Nos.

2018-1329, -1331, -1728

__________________________________________________________________

United States Court Of Appeals

for the Federal Circuit
COLUMBIA SPORTSWEAR NORTH AMERICA, INC.,
Plaintiff- Appellant,
v.

SEIRUS INNOVATIVE ACCESSORIES, INC.,

Defendant- Cross-Appellant.
__________________________________________________________________
APPEALS FROM THE UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF
CALIFORNIA, CASE NO. 3:17-CV-1781, DISTRICT JUDGE MARCO A. HERNANDEZ
__________________________________________________________________
CROSS-APPELLANT’S REPLY BRIEF
__________________________________________________________________

Christopher S. Marchese
Seth M. Sproul
Craig E. Countryman
Oliver J. Richards
Tucker N. Terhufen
Fish & Richardson P.C.
12390 El Camino Real
San Diego, CA 92130
(858) 678-5070

November 2, 2018
 CERTIFICATE OF INTEREST

1. The full name of every party represented by me is: Seirus Innovative

Accessories, Inc.

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: Seirus Innovative Accessories,

Inc.

3. All parent corporations and any publicly held companies that own 10

percent or more of the stock of the party represented by me are: None.

4. The names of all law firms and the partners or associates that appeared

for the party now represented by me in the trial court or agency or are expected to

appear in this Court (and who have not entered an appearance in this Court) are:

Fish & Richardson P.C.: Michael A. Amon, Garrett K. Sakimae; Markowitz Herbold
PC: Renee Rothauge; Troutman Sanders LLC: Eric M. Jaegers, Matthew D.
Murphey, Alison A. Grounds, Paul E. McGowan, Anup M. Shah, Jasmine C. Hites

5. The title and number of any case known to counsel to be pending in this

or any other court or agency that will directly affect or be directly affected by this

court’s decision in the pending appeal:

Columbia Sportswear North America, Inc., et al. v. Ventex Co., Ltd, et al., Case No. 3:17-cv-
623 (D. Or.); Ventex Co., Ltd. v. Columbia Sportswear North America, Inc., IPR2017-00789
(P.T.A.B.); Ex-Parte Reexamination Control No. 90/014,113.

Dated: November 2, 2018 /s/ Craig E. Countryman

Craig E. Countryman

i
 TABLE OF CONTENTS

Page

INTRODUCTION .......................................................................................................................... 1
Argument .................................................................................................................................... 2
I. The Summary Judgment of Infringement Should Be
Reversed. ............................................................................................................. 2
A. A Jury Could Reasonably Find the Ordinary
Observer is More Sophisticated than Columbia
Proposes. ................................................................................................. 2
B. A Jury Could Reasonably Find that Minor
Differences in Overall Appearance Support Non-
infringement Given the Close Prior Art. ............................................ 4
C. A Jury Could Find No Substantial Similarity,
Especially Given the Prior Art and the Ordinary
Observer’s Sophistication. .................................................................... 6
II. The HeatWave Fabric Is The Appropriate Article of
Manufacture. ..................................................................................................... 12
A. The Accused Products All Have Multiple
Components. ......................................................................................... 12
B. The Solicitor General’s Test Shows the Fabric is
the Article. ............................................................................................. 13
C. Columbia Cannot Rely on the Entire Market
Value Rule. ............................................................................................ 15
III. At Minimum, a New Jury Trial is Required on Damages.......................... 17
A. The District Court Misallocated the Burden of
Persuasion Regarding the Article of Manufacture. ......................... 17
B. The Error on the Burden of Persuasion
Prejudiced Seirus. ................................................................................. 22
C. There is a Right to Jury Trial on § 289 Damages. ........................... 25

ii
 TABLE OF CONTENTS (continued)
Page
Conclusion ................................................................................................................................ 28
CERTIFICATE OF SERVICE AND FILING .................................................................................. 1
CERTIFICATE OF COMPLIANCE ................................................................................................ 2

iii
 TABLE OF AUTHORITIES
Page(s)
Cases
In re AI Realty Mktg. of New York, Inc.,
293 B.R. 586 (Bankr. S.D.N.Y. 2003) ............................................................................. 19
Apple Inc. v. Samsung Elecs. Co. Ltd.,
2017 WL 4776443 (N.D. Cal. Oct. 22, 2017)................................................................ 18
Apple, Inc. v. Samsung Elecs. Co.,
932 F. Supp. 2d 1076 (N.D. Cal. 2013) ....................................................................passim
Arctic Cat Inc. v. Bombardier Recreational Prods., Inc.,
876 F.3d 1350 (Fed. Cir. 2017) ................................................................................. 22, 23
Arminak and Assocs. v. Saint-Gobain Calmar, Inc.,
501 F.3d 1314 (Fed Cir. 2007) .......................................................................................2, 3
Bergstrom v. Sears, Roebuck and Co.,
496 F. Supp. 476 (D. Minn. 1980) .................................................................................. 19
In re Borden,
90 F.3d 1570 (Fed. Cir. 1996) ............................................................................................ 5
Braun Inc. v. Dynamics Corp. of Am.,
975 F.2d 815 (Fed. Cir. 1992) .......................................................................................... 11
Burdell v. Denig,
92 U.S. 716 (1875) ............................................................................................................. 26
Bush & Lane Piano Co. v. Becker Bros.,
222 F. 902 (2d Cir. 1915) .................................................................................................. 24
Chauffeurs v. Terry,
494 U.S. 558 (1990) ...........................................................................................................25
Contessa Food Prods., Inc. v. Conagra, Inc.,
282 F.3d 1370 (Fed. Cir. 2002) .......................................................................................... 6
Crocs, Inc. v. Int’l Trade Comm’n,
598 F.3d 1294 (Fed. Cir. 2010) .......................................................................................... 5

iv
Dairy Queen, Inc. v. Wood,
369 U.S. 469 (1962) ...........................................................................................................27
Egyptian Goddess, Inc. v. Swisa, Inc.,
543 F.3d 665 (Fed. Cir. 2008) (en banc) ............................................................................. 4
Goodyear Tire & Rubber Co. v. Hercules Tire & Rubber Co., Inc.,
162 F.3d 1113 (Fed. Cir. 1998) .......................................................................................... 2
Gordon v. New York City Bd. of Educ.,
232 F.3d 111 (2d Cir. 2000) ............................................................................................. 22
Gorham Co. v. White,
81 U.S. 511 (1871) ...........................................................................................................2, 3
Henry Hanger & Display Fixture Corp. of Am. v. Sel-O-Rak Corp.,
270 F.2d 635 (5th Cir. 1959) ............................................................................................ 18
Kennedy v. Lakso Co., Inc.,
414 F.2d 1249 (3d Cir. 1969) ........................................................................................... 27
L.A. Gear, Inc. v. Thom McAn Shoe Co.,
988 F.2d 1117 (Fed. Cir. 1993) .......................................................................................... 6
Lee v. Dayton-Hudson Corp.,
838 F.2d 1186 (Fed. Cir. 1988) ........................................................................... 13, 14, 17
Markman v. Westview Insts., Inc.,
517 U.S. 370 (1996) ...........................................................................................................25
Mowry v. Whitney,
81 U.S. 620 (1871) ...................................................................................................... 21, 26
Nordock, Inc. v. Systems, Inc.,
2017 WL 5633114 (E.D. Wisc. Nov. 21, 2017) ....................................................... 1, 18
OddzOn Prods., Inc. v. Just Toys, Inc.,
122 F.3d 1396 (Fed. Cir. 1997) .......................................................................................... 6
Packet Co. v. Sickles,
86 U.S. 611 (1874) ............................................................................................................. 26
Petrella v. MGM,
134 S. Ct. 1962 (2014) ................................................................................................ 26, 27

v
Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc.,
904 F.3d 965 (Fed. Cir. 2018) ................................................................................... 16, 17
Reebok Int’l, Ltd. v. Marnatech Enterprises, Inc.,
970 F.2d 552 (9th Cir. 1992) ............................................................................................ 26
Robert Bosch, LLC v. Pylon Mfg. Corp.,
719 F.3d 1305 (Fed. Cir. 2013) (en banc) ......................................................................... 27
Ross v. Plastic Playthings, Inc.,
138 F. Supp. 887 (S.D.N.Y. 1956) ........................................................................... 26, 27
S.E.C. v. Bilzerian,
29 F.3d 689 (D.C. Cir. 1994) ........................................................................................... 20
S.E.C. v. Halek,
537 F. App’x 576 (5th Cir. 2013) .................................................................................... 20
S.E.C. v. Platforms Wireless Int’l Corp.,
617 F.3d 1072 (9th Cir. 2010) .......................................................................................... 20
Samsung Elecs. Co., Ltd. v. Apple Inc.,
137 S. Ct. 429 (2016) .................................................................................................. 16, 19
SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC,
137 S. Ct. 954 (2017) .........................................................................................................26
Sec. & Exch. Comm’n v. Whittemore,
744 F. Supp. 2d 1 (D.D.C. 2010) .................................................................................... 20
SEC v. First City Financial Corp.,
890 F.2d 1215 (D.C. Cir. 1989) ................................................................................ 19, 20
Sid & Marty Krofft Television v. McDonald’s Corp.,
562 F. 2d 1157 (9th Cir. 1977) ......................................................................................... 27
Stevison by Collins v. Enid Health Sys., Inc.,
920 F.2d 710 (10th Cir. 1990) .......................................................................................... 22
Swofford v. B&W, Inc.,
336 F.2d 406 (5th Cir. 1964) ............................................................................................ 27
Tilghman v. Proctor,
125 U.S. 136 (1888) ...........................................................................................................18

vi
Statutes
35 U.S.C. § 74 (1946) .............................................................................................................. 26
16 Stat. 198, 206, § 55 (1870) ................................................................................................. 16
24 Stat. 387, § 1 (1887) ........................................................................................................... 26
Other Authorities
9C Charles Alan Wright & Arthur R. Miller, FEDERAL PRACTICE AND
PROCEDURE, § 2312 (3d ed. 2008) .................................................................................. 28
H.R. REP. NO. 49-1966 (1886) .............................................................................................. 18
Jason J. DuMont, The Origins of American Design Patent Protection, 88 IND.
L.J. 837, 854 (2015) ........................................................................................................... 25
RESTATEMENT (THIRD) OF RESTITUTION AND UNJUST ENRICHMENT § 4,
Cmt. .............................................................................................................................. 25, 26
RESTATMENT THIRD OF RESTITUTION AND UNJUST ENRICHMENT, § 51,
cmt. i (2011) ........................................................................................................................ 21
S. REP. NO. 49-206 (1886) ...................................................................................................... 18

vii
 INTRODUCTION

The summary judgment of infringement should be reversed. Summary

judgment may be granted only where no material facts are disputed. Here, the parties

disputed multiple material facts: the identity of the ordinary observer, the effect of

the prior art, and whether that ordinary observer would find the two designs

substantially similar. Columbia’s brief tells its side of the story, yet the question is not

whether a jury could credit Columbia’s position but whether the Court should take

infringement away from the jury altogether. A reasonable jury could resolve the

disputed facts in Seirus’s favor, making summary judgment inappropriate.

The damages award cannot stand either. The jury’s verdict was tainted by the

erroneous instruction shifting the burden of persuasion for determining the article of

manufacture to the defendant. A plaintiff bears the burden of persuasion on all

aspects of its case, including the substantive aspects of a profits claim. Seirus’s

opening brief demonstrated that the statutory text, legislative history, and history all

put the burden on the plaintiff. The only other courts to address this issue (Apple and

Nordock) agreed. Columbia does not cite any contrary case, and its discussion of the

burdens for disgorgement law would, at most, support shifting the burden on the

mathematical calculation of the defendant’s expenses, not the article of manufacture.

This Court thus should, at the very least, order a new jury trial on damages, and could

also constrain matters further by entering JMOL that the relevant article is the

HeatWave fabric.

1
 ARGUMENT

I. The Summary Judgment of Infringement Should Be Reversed.

A. A Jury Could Reasonably Find the Ordinary Observer is More
Sophisticated than Columbia Proposes.
The parties’ initial factual dispute is over the ordinary observer—a fact

“central” to “every design patent case.” Arminak and Assocs. v. Saint-Gobain Calmar, Inc.,

501 F.3d 1314, 1321 (Fed Cir. 2007). “[T]he focus is on the actual product that is

presented for purchase, and the ordinary purchaser of that product.” Goodyear Tire &

Rubber Co. v. Hercules Tire & Rubber Co., Inc., 162 F.3d 1113, 1117 (Fed. Cir. 1998). A

jury could credit Seirus’s Vice President, who showed ordinary purchasers are

“sophisticated commercial buyers” who are “more discerning than the average retail

consumer,” and that “only a small number” of retail customers buy products directly.

(Appx4296–4297 at ¶¶ 9–11.) Columbia may disagree, but Seirus’s evidence creates a

material factual dispute. Columbia does not defend summary judgment under Seirus’s

definition of the ordinary observer, so this dispute alone requires a new trial.

Columbia argues (at 37) that Gorham Co. v. White, 81 U.S. 511 (1871), created a

per se rule the ordinary observer is “not the intervening commercial reseller but the

retail consumer.” It does not. Gorham assesses infringement using “ordinary

observers,” who are the “principal purchasers of the articles to which designs have

given novel appearances,” i.e., the people who determine demand for, and thus the

value of, the design. Id. at 528. Their potential confusion is what we’re concerned

2
with. That leaves the factual question of who the “principal purchaser” is in a given

case. Seirus’s evidence permits a jury to infer the “large majority” of purchasers are

commercial customers. (Appx4296.) Gorham’s remarks on “experts,” like “a person

engaged in the manufacture or sale of articles,” id. at 527, prohibit using the craftsman

who sells his designs, not commercial customers who are the “principal purchaser.”

Arminak shows the observer isn’t always the retail customer. There, it was an

“industrial buyer for companies that purchase” a component with the design, not

“retail purchasers.” 501 F.3d at 1324. Retail customers didn’t buy the component, so

the industrial purchaser dictated demand. A jury could find the same here—

commercial purchasers buy almost all accused products, so their decisions dictate

demand for the design by controlling the options available to retail customers.

Columbia would (at 38) limit Arminak to situations where the article is a

component neither seen by nor important to retail customers. This misses the point.

Arminak illustrates the issue is a fact-specific, case-by-case inquiry. Anyway, Arminak

is similar to this case. Here, as there, the accused design appears on a component (the

fabric) that retail customers don’t purchase, and, which, in most cases, is not visible.

(Appx3151-3153; Appx3854; Appx2103.) The accused design doesn’t drive

demand—a Seirus product without the accused design sold 116,720 units, while a

comparable product with it sold 480 units. (Appx2313–2316, Appx3420–3422.) It is

irrelevant whether Seirus markets the fabric’s functionality, as that isn’t infringing.

3
 B. A Jury Could Reasonably Find that Minor Differences in Overall
Appearance Support Non-infringement Given the Close Prior Art.
Another disputed material fact is the effect of the prior art. “When the claimed

design is close to the prior art designs, small differences between the accused design

and the claimed design are likely to be important to the eye of the hypothetical

ordinary observer.” Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 676 (Fed. Cir.

2008) (en banc). A jury could find Blauer is “close” to Columbia’s patent—closer than

the accused design—and thus find “small” differences in the accused design show

non-infringement. Columbia has a different spin, but these facts are for a jury.

Blauer underscores that Seirus’s accused design did not take anything novel

from Columbia. Both Blauer (left) and Columbia’s patent (right) show uninterrupted,

horizontal waves of alternating color, where each wave has a uniform thickness:

(Appx4159, Appx11.) The only difference is that Columbia’s thicker waves are black

while Blauer’s thicker waves are light (like the accused products). The Patent Office

observed that “[t]he patterned material shown in FIG. 5 of Blauer et al. shows a

design for material that is substantially the same as the claimed design.” See Ex Parte

Reexamination, No. 90/014,113, Determination Ordering Reexamination at 3 (Oct.

10, 2018). A jury could agree and thus find the accused design is quite different.

4
 None of Columbia’s arguments justify taking these factual disputes from the

jury. Columbia tries (at 27–28) to exclude Blauer because it supposedly does not use a

“heat reflective material.” A jury could find otherwise. In re Borden, 90 F.3d 1570,

1576 (Fed. Cir. 1996) (“The question of what the prior art teaches is a question of

fact.”). Blauer uses an “acrylic urethane” covering a base layer, which a skilled artisan

would understand reflects heat. (Appx846–850; Appx3374, Appx3378; Appx3694-

3695; Appx3707-3708; Appx2681.) Even Columbia acknowledges (at 27) that

Blauer’s fabric “divert[s] body heat.” Moreover, Blauer relates to “fabric

constructions” for “gloves and other outer clothing that are designed for protection

against inclement weather,” (Appx4160 at 1:10–15), which are the same products

Columbia says infringe. Columbia’s damages theory assumes the gloves are the

relevant “article of manufacture,” so it cannot say Blauer’s glove design is irrelevant.

That the Patent Office thinks Blauer anticipates underscores its pertinence.

Considering Blauer is thus consistent with Columbia’s cases at 27–28 & n.3.

Columbia next erroneously compares (at 29–30) its patent with Blauer and a

modified version of the accused design. By altering the accused design to remove the

logo boxes (and add wavy lines in their place), rotate its orientation, and crop the

differences in wave thickness, Columbia violates the requirement that the fact-finder

consider the “overall effect” of the “patented design in its entirety.” Crocs, Inc. v. Int’l

Trade Comm’n, 598 F.3d 1294, 1303 (Fed. Cir. 2010). Regardless, it is for a jury to

compare the designs and resolve fact disputes about the similarities and differences.

5
 C. A Jury Could Find No Substantial Similarity, Especially Given the
Prior Art and the Ordinary Observer’s Sophistication.
A jury could find the differences between Columbia’s patent and the accused

design—i.e., the accused design’s interrupted waves, vertical orientation, and varying

thickness—would lead an ordinary observer to find non-infringement, especially given

the facts above. Columbia’s contrary arguments are, again, factual issues for a jury.

A Jury Could Find the Seirus Logo Boxes Are Ornamental

Features That Change the Overall Impression of the Design.
For starters, the jury could find the Seirus logo boxes change the overall

impression of the accused design by repeatedly interrupting the wave pattern, unlike

Columbia’s continuous waves. No case forbids considering ornamental logo boxes

that change the design’s overall impression. Such a rule would contradict the fact-

finder’s obligation to compare “the overall appearance” of the two designs, OddzOn

Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997), including “all

ornamental features visible at any time during the normal use of a product.” Contessa

Food Prods., Inc. v. Conagra, Inc., 282 F.3d 1370, 1381 (Fed. Cir. 2002).

Columbia relies (at 30–31) on L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d

1117 (Fed. Cir. 1993). But it never responds to our opening brief (at 28–29), which

showed that L.A. Gear’s dicta did not resolve the issue here—whether a fact-finder

can consider logo boxes that are ornamental, change the overall impression, and are

part of a product that is not a copy. A jury could find the first two facts in Seirus’s

favor, and the prior jury already found the third. (Appx5 (not willful); Appx3061.)

6
 Columbia’s cited district court cases (at 30–31) fare no better. They all

involved blatant knock-offs where the design was a nearly identical copy, and where

there was no suggestion the logo was ornamental or changed the overall impression of

the design. Some did not even involve an argument that a logo rendered the product

non-infringing, and all discuss the issue only in passing. Anyway, district courts can’t

override this Court’s instructions that the fact-finder must consider every ornamental

feature that changes the overall impression.

Columbia contests (at 31) whether the logo boxes impact the design, suggesting

they are only a “source identifier.” But although this is one reason Seirus includes

them, none of the cited testimony suggests this is their sole purpose, much less that

they have no impact on overall impression. (Appx6176–6184.) A jury could still

conclude the logo boxes do impact, and distinguish, the design.

Columbia concludes (at 31–32) with another erroneous comparison of the

patent to a modified version of the accused design. But even if the Court believes it is

inappropriate to consider the logo per se, the solution is not to analyze the accused

products by replacing the logo with more of the wavy lines (as Columbia does), but to

analyze the accused products as if the logo boxes were just blacked out rectangles:

7
Those boxes still interrupt the waves and impact the design’s overall impression, even

without the additional design elements in the logo. Columbia’s comparison (at 32)

also rotates the accused design 90 degrees, while obscuring the varying width of each

wave. A jury could reasonably reject these modifications too, as explained next.

A Jury Could Reasonably Determine the Designs Differ

Based on the Wave Orientation.
A jury could reasonably find the accused design is not substantially similar,

because almost all accused products have vertical waves, unlike the patent figures.

(Appx4295–4296; Appx11.) Although Columbia characterizes (at 32–33) Seirus’s

images of the vertical orientation as “sophistry,” they accurately show the products’

appearance, (Appx6061, Appx6065; Appx6058), and they are corroborated by

testimony from Seirus’s Vice President that “approximately 95% of [the accused]

products have Seirus’ accused design (and particularly the wavy lines) running

vertically along the length of the product to give this vertical orientation impression.”

(Appx4296 at ¶ 8.)

The difference is apparent even with a closer look at the images from p. 26 of

Columbia’s brief, with our annotations added:

8
(Appx12, Appx5820-5821.) The same difference is apparent when comparing Figure

2 of the patent with the accused product that Columbia shows at p. 35 of its brief:

(Appx11; Appx6061.)

Columbia’s contrary arguments (at 32–35) are, at most, factual disputes for a

jury. Columbia says (at 33) that, despite the difference in orientation, the accused

products and the patent were meant to convey the same image of warmth. But

infringement doesn’t turn on the designer’s intent, it turns on the actual overall

impressions they convey. A jury could find that, whatever their origins, the designs

convey different overall impressions, especially given the close prior art. Columbia

9
then points (at 33–35) to marketing materials and accused products that it says have

the same orientation as the patent. But the marketing materials are irrelevant—

Columbia did not accuse them of being infringing “heat reflective materials.”

Columbia’s other images of the accused products (at 34–35) don’t help it either.

The sock (at 34) includes mostly vertical waves (running up the leg and the top of the

foot), with a few horizontal waves on the side of the foot. (Appx5513.) A jury could

find that having multiple waves with different orientations of the same garment

differs from Columbia’s design, where all the waves have a single orientation. One

glove (at 35) has a completely vertical orientation. (Appx6061.) And although the

other glove (at 34) includes horizontal waves, (Appx6045), those waves still have the

opposite orientation as the logos, which a jury could find creates a unique impression.

Moreover, that glove is not representative of most of the accused products, ~95% of

which use the vertical orientation, (Appx4296 at ¶ 8), and thus does not support the

bulk of the summary judgment.

It is no answer for Columbia to cite (at 35–36) testimony that rotating the

accused products makes the design appear horizontal. The apples-to-apples

comparison above of the patent figures with accused products shows that when the

products are positioned the same way, the waves have a different orientation that

creates a different overall impression. No witness said otherwise. Regardless of

whether a jury might credit Columbia’s rotation argument, it could reasonably credit

Seirus’s view that the two designs differ when compared head-to-head.

10
 Finally, Columbia’s reliance on Apple, Inc. v. Samsung Elecs. Co., 932 F. Supp. 2d

1076 (N.D. Cal. 2013), is misplaced. The case doesn’t address infringement. Apple

held a patent showing the design in multiple orientations was not indefinite, because

the figures with “different orientations merely show[] that the particular orientation—

landscape or portrait, head-on or perspective—is not part of what is claimed.” Id. at

1086. Here, by contrast, the figures always show the same horizontal orientation (or,

at best, a diagonal orientation in part of Fig. 8) up and down the length of the

product, (Appx11–12), and never show a vertical orientation. So a jury could find

that orientation matters here and the accused products are not substantially similar.

A Jury Could Reasonably Find the Designs Differ Based on

the Accused Products’ Variable Wave Width.
Columbia does not address the third difference—uniform width waves in its

patent versus variable width waves in the accused design. Our opening brief (at 26–

27) showed a jury could find this variation significantly changes the design’s overall

impression, by causing the accused products to have silver lines running through them

that are absent from the patented design. (Appx4295.) A jury must consider “the

ornamental aspects of the design as a whole and not merely isolated portions of the

patented design,” Braun Inc. v. Dynamics Corp. of Am., 975 F.2d 815, 820 (Fed. Cir.

1992), and it could find this difference results in a different “design as a whole,”

despite Columbia’s use of modified images of “isolated portions.” The bottom line is

that many factual disputes preclude summary judgment.

11
II. The HeatWave Fabric Is The Appropriate Article of Manufacture.
Columbia’s damages demand in the new trial on infringement should be limited

by the fact that the relevant “article of manufacture” under § 289 is the HeatWave

fabric. The accused products all have multiple components, and, under the Solicitor

General’s test, the fabric is the relevant article. Columbia’s contrary arguments are all

legally insufficient, including its alternative argument on the entire market value rule.

A. The Accused Products All Have Multiple Components.

Columbia is wrong to suggest (at 40–43) that any accused products have only a

single component. A “component” is “a constituent part,” https://bit.ly/2PkeAnU,

or a “part or element of a larger whole.” See https://bit.ly/2OTA7EA. The accused

gloves have multiple parts—our opening brief (at 4–5, 32–34) lists over a dozen,

(Appx3154-3163; Appx3639; Appx3643-3646; Appx5396-5317), and even Columbia

acknowledges (at 11) the gloves have multiple “pieces.” It does not matter whether

the fabric performs “the overriding function of the glove,” because the glove still has

other, unrelated parts. Nor does it matter that the fabric “cannot be separated”

without “destroying the glove.” The same is true of microprocessors, which

Columbia acknowledges (at 42) are separate components.

The accused hats, socks, and liners also have multiple parts. They include not

only fabric but also separate stitching that holds them together. (Appx6221–6222;

Appx6135–6137.) Columbia acknowledges (at 10) they include stitching. Stitching is

a “part or element of a larger whole,” making these products multi-component.

12
 B. The Solicitor General’s Test Shows the Fabric is the Article.
1. The scope of the claimed design is determinative here and shows the

article is the fabric. The patent’s title and claim refer to a “material,” not an end-

product. (Appx10.) The figures have dotted lines that exclude the parts of the end-

product other than the material from the claim, (Appx11–13), confirming the article is

the material (fabric), not the whole product. The inventor’s testimony underscores

the article is something less than the end-product—he said the claimed article was the

“heat-reflective material” i.e., the “silver” foil attached to the fabric, not even the

entire fabric. (Appx2112–2114.) Columbia’s reference (at 45) to the fabric’s function

is irrelevant to claim scope, which excludes functional features. Lee v. Dayton-Hudson

Corp., 838 F.2d 1186, 1188 (Fed. Cir. 1988) (“Design patents do not and cannot

include claims to the structural or functional aspects of the article.”). Columbia’s

insistence that, for damages, the patent covers the end-product contradicts its

infringement argument (at 27–28) that the Court can consider only the material.

2. The accused design is not prominent in the accused products. The

accused gloves have many other components with different functions. (Appx2317;

Appx2320; Appx3156-3160.) Columbia’s witnesses confirmed consumers buy the

products for many reasons other than the accused design, (Appx1938–1939;

Appx2035–2037), and, in most products, it isn’t visible. (Appx5283–5287;

Appx2103.) Customers bought over 240 times more units of a product without the

accused design than the comparable one with it. (Appx2313–2316; Appx3420–3422.)

13
 Columbia’s arguments (at 46–50) are all legally insufficient. Columbia cannot

rely on the fabric’s functionality—a design patent can’t cover function, Lee, 838 F.2d

at 1188, and, if anything, the importance of warmth shows the design’s relative

unimportance. The glove’s functionality is “unaffected by the design,” which

“suggests that the ‘article’ should be the component embodying the design.” See 2016

WL 3194218, at *28. Nothing in § 289 or the Solicitor’s test prohibits using the fact

that non-design features drive demand to limit the article to the component with the

design. Columbia still gets the total profit (without apportionment) on the relevant

article, without overreaching to get profit on components unrelated to the design.

Columbia’s evidence on the aesthetics was insufficient. Its cited testimony on

why Columbia uses silver, (Appx3627), is irrelevant to the importance of the design in

Seirus’s products. Its inventor’s opinions about the design are, at most, unsupported

speculation about customer behavior, (Appx2102–2103), and conflict with the

objective evidence that a glove without the accused design was 240 times more

popular than a comparable one with it. (Appx3420–3422.) Columbia’s reliance on

hangtags is misplaced—they do not infringe. Anyway, the hangtags focus on the

fabric’s function, and their direction to “look inside” underscores the fabric with the

design is separate from the rest of the glove, making the fabric the relevant article.

3. Seirus’s products contain many other components with conceptually

distinct innovations that serve different functions. (Appx3154–3163; Appx2317,

Appx2320, Appx5749; Appx5296-5317.) The water-proof components, like Gore-

14
Tex, keeps hands dry. Zippers, cinches, bungee cords, and buckles ensure the glove

fits comfortably. Clips on the gloves keep the pair together when not in use. Some

gloves include a feature on the fingers that allows the user to operate her smartphone.

Even other components that provide warmth—like additional insulative layers—are

separate from the fabric. Columbia identifies no reason to leverage a design patent on

a “heat reflective material” into a damages claim on unrelated components. That the

fabric is “integrated” with the other components and can’t be separated doesn’t

change that they are different innovations with different functions.

4. The fabric can physically separate from the rest of the accused products

and is manufactured and sold separately. (Appx3151–3153, Appx3162, Appx3229,

Appx3854.) Columbia does not dispute these facts. Its discussion (at 54) about

“replac[ing]” the lining is not part of the Solicitor’s test. The fabric is the article, and

Columbia shouldn’t get a windfall on components unrelated to its design.

C. Columbia Cannot Rely on the Entire Market Value Rule.

The Court should reject Columbia’s suggestion (at 54–59) that it could affirm

the damages award under the entire market value rule even if the relevant article were

the fabric. The jury didn’t find the entire market value rule applies to the design

patent. Columbia never articulated this theory to the jury, the court refused to give

Columbia’s instruction on it, (cf. Appx1523 (alternative 3); Appx4222–4223), and the

final instructions did not reference the rule as a basis for § 289 damages, much less

explain the prerequisites for applying it to the accused design. (Appx4224.)

15
 What’s more, the entire market value rule cannot be used under § 289. A § 289

damages analysis involves only “two steps”—(1) identifying the relevant “article of

manufacture,” and (2) “calculat[ing] the infringer’s total profit made on that article of

manufacture.” Samsung Elecs. Co., Ltd. v. Apple Inc., 137 S. Ct. 429, 434 (2016).

Neither the statute nor Samsung let the patentee recover the defendant’s profit on

something more than the relevant article of manufacture. Columbia doesn’t cite any

case applying the entire market value to § 289, and its citations (at 55–56) to old utility

patent cases are inapplicable, because the applicable statute did not tie damages to any

particular “article of manufacture.” See 16 Stat. 198, 206, § 55 (1870).

But even if a patentee could theoretically invoke the entire market value rule

for § 289 damages, the rule could not apply to these facts. Columbia would have to

show that the patented design “drove demand,” just as, in a utility patent case, it would

have to show the “patented technology drove demand.” Power Integrations, Inc. v. Fairchild

Semiconductor Int’l, Inc., 904 F.3d 965, 978 (Fed. Cir. 2018). Where, as here, “the

product contains other valuable features, the patentee must prove that those other

features do not cause consumers to purchase the product.” Id. at 979. The patented

feature must be “the sole driver of consumer demand” and “alone motivate[]

consumers to buy the accused products.” Id. at 980. The accused design doesn’t

meet those standards. Customers bought 240 times more units of a product without

the accused design than a comparable product with it, (Appx3420–3422), and a

plethora of other features impact demand. (Appx1938–1939; Appx2035–2037.)

16
 It is no answer for Columbia to argue (at 56–59) that the fabric’s technical

benefits were important to customers. Design patents don’t cover function, Lee, 838

F.2d at 1188, so Columbia can’t rely on it. If anything, Seirus’s extensive marketing of

the products’ functionality underscores that the accused design doesn’t drive demand.

Regardless, Columbia’s evidence is much weaker than in Power Integrations, where the

entire market value rule did not apply to patented technology that was “essential” to

many customers, was featured in marketing materials, and that (unlike here) caused

products with it to outsell those without it. Power Integrations, 904 F.3d at 978–980.

Neither the fabric’s function nor design drove demand.

III. At Minimum, a New Jury Trial is Required on Damages.

A. The District Court Misallocated the Burden of Persuasion
Regarding the Article of Manufacture.
Our opening brief (at 35–39) showed the patentee bears the burden of

persuasion on the relevant article of manufacture. The plaintiff traditionally bears the

burden of persuasion on all elements of its claim, including damages. Determining

the relevant article is an essential element of that claim. Section 289’s text and

legislative history support putting the burden of persuasion on the plaintiff, especially

when compared with the trademark and copyright statutes, which have explicit

burden-shifting language that § 289 lacks. Section 289 has similar wording to §§ 284

and 287, where the plaintiff has the burden of persuasion on substantive damages

sub-issues (e.g., marking and entire market value rule), so the article of manufacture

17
issue should be treated similarly. The only other cases to analyze the issue put the

burden of persuasion on the patentee. See Apple Inc. v. Samsung Elecs. Co. Ltd., 2017

WL 4776443, at *13 (N.D. Cal. Oct. 22, 2017); Nordock, Inc. v. Systems, Inc., 2017 WL

5633114, at *3–4 (E.D. Wisc. Nov. 21, 2017).

Columbia ignores these points. Instead, Columbia argues (at 59–66) that § 289

is a disgorgement remedy, and that historical practice requires shifting the burden to

the defendant. Columbia is wrong—the plaintiff bore the burden of persuasion on a

claim for the defendant’s profits. See, e.g., Tilghman v. Proctor, 125 U.S. 136, 151 (1888)

(“The plaintiff has the burden of proving the amount of profits that the defendants

have made by the use of his invention”). Congress applied this rule to design patents.

See H.R. REP. NO. 49-1966, at 3 (1886) (“the patentee recovers the profit actually

made on the infringing article if he can prove that profit, that is what the infringer realized

from the infringing articles minus what they cost him”). Indeed, Congress provided for a

minimum $250 recovery in § 289 to “meet[] the case when the exact profit in dollars

and cents cannot be proved,” S. REP. NO. 49-206 at 2 (1886), which would be

unnecessary if the defendant bore the burden of persuasion.

Columbia doesn’t cite any case holding the defendant has the burden of

persuasion on the article of manufacture. Instead, the design patent cases it cites (at

61 n.10) address the mathematical calculation of profits after the relevant article has

been determined and suggest the defendant must prove deductible expenses. See

Henry Hanger & Display Fixture Corp. of Am. v. Sel-O-Rak Corp., 270 F.2d 635, 643 (5th

18
Cir. 1959) (holding the defendant had to prove costs, such as “depreciation,” “taxes,”

and “interest” from loans); In re AI Realty Mktg. of New York, Inc., 293 B.R. 586, 618

(Bankr. S.D.N.Y. 2003) (putting burden on defendant to establish “the nature and

amount of the costs that should be considered” and “their relationship to the

infringing product”); Bergstrom v. Sears, Roebuck and Co., 496 F. Supp. 476, 497 (D.

Minn. 1980) (same).

None of those cases involved a dispute over the article of manufacture, so they

aren’t relevant. That the defendant might have a burden related to the mathematical

calculation of the amount of profits after the relevant article has been determined says

nothing about who has the burden on determining what the article is. Samsung

separated the § 289 analysis into “two steps”—first “identify the ‘article of

manufacture,’” and then “calculate the infringer’s total profit made on that article of

manufacture.” 137 S. Ct. at 434. Columbia’s cases address the burden at step two,

not step one.

Columbia’s cited cases from other areas of law are even less relevant. Most

involve intentional wrongdoing and none deal with the specific statutory language

here. Even if considered, however, they again focus on shifting the burden on the

mathematical calculation of profits. For example, SEC v. First City Financial Corp., 890

F.2d 1215, 1229 (D.C. Cir. 1989), dealt with disgorgement of profits illegally obtained

through deliberate insider trading. It held the plaintiff “bears the ultimate burden of

persuasion that its disgorgement figure reasonably approximates the amount of unjust

19
enrichment” and that, as part of that burden, it must “distinguish between legally and

illegally obtained profits.” Id. at 1231–32. The government met that burden by

proving which trades were “tainted.” Id. at 1232. Applying that rule here would

require Columbia to prove the relevant article of manufacture upon which profits will

be calculated. At that point, the burden shifted to the defendant to show the amount

of profits was not a “reasonable approximation,” id., which here would be analogous

to requiring Seirus to prove deductible expenses after the article had been identified.

The other securities cases similarly emphasize the plaintiff’s burden of

persuasion on the substantive damages claim and simply find it met where the

defendant submits “no evidence” to rebut it. See S.E.C. v. Platforms Wireless Int'l Corp.,

617 F.3d 1072, 1096 (9th Cir. 2010) (holding the “SEC bears the ultimate burden of

persuasion that its disgorgement figure reasonably approximates the amount of unjust

enrichment,” at which point the defendant must come forward with evidence

suggesting a lower amount); S.E.C. v. Halek, 537 F. App’x 576, 581 (5th Cir. 2013)

(same); S.E.C. v. Bilzerian, 29 F.3d 689, 697 (D.C. Cir. 1994) (same); Sec. & Exch.

Comm'n v. Whittemore, 744 F. Supp. 2d 1, 8 (D.D.C. 2010) (same). That is not this case.

Columbia’s citations (at 61 nn. 8–9) to the copyright and trademark statutes are

irrelevant, because their text differs markedly from § 289. The copyright and

trademark statutes have explicit burden-shifting language, while § 289 does not. The

copyright and trademark statutes were enacted before § 289—both had burden-

shifting language in 1905, decades before the 1952 Patent Act. So, if Congress had

20
wanted to include burden shifting for design patents, it knew how. It chose not to,

which, along with the legislative history of § 289’s predecessor, confirms that

Congress put the burden of persuasion on the plaintiff.

Columbia’s reliance (at 61–62 & n.11) on the common law is also misplaced.

Its cited source refers to copyright, which is irrelevant, and then proposes a “more

modern” rule. RESTATMENT THIRD OF RESTITUTION AND UNJUST ENRICHMENT,

§ 51, cmt. i (2011). Whatever the merits of that proposal, it doesn’t illuminate the text

of § 289 or reflect historical practice. The proposed rule again relates only to the

mathematical calculation of profits, not a substantive aspect of the damages claim (like

“article of manufacture”). And the authors justify their proposed “evidentiary

burdens” by invoking “the equitable disposition that resolves uncertainty in favor of

the claimant against the conscious wrongdoer.” Id. There was no conscious

wrongdoing here—the jury found Seirus was not willful, as it did not know of the

patent before this suit. (Appx5; Appx3056–3068.)

Columbia’s suggestion (at 60) that the “profits” remedy in § 289 has a different

purpose than other types of damages does not help its argument. The Supreme Court

has long recognized that, “[t]hough called profits, they are really damages,” Mowry v.

Whitney, 81 U.S. 620, 653 (1871). Moreover, the purpose of burden-shifting in other

contexts is (1) to address intentional wrongdoing and (2) require the defendant to

untangle its own finances, which it is better situated to do. The first consideration

doesn’t apply—there was no willful infringement. The second doesn’t apply either:

21
the plaintiff is perfectly capable of proving the relevant article, and any issues about

the burdens regarding calculating the profits on that article are a separate step in the

analysis that isn’t at issue here.

The bottom line is that Columbia bears the burden on proving the appropriate

article of manufacture. Both the statutory text and legislative history forbid burden

shifting—the text is similar to that in §§ 271 and 284, where the plaintiff bears the

burden, and the legislative history requires the plaintiff to “prove that profit.”

Proving the article of manufacture is a substantive element of the § 289 claim, just like

marking, an issue on which Arctic Cat reaffirmed the plaintiff bears the burden. The

district court’s jury instruction on the burden was thus erroneous.

B. The Error on the Burden of Persuasion Prejudiced Seirus.

The erroneous jury instruction is prejudicial and requires a new trial. The

parties’ dispute over the article of manufacture was the key damages issue, and putting

the burden on Seirus to prove the article was something less than the end-products

almost certainly skewed the jury’s deliberation. Arctic Cat Inc. v. Bombardier Recreational

Prods., Inc., 876 F.3d 1350, 1368–69 (Fed. Cir. 2017) (error on burden of persuasion

for marking required new trial); Gordon v. New York City Bd. of Educ., 232 F.3d 111, 116

(2d Cir. 2000) (“If an instruction improperly directs the jury on whether the plaintiff

has satisfied her burden of proof, it is not harmless error because it goes directly to

the plaintiff’s claim, and a new trial is warranted.”); Stevison by Collins v. Enid Health

22
Sys., Inc., 920 F.2d 710, 714 (10th Cir. 1990) (“Jury instructions outlining the

appropriate burdens of proof are almost always crucial to the outcome of the trial”).

Neither of Columbia’s arguments (at 66–70) establishes the error was harmless.

Seirus identified the HeatWave fabric as the proper article of manufacture and

adduced evidence under the Solicitor General’s four factor test. (Appx6230;

Appx6239; Appx1843–1846; Appx3185; Appx3191–3192; Appx3197; Appx3475;

Appx3480–3482; Appx3493; Appx3891; Appx3967–3968; Appx4023–4024.) Seirus’s

expert explained how she calculated the total profits on the fabric. (Appx3480–3492.)

Columbia understood Seirus was contending the fabric was the article. (Appx1798;

Appx3839–3840; Appx3951.) That met any burden of production that Seirus may

have. Cf. Arctic Cat, 876 F.3d at 1368 (defendant’s burden to “articulate the products

it believes are unmarked” is a “low bar”).

Columbia’s comments (at 67–68) about whether the article was “rolls of fabric

‘on the dock’” miss the point. Seirus’s position is that the fabric as incorporated into

the gloves and other end-products is the article of manufacture. That the fabric is

made and sold by Ventex in rolls before incorporation into the end-products simply

shows, under the Solicitor General’s fourth factor, the fabric is the relevant article.

Columbia’s criticisms (at 68–70) of Seirus’s damages calculation are irrelevant.

The issue is who had the burden of persuasion on the relevant article (Samsung’s step

1), not anything to do with the mathematical calculation once the article was

established (Samsung’s step 2). Seirus met any burden of production it had on

23
Samsung’s step 1 by identifying the relevant article and submitting evidence relevant to

the Solicitor’s test. Nevertheless, Seirus’s expert also addressed Samsung’s step 2 and

submitted both an alternative number—$500,817—and a detailed explanation of how

she calculated it. (Appx3480–3492.) Columbia may disagree with her methodology,

but those disagreements are for a properly-instructed jury.

Columbia’s criticisms are also wrong on the merits. Samsung did not dictate any

particular methodology for calculating the profits attributable to a component. It did

not require including unrelated costs like labor as part of the fabric’s value. Indeed,

precedent suggests that comparing the component’s cost to the overall product’s cost

is appropriate. Bush & Lane Piano Co. v. Becker Bros., 222 F. 902, 904 (2d Cir. 1915) (no

“serious difficulty in computing the profits on the [piano] case alone,” because the

defendant “purchases them from others at a cost of $38 for each case”).

It doesn’t matter whether labor is a “component” of the products. All

products included material components other than the fabric—the gloves had many

other pieces, while the socks, hats, and liners, included at least the stitching. (See pp.

13-15.) No product was 100% fabric. (Id.) And although Columbia complains (at

69) about the percentages that Seirus’s expert attributed to the fabric in the socks,

hats, and liners, Seirus still met any burden of production it had.

Finally, Columbia’s discovery gripes (at 16–18, 69–70) are erroneous. Seirus

produced all financial information it had, and provided extensive deposition testimony

from its CFO. (Appx6138–6166.) Columbia never moved to compel anything more.

24
 C. There is a Right to Jury Trial on § 289 Damages.
Columbia is wrong to say (at 70–73) there is no right to jury trial on § 289

damages. The Seventh Amendment protects the jury right in “suits at common law.”

The Court assesses whether a claim meets that description by analyzing “the nature of

the issues involved and the remedy sought,” where the latter is “more important.”

Chauffeurs v. Terry, 494 U.S. 558, 565 (1990). Both establish a jury right here, and the

history of § 289’s predecessors also shows there is a statutory jury right.

The first factor “compare[s] the statutory action to 18th-century actions

brought in the courts of England.” Id. Design patents didn’t exist in England until

1839 (or in America until 1842). See Jason J. DuMont, The Origins of American Design

Patent Protection, 88 IND. L.J. 837, 854 (2015). But today’s design patent cases are like

utility patent cases, which, in 1790, were tried in English law courts to juries.

Markman v. Westview Insts., Inc., 517 U.S. 370, 377 (1996) (“[I]nfringement cases today

must be tried to a jury, as their predecessors were more than two centuries ago.”).

The second factor examines if the remedy is “legal or equitable.” Chauffeurs, 494

U.S. at 565. Disgorgement of profits “is not easily characterized as legal or equitable,

for it is an amalgamation of rights and remedies drawn from both systems.”

RESTATEMENT (THIRD) OF RESTITUTION AND UNJUST ENRICHMENT § 4, Cmt. b

(2011). “If restitution to the claimant is accomplished exclusively by a judgment for

money, without resort to any of the ancillary remedial devices traditionally available in

25
equity but not at law, the remedy is presumptively legal.” Id. at Cmt. c. That

describes § 289—Columbia wants money, not an injunction or other equitable device.

The design patent statute underscores its remedy is legal, at least for Seventh

Amendment purposes, and shows that Congress intended a statutory right to jury.

Section 289’s predecessors provided for recovery of the defendant’s profits “by an

action at law.” See 35 U.S.C. § 74 (1946); 24 Stat. 387, § 1 (1887). Although Congress

removed that reference in § 289, that did not change the remedies’ character. A

complaint seeking the defendant’s profits still “pleads an action at law,” so the parties

have a jury right. Ross v. Plastic Playthings, Inc., 138 F. Supp. 887, 888 (S.D.N.Y. 1956).

Columbia doesn’t cite any case holding that there is no jury right on § 289

damages. Columbia mostly relies (at 71–72) on cases that don’t address the jury right,

but rather laches in copyright or utility patent infringement, Petrella v. MGM, 134 S. Ct.

1962, 1967 n.1 (2014); SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC,

137 S. Ct. 954, 964 (2017), whether a court can freeze a trademark defendant’s assets,

Reebok Int’l, Ltd. v. Marnatech Enterprises, Inc., 970 F.2d 552, 559–60 (9th Cir. 1992), or

cases that mention in passing that equity courts could award profits. Packet Co. v.

Sickles, 86 U.S. 611, 617–618 (1874); Burdell v. Denig, 92 U.S. 716, 720 (1875).

But none of those cases require treating the profits remedy in an infringement

action as purely equitable for Seventh Amendment purposes. It was long established

that “[t]hough called profits, they are really damages,” Mowry v. Whitney, 81 U.S. 620,

653 (1871), and “it has always been recognized that there may be a suit for accounting

26
at law.” Kennedy v. Lakso Co., Inc., 414 F.2d 1249, 1253 (3d Cir. 1969). Juries

calculated profits when the remedy was awarded at law. Id. Although profits were

also available in equity courts, this was only “incidental to an injunction to avoid

multiplicity of suits,” and “not because the jury was considered an inappropriate office

for compensation.” Swofford v. B&W, Inc., 336 F.2d 406, 411 (5th Cir. 1964). It was

“a rule of administration and not of jurisdiction.” Id. So, although Petrella allowed

laches to bar recovery of profits in copyright, as equity courts had historically, this

doesn’t mean there is no jury right, as there was when law courts had awarded profits.

Indeed, courts who have addressed the issue in infringement cases find a jury

right on an accounting for profits. See, e.g., Kennedy, 414 F.2d at 1253–54 (“[N]o

distinction can be drawn which would justify recognition of the right to jury trial for

‘damages’ and its denial in a claim for ‘profits’ on the theory that ‘damages” are

recoverable in an action at law whereas ‘profits’ have their origin in equitable

principles which hold the infringer a trust for the patent holder.”); Sid & Marty Krofft

Television v. McDonald's Corp., 562 F. 2d 1157, 1175 (9th Cir. 1977) (finding jury right

on profits in copyright and refusing “to deprive the parties of a jury on what is

basically a money claim for damages based on a charge of . . . infringement”); Swofford,

336 F.2d at 411 (same for patent infringement); Ross, 137 F. Supp. at 888 (same for

§ 289); Dairy Queen, Inc. v. Wood, 369 U.S. 469 (1962) (jury right on “accounting” for

trademark damages, which included a defendant’s profits); Robert Bosch, LLC v. Pylon

Mfg. Corp., 719 F.3d 1305, 1314 (Fed. Cir. 2013) (en banc) (describing Dairy Queen as

27
holding that “even if a proceeding was, in the traditional sense, an equitable

accounting, a jury trial was nonetheless required”); 9C Charles Alan Wright & Arthur

R. Miller, FEDERAL PRACTICE AND PROCEDURE, § 2312 (3d ed. 2008) (“In terms of

jury trial, there is now no difference between a claim for damages and a claim for

profits. No matter how characterized, there is a right to jury trial.”). This Court

should thus likewise find a right to jury trial here.

CONCLUSION

For the reasons above, this Court should reverse or vacate the judgment on the

design patent.

Dated: November 2, 2018 Respectfully submitted,

/s/ Craig E. Countryman

Craig E. Countryman
Fish & Richardson P.C.
12390 El Camino Real
San Diego, CA 92130
(858) 678-5070
countryman@fr.com

Attorneys for Cross-Appellant

Seirus Innovative Accessories, Inc.

28
 CERTIFICATE OF SERVICE AND FILING

I certify that I electronically filed the foregoing document using the Court’s

CM/ECF filing system on November 2, 2018. Counsel was served via CM/ECF on

November 2, 2018.

/s/ Craig E. Countryman

Craig E. Countryman
Fish & Richardson P.C.
12390 El Camino Real
San Diego, CA 92130
(858) 678-5070
countryman@fr.com
 CERTIFICATE OF COMPLIANCE

I certify that Cross-Appellant’s Reply Brief complies with the type-volume

limitation set forth in Fed. R. App. P. 27(d)(2)(A). The relevant portions of the brief,

including all footnotes, contain 6,977 words, as determined by Microsoft Word.

Dated: November 2, 2018 /s/ Craig E. Countryman

Craig E. Countryman
Fish & Richardson P.C.
12390 El Camino Real
San Diego, CA 92130
(858) 678-5070
countryman@fr.com