Professional Documents
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Columbia v. Seirus - Columbia's Reply To Seirus's Appellate Brief
Columbia v. Seirus - Columbia's Reply To Seirus's Appellate Brief
Plaintiff - Appellant,
v.
Defendant - Cross-Appellant.
______________________________
David W. Axelrod
Nicholas F. Aldrich, Jr.
Sara Kobak
Schwabe, Williamson & Wyatt P.C.
1211 S.W. 5th Avenue, Suite 1900
Portland, Oregon 97204
Telephone: 503-222-9981
Facsimile: 503-796-2900
Attorneys for Columbia Sportswear
North America, Inc.
Case: 18-1329 Document: 37 Page: 2 Filed: 09/18/2018
2. The name of the real party in interest (if the party named in
the caption is not the real party in interest) represented by me is: Not
Applicable.
that own 10 percent of more of the stock of the party or amicus curiae
that appeared for the party now represented by me in the trial court or
pending in this or any other court or agency that will directly affect or
ii
iii
TABLE OF CONTENTS
Page
iv
vi
TABLE OF AUTHORITIES
Page(s)
Cases
Burdell v. Denig,
92 U.S. 716 (1876) ................................................................................ 71
vii
Callaghan v. Myers,
128 U.S. 617 (1888) ........................................................................ 55, 65
viii
Garretson v. Clark,
111 U.S. 120 (1884) .............................................................................. 55
Goodyear Tire & Rubber Co. v. Hercules Tire & Rubber Co.,
Inc.,
162 F.3d 1113 (Fed. Cir. 1998) ............................................................ 38
In re M/V Peacock,
809 F.2d 1403 (9th Cir. 1987) .............................................................. 79
In re Micron Inc.,
875 F.3d. 1091 (Fed. Cir. 2017) ..................................................... 82, 83
ix
Petrella v. MGM,
134 S. Ct. 1962 (2014) .......................................................................... 71
SEC v. Bilzerian,
29 F.3d 689 (D.C. Cir. 1994) ................................................................ 62
SEC v. Jasper,
678 F.3d 1116 (9th Cir. 2012) .............................................................. 72
SEC v. Whittemore,
744 F. Supp. 2d 1 (D.D.C. 2010) .......................................................... 62
xi
In re Zahn,
617 F.2d 261 (C.C.P.A. 1980) .............................................................. 45
Statutes
Law of Feb. 20, 1905, ch. 592, § 19, 33 Stat. 723, 729 (1905) ................. 61
Law of July 30, 1947, ch. 2, § 101(b), 61 Stat. 652, 661 (1947) .............. 61
Other Authorities
xii
xiii
No other appeal in or from this case has been before either this
filed a petition for inter partes review of U.S. Patent No. 8,453,270 (the
for the PTAB to issue its final decision in order to determine whether
America, Inc. (“Columbia”) and affiliates filed suit against Ventex in the
United States District Court for the District of Oregon for infringing the
Case: 18-1329 Document: 37 Page: 15 Filed: 09/18/2018
xiv
’270 Patent and U.S. Design Patent D657,093 (the “D’093 Patent”) at
North America, Inc., et al. v. Ventex Co., Ltd, et al., Case No. 3:17-cv-
00623 (D. Or.). On November 9, 2017, the district court stayed that
On March 13, 2018, following the jury’s verdict in this case, Seirus
filed a Request for Reexamination of the D’093 Patent with the United
parte reexamination on May 21, 2018, and Columbia has petitioned the
and the testimony of both its putative designer and its CEO,
same.”
Case: 18-1329 Document: 37 Page: 17 Filed: 09/18/2018
35 U.S.C. § 289.
jury that the burden shifted to Seirus to prove a lesser profit after
Columbia established its prima facie case on the total profit for
present evidence from which the jury could allocate profits to an article
any issue, the judge or the jury should determine remedies pursuant to
35 U.S.C. § 289.
(Appx4.)
(Appx2099.)
gloves:
Notably, these figures from the D’093 Patent show that the
Seirus. (Appx3214.)
“[w]hen you see any horizon, the road or the sand or down in the desert,
those ripples that kind of blur your vision, just kind of waves of heat.”
(Appx3062.)
liners, socks, and hats—that are made entirely from HeatWave fabric
(Appx6064.)
products are gloves, primarily ski gloves, that are designed with the
benefit. (Appx6061.)
purchase labels, hang tags, and more. (Op. cit., Appx6138-6166.) The
U.S., and either forwards them through retail channels or sells them on
its website.
For some of its products, Seirus buys specialty parts from separate
suppliers and sends those parts to the manufacturer. Seirus then pays
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10
separately for the specialty parts and the invoiced “black box” price for
specialty part. Seirus buys that fabric in large rolls from Ventex in
South Korea, and sends them to its Chinese manufacturers, who use it
the finished good, including any other parts it supplies, combined with
products have more than one such specialty part. But all Seirus
manufacturer cuts and stitches the product together, and adds point-of-
sale marketing and labels to create the final product. (Appx5471; e.g.,
form, and stitch the HeatWave product into a liner in the shape of the
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11
hand or mitt, then combine the liner with an outer shell and other
12
13
The prominent
HeatWave hangtags
imported finished
products are
illustrative.
(Appx5471.)
The word
“HeatWave” appears
Out” with an arrow directing the consumer to view the glove feature
14
the wavy line design and the HeatWave name with the function and
(Appx2886-2893.)
D’093 Patent, and the district court entered a final judgment dismissing
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15
remedies.
2016, the Supreme Court issued its decision in Samsung Elecs. Co. v.
product rather than the final end product as sold to the consumer. Id.
16
reports. (Appx5890.)
including contracts with its foreign manufacturers and true cost data of
August 1, 2017. (Appx5895.) Columbia timely served its reports and all
further delay the trial. (Appx6167 & Dkts. 176, 210.) Seirus produced
the district court’s order and waited until four working days before trial
17
measured only by the ratio of the raw material cost (“when it leaves
Korea but before it gets to China,” (Appx3561)) to all other costs that go
fabric into components of gloves and other finished products made only
cost of the glove is the cost of the raw, HeatWave fabric purchased at
Ventex’s shipping dock, Ms. Distler apportioned 10% of the profit to this
because: “That’s the lowest cost I can get to.” (Appx3566.) She
18
The entire financial support for Ms. Distler’s opinion was a Seirus
ever taken.
products imported by Seirus. That is because Seirus does not track the
which includes many intangibles, like labor, that are not “components”
with this “black box” manufacturing cost, Seirus and Ms. Distler were
1As explained below, intangibles are not “components” and, thus, are
not considered under a Samsung analysis.
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19
3573.) The remainder of the profit from the sales of these products was
opined that Seirus’s total profits from the sales of all products made
assumed that the relevant “article of manufacture” was the hat, sock,
analysis on glove liners, socks, and hats made entirely from HeatWave
fabric and unitary gloves (gloves that could not be disassembled to any
20
component of the finished product, including the liner made from the
with the limited data Seirus chose to make available and ignoring the
profit” allocable to the HeatWave fabric of not less than $1.97 million.
(Appx3851-3852.)
The jury heard all of this evidence, rejected Seirus’s theory and
21
matter of law on the damages issue, and the district court denied the
motion.
infringes the D’093 Design Patent. There was no genuine dispute that
appearance. Seirus’s defenses that it placed its logo all over the
entirely from the HeatWave fabric, and are thus “single component”
22
Even under the four-factor DOJ test2 for determining the “article
the jury found that the relevant “article of manufacture” was the glove
lining made from HeatWave fabric alone, the profits attributable to that
fabric were in fact the $3 million in profits that Seirus earned from
virtually the exclusive marketing focus for the gloves and thus
properly placed the burden on Seirus to prove that its profits earned as
2 On Seirus’s request, the district court instructed the jury to use a four-
factor test for determining the relevant article of manufacture that was
proposed by the Department of Justice as amicus in Samsung. See
Brief for the United States as Amicus Curiae Supporting Neither Party,
Samsung Elecs. Co. v. Apple Inc., 137 S. Ct. 429 (2016), 2016 U.S. S. Ct.
Briefs LEXIS 2322 * (S. Ct. June 8, 2016) (“DOJ Br.”).
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23
a result of its infringement were less than the profits it earned selling
in this respect, because Seirus failed to satisfy even the lesser burden of
and failed to produce competent evidence from which the profits for any
by the judge, not a jury. Columbia requested a bench trial, and Seirus
does not have a right to a jury trial on issues relating to the equitable
ARGUMENT
any other case. Unidynamics Corp. v. Automatic Prods. Int’l, 157 F.3d
1311, 1324-25 (Fed. Cir. 1998). This Court reviews a grant of summary
judgment under the law of the regional circuit. Mortg. Grader, Inc. v.
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24
First Choice Loan Serv., 811 F.3d 1314, 1323-24 (Fed. Cir. 2016). In the
material fact and whether the district court correctly applied the
observer “is deemed to view the differences between the patented design
and the accused product in the context of the prior art.” Egyptian
Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 676 (Fed. Cir. 2008). The
accused design does not have to be “identical to the patented design” for
whether the effect of the whole design [is] substantially the same,” and
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25
Payless Shoesource, Inc. v. Reebok Int’l Ltd., 998 F.2d 985, 990-91 (Fed.
claimed design. For example, Figure 2 from the D’093 Patent fits
to the prior art, coupled with the virtual identity of the design of the
26
(Appx5755; Appx5820-5821.)
dozen prior art references and found none to raise a genuine dispute
27
(a series of ridges and valleys) to divert body heat and moisture trapped
very different in wave amplitude and frequency from both the D’093
of the claim, and limits the field of prior art to that which performs that
(Fed. Cir. 2015) is instructive. The Ethicon design patents recited, “The
28
determines the relevant prior art. In this case, that scope is defined by
29
accused design.
This comparison against the most similar drawing Seirus can find
Seirus focuses on details and argues there are differences in the width
Inc. v. Int’l Trade Com’n, 598 F.3d 1294, 1303 (Fed. Cir. 2010). “[M]inor
30
F.2d at 991.
in turn below.
repeatedly inserted its trade name or logo onto the infringing design.
labeling.” L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1126
Courts throughout the country are in accord. See Torspo Hockey Int’l,
Inc. v. Kor Hockey Ltd., 491 F. Supp. 2d 871, 881 (D. Minn. 2007);
Case: 18-1329 Document: 37 Page: 46 Filed: 09/18/2018
31
5023, (N.D. Ill. Jan. 15, 1988); Jack Schwartz Shoes v. Skechers U.S.A.,
Sept. 9, 2002); Rockport Co., Inc. v. Deer Stags, Inc., 65 F. Supp. 2d 189,
195 (S.D.N.Y. 1999). Repeating the trade name certainly does not make
it less infringing.
Moreover, Seirus admitted that the reasons the logos were added
design elements.
32
Which is which? The left figure is the D’093; the right is the
Court, it has oriented all depictions of its fabric in its brief so that the
wavy lines run vertically to the page, while arranging depictions of the
asserts that its vertical orientation was intended to create the image of
Case: 18-1329 Document: 37 Page: 48 Filed: 09/18/2018
33
“a warm wind in early fall, while the patented design conveys the
39.)
discovery and at trial, where its CEO explained that the Seirus fabric
was designed to evoke the same image that the D’093 inventor, Zach
When you see any horizon, the road or the sand or down
in the desert, those ripples that kind of blur your vision,
just kind of waves of heat.
34
confirm that Seirus markets its HeatWave fabric design to the public
35
Samsung Elecs. Co., 932 F. Supp. 2d 1076, 1086 (N.D. Cal. 2013).
Seirus has failed to cite any contrary authority. Fabric can be oriented
36
(Appx192.)
in this case is the retail consumer—the buyer and ultimate user—of the
gloves and other products that Seirus makes with the patented design.
(Appx4270-4271.) While Seirus admits that it sells its gloves and other
that because it “sells the majority of its accused products ... to retail
37
ago, when it ruled that the ordinary observer is not the intervening
designs have given novel appearances.” Id. at 528. The Court held
observations “by ordinary observers, [in other words] by those who buy
and use” the article bearing the design in question. Id. (emphasis
customers, would “destroy all the protection which the act of Congress
38
product.” Goodyear Tire & Rubber Co. v. Hercules Tire & Rubber Co.,
Inc., 162 F.3d 1113, 1117 (Fed. Cir. 1998) (emphasis added).
incorporated the shroud into spray bottles that were, in turn, filled with
user. It was merely incidental to the end user’s decision to buy the
end user. See figures on pages 11-15 & 35, supra. This case is just like
39
who buy and use” and are the “principal purchasers of the articles to
which designs have given novel appearances.” 81 U.S. at 528. For each
III. The Jury’s Verdict Was Not Excessive and Was Supported
by Substantial Evidence on Multiple Grounds.
be attributed to that article are issues of fact. The district court gave
case, addressed below. As seen below, the jury had multiple grounds on
which to disgorge Seirus of all profits made from selling its HeatWave
40
Columbia on each alternate basis, this Court should affirm the jury’s
41
former, disgorgement applies to the profits from the entire product. Id.
product, and modern kitchen ovens and smartphones are both multi-
*10 (N.D. Cal. Oct. 22, 2017), the mere fact that an infringing product
and the like are not “components,” and should not be allocated any
profits in the analysis. Samsung, 137 S. Ct. at 435. Even dinner plates
have intangible input costs, yet the Court made clear that 100% of the
42
products.
With this guidance, Seirus’s glove liners, hats, and socks made
dinner plate.
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43
In contrast, the jury heard evidence that Seirus has made and
Torche, which has an inner glove, a separable outer glove, and a battery
products. (Appx3799.)
The jury had substantial evidence directly from Seirus to find that
44
the district court instructed, “In weighing these factors, your objective
the Seirus gloves as sold to the consumer are the relevant article of
manufacture.6
design is intended to cover, and how the design relates to the product as
applied, MPEP 1503.02, but the design need not be, and seldom is, co-
6 We do not analyze separately the DOJ factors for those products that
are made 100% or “entirely” from HeatWave fabric. Columbia submits
there is no plausible argument under which such products as sold to the
consumer are not the relevant article of manufacture.
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45
261, 268 (C.C.P.A. 1980). The figures in the D’093 Patent show the
Seirus argues that the patent claims a fabric printed with the
contrary. At trial, the patent’s inventor, Zach Snyder, testified that the
the fabric we’re talking about here. It’s the actual heat-reflective
how Seirus has used it. (Appx2104-2105.) The jury had substantial
46
in the DOJ lexicon includes not just the aesthetic appearance but also
reject such limitations, and this second DOJ factor properly rejects such
limitations.
holding in Dobson v. Hartford Carpet Co., 114 U.S. 439, 444 (1885), that
damages “were ‘due to’ the design rather than other aspects” of the
product. Samsung, 137 S. Ct. at 433. “Section 289 makes the infringer
liable for all the profits it received from sales of that article, even if the
47
injury to the patentee when it made the design patent infringer liable
for “the total profit made by him from the manufacture or sale ... of the
been applied.” Samsung, 137 S. Ct. at 433 (quoting S. Rep. No. 1966,
49th Cong., 1st Sess., 1-2 (1886); H.R. Rep. No. 1966, 49th Cong., 1st
Sess. 1-2 (1886)). “Section 289 does not permit apportionment based on
the single most prominent feature of the glove as sold to the consumer.
its prominence as the single most important design feature of the end
product. The jury heard testimony that the shiny silver lining makes
gloves come in black. Most don’t come in a lot of colors. And part of the
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reason why Columbia uses a silver lining is that it—you can see it in
that wall of black gloves. And so I still think that this [HeatWave
testified, “[M]ost gloves are black... . Most gloves are either going to
have five fingers or be mittens. There is not a lot of variety you can do
stand out a little bit, it’s a really big deal,” (Appx2102), and can be the
2103.) Even in Seirus’s gloves where the lining is on the inside, Seirus
49
Appx6040-6060; Appx6067;
Appx6124-6127.), not
from any angle they liked. When physical products are examined, the
50
into its products, and then amplified the presentation of the design
through marketing that emphasized the design, the jury had sufficient
Bros., 234 F. 79, 83 (2d Cir. 1916) (“Piano II”). This factor focuses on
“served a function distinct from that of the case.” (DOJ Br., p. 20 (citing
Piano II at 81-82).)
51
perform one essential function: keep the user’s hands warm. The key,
the glove to perform this function. While other pieces of the glove
support the HeatWave fabric and supplement this function, without the
Seirus’s own advertising confirms that the design element and the
whole (Appx6078), and the jury heard testimony that the gloves cannot
be disassembled (a fact the jurors could confirm for themselves), nor can
the function of the HeatWave fabric, that does not make them
conceptually distinct from the end products when they exist only to be
assembled into a glove and are all being used cooperatively for the
52
The jury thus had ample evidence to conclude that the ski gloves
and their HeatWave fabric liners providing warmth and comfort are not
conceptually distinct.
for Seirus in rolls, Seirus directs that the HeatWave fabric be re-
into ski gloves as the dominant design and functional attribute of the
fabric insert at the seams, and all layers are sewn together at the cuff in
a way that cannot be disturbed without the use of tools and destruction
of the glove.
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53
54
management lining in any of these gloves. The jury was able to handle
the gloves themselves, and had ample basis to conclude that the
whole.
For reasons above, the jury had substantial evidence from which
to conclude that, even if it did not find that all of the infringing products
been applied” under the instructions provided to the jury. Cf. 35 U.S.C.
§ 289.
Seirus’s total profits on the ski gloves even were the HeatWave glove
55
attributable to the HeatWave fabric were the profits that Seirus earned
v. Clark, 111 U.S. 120, 121 (1884). Thus, “where the entire commercial
owner of the patent will be entitled to recover from the infringer the
982 (3rd Cir. 1913). “[T]his rule applies although the mechanism
component where the patented component “drove demand for the entire
product.” VirnetX, Inc. v. Cisco Sys., 767 F.3d 1308, 1329 (Fed. Cir.
2014); see also Callaghan v. Myers, 128 U.S. 617, 666 (1888) (the “value”
of the item sold to the public derives from the infringement); Elizabeth
v. Pavement Co., 97 U.S. 126, 139 (1877) (“when the entire profit of [an]
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56
... undertaking results from the use of the invention, the patentee will
RS, 2013 WL 3786633, at *10 (N.D. Cal. July 18, 2013); Fonar Corp. v.
GE, 107 F.3d 1543, 1552-53 (Fed. Cir. 1997). Thus, where, as here, the
benefits of ... using the invention,” Bose Corp. v. JBL, Inc., 274 F.3d
1354, 1361 (Fed. Cir. 2001), or that its marketing literature emphasized
57
value of the HeatWave fabric, and the profits attributable to the sale of
HeatWave fabric are thus the total sales from HeatWave products.
application of the wavy line design, the tag says “Capture Your Body’s
Heat – Look Inside” with an arrow pointing the consumer to where the
58
(referencing Appx5615).)
Case: 18-1329 Document: 37 Page: 74 Filed: 09/18/2018
59
the sales of the HeatWave product line and “substantially creates the
value of the component parts” of those gloves, see e.g., VirnetX, 767 F.3d
at 1326, the jury had sufficient evidence to attribute the total profits
IV. The Court Correctly Allocated the Burdens of Proof for the
Recovery of “Total Profit” Under 35 U.S.C. § 289.
the right to recover the infringer’s “total profit” received from the
manufacture” that the infringer “sells or exposes for sale” to the public.
60
design” benefits or to show that use of the design “caused” any injury to
Damages, such as those available under 35 U.S.C. § 284 for both design
causal injury. Nike Inc. v. Wal-Mart Stores, Inc., 138 F.3d 1437, 1448
Roebuck and Co., 496 F. Supp. 476, 495, 498 (D. Minn. 1980); Schnadig
v. Gaines Mfg. Co., 620 F.2d 1166 at 1166, 1171–75 (6th Cir. 1980).
61
62
meeting this burden, the patent owner has satisfied a prima facie case
unsupported arguments, Section 289 dictates the specific burden for the
patentee: the patentee must prove that the infringer sold or exposed for
the infringing design. The district court clearly and correctly instructed
63
289 has always been interpreted to require the wrongdoer to carry the
n. 10, supra. The same principles logically apply equally, or with even
greater force, where the wrongdoer contends that its total profit should
the profit to be disgorged. The same principles that gave rise to the now
access to information about its products and their costs, and a purpose
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64
court has applied to the patent holder the burden of persuading the jury
deductions from its total profits, including a claim that the design is
market, is fair and sensible. Concrete Pipe & Prods. v. Constr. Laborers
Pension Trust, 508 U.S. 602, 626 (1993) (“Such was the rule at common
13Henry Hanger is the earliest case Columbia has been able to identify
addressing the burdens under Section 289 or its predecessor statute.
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65
associated with the design at issue.14 Michery v. Ford Motor Co., 650 F.
App’x. 338, 341 (9th Cir. 2016) (allocating burden to the defendant
Seirus asks this Court to apply rules of proof developed under the
procedures developed under section 289 and its predecessor statute that
are consistent with both statutory and common law rules for proof of
who are responsible for having blended the lawful with the unlawful,
and they must abide the consequences”) (citing Mawman v. Tegg, 2 Eng.
new rules.
66
the patentee’s prima facie proof of the gross profits received from sales
arising under the same statute and do not change because the jury
67
Seirus never met either prong of this initial burden of production, and
States. There are no rolls of fabric “on the dock” in Seirus’s gloves.
is imported and sold in the United States. In the case of the hats, socks,
and glove liners, it is transformed into a finished good. But even in the
case of the glove products, the HeatWave fabric is first transformed into
Seirus’s identification of the raw material fails to account for how the
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68
from which a jury could ascertain the profits for that article.
the HeatWave material at Ventex’s dock from all other costs (a “black
box” number). Seirus and Ms. Distler then used this ratio (without any
69
approach, Seirus has asserted that only 37-42% of the profits for a
70
information and failed to produce the costs for each of the raw
Rocket Jewelry Box, Inc. v. Quality Int’l Packaging, Ltd., 250 F. Supp.
case), vacated in part on other grounds, 90 F. App’x 543 (Fed. Cir. 2004).
71
profits—should be tried to the bench and not the jury. (Dkt. 248.) The
district court denied that request. Should this Court remand the
that all issues concerning the application of Section 289 be tried by the
bench.
Terry, 494 U.S. 558, 570 (1990) (“we have characterized damages as
Baby Prods., LLC, 137 S. Ct. 954, 964 (2017) (accounting of profits in
The Supreme Court has held that this doctrine applies where a
86 U.S. 611, 617-618 (1874); see also Burdell v. Denig, 92 U.S. 716, 720
(1876) (same). Packet and Burdell were decided under the predecessor
Case: 18-1329 Document: 37 Page: 87 Filed: 09/18/2018
72
§ 289 after that statute. Samsung, 137 S. Ct. at 433; DOJ Br., pp. 12-
13.
Ins. Co. v. Pugh, 821 F.2d 1352, 1356 (9th Cir. 1987) (“equitable
remedies are not triable of right by a jury”). Instead, all issues must be
resolved by the court. See, e.g., SEC v. Jasper, 678 F.3d 1116, 1130-31
(9th Cir. 2012) (holding there is “no right to have a jury find all
Oxley Act); Am. Calcar, Inc. v. Am. Honda Motor Co., 651 F.3d 1318,
Teva Pharms. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 835 (2015).
Court should order that all issues related to Columbia’s claim for
Case: 18-1329 Document: 37 Page: 88 Filed: 09/18/2018
73
Overview.
body heat back to the wearer. Prior to Mr. Blackford’s invention, that
A critical issue at trial was whether the prior art taught the 30-
74
70%.
the 30-70% coverage range critical and unexpected. For example, the
jury heard that conventional knowledge was that covering fabric with
the more that was covered, the less breathable it would be. The jury
that the coverage ratio has a linear relationship with respect to heat
The jury also heard that none of the other asserted prior art
judgment, establishing as the law of the case prior to trial, that neither
75
on fabric, but the coverage ratio was based having enough coverage to
resist abrasion when the garment is pulled over other clothing (see
expert was asked whether Mr. Blackford invented “the idea of 30- to 70-
wanted to be.” (Id.) However the jury might have understood that
confusing line of inquiry, it did not negate the inventive aspects of a 30-
76
testimony into the trial. This was not, as Seirus would offer, a “minor
blip in a 9-day trial.” It was days in the making. Seirus first proposed
opinions well into the trial, and Columbia had moved that such new,
court heard oral argument. Seirus convinced the court that the new
high schooler could do.” (Appx3203.) Seirus only disclosed to the judge
that the number fell somewhere in the 5-40% range. Id. (emphasis
added.)
But that, also, is not true. Dr. Block’s 36% opinion was never disclosed
before Dr. Block offered it from the stand, though Seirus knew it would
offer this new opinion (Seirus certainly didn’t intend to offer the true
77
understand what a unit cell is” (Appx3330), and “don’t know what
circles and squares that were “wrong” (Appx3332), and were “wrong” to
suggest that the coverage ratio was only 18%, and not 36%.
(Appx3334.) Dr. Block never admitted before the jury what Seirus
64.) The coverage ratio was the focus of the case. Seirus conceded
that Dr. Block’s opinion relied on only high school level math—thus
Seirus’s entire legal team and its expert reasonably must have known
that the testimony was false. Moreover, Seirus chose not to disclose
these new opinions prior to poisoning the well with the expert on the
78
Seirus repeats throughout its brief that the jury was presumed to
have believed its evidence when rendering its verdict in Seirus’s favor.
(Seirus-Br. pp. 56, 57, 58, 60, 61.) Columbia agrees that the jury was
swayed by Seirus’s presentation of the facts. But since Seirus put false
evidence before the jury, the jury is presumed to have relied on that
false evidence in its deliberations. For this reason, this Court has made
clear that Courts should “not ... tr[y] to evaluate [the effect of false
F.2d 295, 299 (Fed. Cir. 1993). Instead, a new trial is required when a
Seirus wants this Court to believe that the jury only believed all of
the other evidence that it put before the jury, speculating that “[t]he
jury considered the issue and found invalidity anyway, crediting other,
independent evidence.” (Seirus-Br. pp. 65, 67) But Seirus has no idea
what evidence the jury believed, which is why this Court rejects such an
Case: 18-1329 Document: 37 Page: 94 Filed: 09/18/2018
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approach. Fraige, 996 F.2d at 297 (rejecting the theory that “there were
M. R. Co. v. Moquin, 283 U.S. 520, 521-22 (1931). Instead, when false
required.
evidence goes to the heart of the critical issues in the case, prejudice is
presumed. In re M/V Peacock, 809 F.2d 1403, 1405 (9th Cir. 1987).
of Civil Procedure (Rules 26(a)(2)(B)(i) & (iii); and 37(c)(1)), the Federal
Merrell Dow Pharms, Inc., 509 U.S. 579 (1993)). Nonetheless, Seirus
Case: 18-1329 Document: 37 Page: 95 Filed: 09/18/2018
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argues that this Court should ignore those violations and allow a jury
cross-examine a witness about it, any jury verdict should stand. Such a
principal purpose of the Federal Rules—and the bar would take note.
Beyond Columbia’s due process right to a fair trial in this case, the
Court should not reward such trial tactics as a matter of public policy.
asked for two jury instructions, and the judge gave neither. Instead, all
range was provided by none other than Dr. Block, which was given with
specific 36% coverage, Dr. Block opined for the jury, over Columbia’s
Case: 18-1329 Document: 37 Page: 96 Filed: 09/18/2018
81
Great Lakes Chem. Corp., 441 F.3d 991 (Fed. Cir. 2006) (range of 150 to
the law in the context of the disputes in the case. (Appx1567-68.) Jury
33).) Because Seirus has failed to identify a single error with the only
disputed jury instruction at issue in this appeal, this Court should hold
that it was error to deny proposed Jury Instruction 33, for no equivalent
82
artisan would “understand the range in the prior art to disclose the
point that Seirus again does not dispute. (See Seirus-Br. p. 63.)
instructing only that “each and every limitation of the claim must be
given Dr. Block’s false testimony and improper legal opinions, this
The district court in this case did not have the benefit of this
Court’s decision In re Micron Inc., 875 F.3d. 1091 (Fed. Cir. 2017).
83
determination that Seirus waived its venue defense, and remand with
CONCLUSION
For the reasons explained above, this Court should affirm the
Patent, affirm the jury’s damages award, remand for a new trial on the
’270 utility patent, and direct that the case be transferred back to the
District of Oregon.
Respectfully submitted,
84
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