damages, should not be disturbed.” (ECF No.
262 at 9.) Nordock argues that it should be presumed that the
article of manufacture is the product that is sold, and the
burden should be ...