Columbia v. Seirus (Federal Circuit) - Columbia Reply Brief

Case: 18-1329 Document: 37 Page: 1 Filed: 09/18/2018
Case Nos. 18-1329, -1331, -1728

________________________________
UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT
________________________________
COLUMBIA SPORTSWEAR NORTH AMERICA, INC.,

an Oregon corporation,
Plaintiff - Appellant,
v.
SEIRUS INNOVATIVE ACCESSORIES, INC.,

a Utah corporation,
Defendant - Cross-Appellant.
______________________________
Appeals from the United States District Court

for the Southern District of California
Case No. 3:17-cv-01781-HZ, Judge Marco A. Hernandez
___________________________
RESPONSE AND REPLY BRIEF OF

APPELLANT COLUMBIA SPORTSWEAR NORTH AMERICA
______________________________
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.
AMENDED CERTIFICATE OF INTEREST
Pursuant to Federal Circuit Rule 47.4, counsel for Appellant
Columbia Sportswear North America, Inc. (“Columbia”) certifies:
1. The full name of every party or amicus curiae represented by
me is: Columbia Sportswear North America, 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: Not
Applicable.
3. All parent corporations and any publicly held companies
that own 10 percent of more of the stock of the party or amicus curiae
represented by me are: Columbia Sportswear Company.
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 amicus curiae, or are expected to appear in this Court, are:
SCHWABE, WILLIAMSON & WYATT P.C.: David W. Axelrod, Nicholas

(Nika) F. Aldrich, David R. Boyajian, Devon Z. Newman, Brenna
K. Legaard, Sara Kobak, and Angela E. Addae.
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 is:

ii
Columbia Sportswear North America, Inc., et al. v. Ventex Co.,

Ltd, et al., Case No. 3:17-cv-00623 (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 this 18th day of September, 2018.
/s/ Nicholas F. Aldrich

Nicholas F. Aldrich
iii
TABLE OF CONTENTS
Page
AMENDED CERTIFICATE OF INTEREST ............................................. i
AMENDED STATEMENT OF RELATED CASES ...............................xiii
COUNTERSTATEMENT OF THE ISSUES ............................................. 1
COUNTERSTATEMENT OF THE CASE................................................. 3
I. The D’093 Patent...................................................................... 3

II. Seirus’s Infringing HeatWave Material and Products ........... 5
III. The Manufacture of the HeatWave Products ......................... 9
IV. Seirus’s Marketing and Promotion of its HeatWave
Products .................................................................................. 11
V. The Trial and Jury Verdict .................................................... 14
SUMMARY OF THE ARGUMENT CONCERNING SEIRUS’S
CROSS-APPEAL ............................................................................. 21
ARGUMENT ............................................................................................. 23
I. Standards Governing Summary Judgment on Design

Patent Infringement .............................................................. 23
II. The Court Properly Granted Summary Judgment of
Infringement........................................................................... 25
Adding Trade Names or Logos Does Not Avoid
Design Patent Infringement. ........................................ 30
Seirus’s Argument about Orientation Is Legally

Baseless and Belied by its Own Testimony and
Products. ........................................................................ 32
The Ordinary Observer Is the Retail Consumer of

Seirus’s Gloves .............................................................. 36
iv
III. The Jury’s Verdict Was Not Excessive and Was

Supported by Substantial Evidence on Multiple
Grounds. ................................................................................. 39
All the Accused Products are Single-Component
Products. ........................................................................ 40
Even if Considered Multi-Component Products,

Substantial Evidence Permitted the Jury to Find
the HeatWave Ski Gloves are the Relevant Article
of Manufacture for Purposes of Section 289
Disgorgement. ............................................................... 43
1. The scope of the design ........................................ 44
2. The relative prominence of the design

within the product as a whole ............................. 46
3. The HeatWave fabric is not conceptually

separate from the liners and ski gloves .............. 50
4. The physical relationship between the

design and the product as a whole ...................... 52
The Jury Had Substantial Evidence to Find that

Seirus’s Profits on the Products Incorporating
HeatWave Fabric were $3,018,174. ............................. 54
IV. The Court Correctly Allocated the Burdens of Proof for

the Recovery of “Total Profit” Under 35 U.S.C. § 289. ......... 59
V. Seirus Failed to Satisfy Even the Lesser Burden of
Production, Rendering its Objection on the Burdens of
Proof Harmless ....................................................................... 66
Seirus Failed to Identify a Legally-Sufficient,
Alternate “Article of Manufacture.” ............................. 67
Seirus Failed to Provide Sufficient Evidence in

Support of its Defective Disgorgement Theory............ 68
VI. Conditionally, Should the Court Remand the

Disgorgement Analysis for any Reason, it Should
Remand with Instructions that it be Decided by the
Court, Not a Jury ................................................................... 70
COLUMBIA’S REPLY ON APPEAL ....................................................... 73
I. Reply Concerning the ’270 Utility Patent ............................. 73

Overview. ....................................................................... 73
Seirus’s Introduction of False Evidence

Necessitates a New Trial. ............................................. 76
Seirus’s Misconduct Cannot Be Excused by

Speculation that the Jury Ignored the False
Testimony. ..................................................................... 78
The Violation of the Federal Rules is Clear. ............... 79
The District Court’s Failure to Properly Instruct

the Jury Independently Requires a New Trial. ........... 80
II. In the Event of Remand, the Court Should Transfer the

Case to the District of Oregon ............................................... 82
CONCLUSION ......................................................................................... 83
vi
TABLE OF AUTHORITIES
Page(s)
Cases
In re AI Realty Mktg. of N.Y., Inc.

293 B.R. 586 (Bankr. S.D.N.Y. 2003) .................................................. 61
Am. Calcar, Inc. v. Am. Honda Motor Co.,

651 F.3d 1318 (Fed. Cir. 2011) ............................................................ 72
Am. Universal Ins. Co. v. Pugh,

821 F.2d 1352 (9th Cir. 1987) .............................................................. 72
Apple Inc. v. Samsung Elecs. Co.,

2017 WL 4776443 (N.D. Cal. Oct. 22, 2017) ....................................... 41
Apple Inc. v. Samsung Elecs. Co.,

932 F. Supp. 2d 1076 (N.D. Cal. 2013) ................................................ 35
Arminak & Assocs. v. Saint-Gobain Calmar, Inc.,

501 F.3d 1314 (Fed. Cir. 2007) ...................................................... 28, 38
Atofina v. Great Lakes Chem. Corp.,

441 F.3d 991 (Fed. Cir. 2006) .............................................................. 81
Bergstrom v. Sears, Roebuck and Co.,

496 F. Supp. 476 (D. Minn. 1980) ................................................. 60, 61
Bose Corp. v. JBL, Inc.,

274 F.3d 1354 (Fed. Cir. 2001) ............................................................ 56
Braun Inc. v. Dynamics Corp. of Am.,

975 F.2d 815 (Fed. Cir. 1992) ........................................................ 24, 29
Burdell v. Denig,
92 U.S. 716 (1876) ................................................................................ 71
Bush & Lane Piano Co. v. Becker Bros.,

234 F. 79 (2d Cir. 1916) ....................................................................... 50
vii
Callaghan v. Myers,
128 U.S. 617 (1888) ........................................................................ 55, 65
Campbell v. United States,

365 U.S. 85 (1961) ................................................................................ 64
Carborundum Co. v. Electric Smelting & Aluminum Co.,

203 F. 976 (3rd Cir. 1913) .................................................................... 55
Chauffeurs, Teamsters & Helpers, Local No. 391 v. Terry,

494 U.S. 558 (1990) .............................................................................. 71
Concrete Pipe & Prods. v. Constr. Laborers Pension Trust,

508 U.S. 602 (1993) .............................................................................. 64
Cornucopia Prods., LLC v. Dyson Inc.,

No. CV 12–00234–PHX–NVW, 2012 WL 3094955 (D. Ariz.
July 27, 2012) ................................................................................. 28, 30
Crocs, Inc. v. Int’l Trade Com’n,

598 F.3d 1294 (Fed. Cir. 2010) ............................................................ 29
Daubert v. Merrell Dow Pharms, Inc.,

509 U.S. 579 (1993) .............................................................................. 79
Dobson v. Hartford Carpet Co.,

114 U.S. 439 (1885) .............................................................................. 46
Egyptian Goddess, Inc. v. Swisa, Inc.,

543 F.3d 665 (Fed. Cir. 2008) ........................................................ 24, 28
Elizabeth v. Pavement Co.,

97 U.S. 126 (1877) ................................................................................ 55
Ethicon Endo-Surgery, Inc. v. Covidien, Inc.,

796 F.3d 1312 (Fed. Cir. 2015) ...................................................... 27, 28
Fonar Corp. v. GE,

107 F.3d 1543 (Fed. Cir. 1997) ............................................................ 56
Fraige v. Am.-Nat. Watermattress Corp.,

996 F.2d 295 (Fed. Cir. 1993) ........................................................ 78, 79
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
Gorham Co. v. White,

81 U.S. (14 Wall.) 511 (1871) ............................................. 24, 37, 38, 39
Henry Hanger & Display Fixture Corp. v. Sel-O-Rak Corp.,

270 F.2d 635 (5th Cir. 1959) .......................................................... 61, 64
Herbko Int’l, Inc. v. Gemmy Indus. Corp.,

916 F. Supp. 322 (S.D.N.Y. 1996) ........................................................ 29
Interwoven, Inc. v. Vertical Computer Sys.,

No. CV-10-04645 RS, 2013 WL 3786633 (N.D. Cal. July
18, 2013) ............................................................................................... 56
Jack Schwartz Shoes v. Skechers U.S.A.,

No. 00-CIV-7721 (RMB)(THK), 2002 U.S. Dist. LEXIS
25699 (S.D.N.Y. Sept. 9, 2002) ............................................................ 31
L.A. Gear, Inc. v. Thom McAn Shoe Co.,

988 F.2d 1117 (Fed. Cir. 1993) ............................................................ 30
In re M/V Peacock,
809 F.2d 1403 (9th Cir. 1987) .............................................................. 79
Michery v. Ford Motor Co.,

650 F. App’x. 338 (9th Cir. 2016) ........................................................ 65
In re Micron Inc.,
875 F.3d. 1091 (Fed. Cir. 2017) ..................................................... 82, 83
Minneapolis, S. P. & S. S. M. R. Co. v. Moquin,

283 U.S. 520 (1931) .............................................................................. 79
Mortg. Grader, Inc. v. First Choice Loan Serv.,

811 F.3d 1314 (Fed. Cir. 2016) ...................................................... 23, 24
ix
Nike Inc. v. Wal-Mart Stores, Inc.,

138 F.3d 1437 (Fed. Cir. 1998) ............................................................ 60
Packet Co. v. Sickles,

86 U.S. 611 (1874) ................................................................................ 71
Payless Shoesource, Inc. v. Reebok Int’l Ltd.,

998 F.2d 985 (Fed. Cir. 1993) ........................................................ 25, 30
Petrella v. MGM,
134 S. Ct. 1962 (2014) .......................................................................... 71
Physio-Control Corp. v. Med. Research Lab,

No. 85 C 4973, 1988 WL 5023 (N.D. Ill. Jan. 15, 1988) ..................... 31
Reebok Int’l, Ltd. v. Marnatech Enters.,

970 F.2d 552 (9th Cir. 1992) ................................................................ 71
Revision Military, Inc. v. Balboa Mfg. Co.,

No. 5:11–CV–149, 2011 WL 3875624 (D. Vt. Aug. 31,
2011) ..................................................................................................... 28
Robert Bosch, LLC v. Pylon Mfg. Corp.,

719 F.3d 1305 (Fed. Cir. 2013) ............................................................ 61
Rocket Jewelry Box, Inc. v. Quality Int’l Packaging, Ltd.,

250 F. Supp. 2d 333 (S.D.N.Y. 2003)................................................... 70
Rocket Jewelry Box, Inc. v. Quality Int’l Packaging, Ltd.,

90 F. App’x 543 (Fed. Cir. 2004) .......................................................... 70
Rockport Co., Inc. v. Deer Stags, Inc.,

65 F. Supp. 2d 189 (S.D.N.Y. 1999)..................................................... 31
Sabrah v. Lucent Techs.,

1998 WL 792503 (N.D. Tex. Nov. 6, 1998) .......................................... 66
Samsung Elecs. Co. v. Apple Inc.,

137 S. Ct. 429 (2016) .................................................................... passim
SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods.,

LLC,
137 S. Ct. 954 (2017) ...................................................................... 71, 72
Schnadig v. Gaines Mfg. Co.,

620 F.2d 1166 (6th Cir. 1980) ........................................................ 60, 65
SEC v. Bilzerian,
29 F.3d 689 (D.C. Cir. 1994) ................................................................ 62
SEC v. First City Financial Corp.,

890 F.2d 1215 (D.C. Cir. 1989) ............................................................ 62
SEC v. Jasper,
678 F.3d 1116 (9th Cir. 2012) .............................................................. 72
SEC v. Platforms Wireless Int’l Corp.,

617 F.3d 1072 (9th Cir. 2010) .............................................................. 62
SEC v. Whittemore,
744 F. Supp. 2d 1 (D.D.C. 2010) .......................................................... 62
Sunbeam Prods. v. Wing Shing Prods. (BVI) Ltd.,

311 B.R. 378 (S.D.N.Y. 2004) .............................................................. 61
Teva Pharms. USA, Inc. v. Sandoz, Inc.,

135 S. Ct. 831 (2015) ................................................................ 72, 75, 76
Torspo Hockey Int’l, Inc. v. Kor Hockey Ltd.,

491 F. Supp. 2d 871 (D. Minn. 2007) .................................................. 30
Unidynamics Corp. v. Automatic Prods. Int’l,

157 F.3d 1311 (Fed. Cir. 1998) ...................................................... 23, 28
United States SEC v. Halek,

537 F. App’x 576 (5th Cir. 2013) ......................................................... 62
VirnetX, Inc. v. Cisco Sys.,

767 F.3d 1308 (Fed. Cir. 2014) ...................................................... 55, 59
xi
Warsaw Orthopedic, Inc. v. NuVasive, Inc.,

No. 12-cv-2738-CAB (MDD) 2015 WL 11234133 (S.D. Cal.
Oct. 20, 2015) ....................................................................................... 28
In re Zahn,
617 F.2d 261 (C.C.P.A. 1980) .............................................................. 45
Statutes
15 U.S.C. § 1117(a) (2008) ........................................................................ 61
17 U.S.C. § 504(b) (2010) .......................................................................... 61
35 U.S.C. § 171(a) ..................................................................................... 27
35 U.S.C. § 284.................................................................................... 60, 65
35 U.S.C. § 289.................................................................................. passim
Law of Feb. 20, 1905, ch. 592, § 19, 33 Stat. 723, 729 (1905) ................. 61
Law of Feb. 4, 1887, ch. 105, 24 Stat. 387 (1887).................................... 61
Law of July 30, 1947, ch. 2, § 101(b), 61 Stat. 652, 661 (1947) .............. 61
Law of Mar. 4, 1909, ch. 320, § 25(b), 35 Stat. 1075, 1081

(1909) .................................................................................................... 61
Other Authorities
Brief for the United States as Amicus Curiae Supporting

Neither Party, Samsung Elecs. Co. Ltd. v. Apple Inc., 137
S. Ct. 429 (2016), 2016 U.S. S. Ct. Briefs LEXIS 2322 * (S.
Ct. June 8, 2016) .......................................................................... passim
Fed. R. Civ. P. 26(a)(2)(B)(i) ..................................................................... 79
Fed. R. Civ. P. 26(a)(2)(B)(iii) ................................................................... 79
Fed. R. Civ. P. 37(c)(1) .............................................................................. 79
MPEP 1503.02 .......................................................................................... 44

xii
Restatement 3rd of Restitution and Unjust Enrichment §51

(2011) .................................................................................................... 61
xiii
AMENDED STATEMENT OF RELATED CASES
No other appeal in or from this case has been before either this
Court or any other appellate court in the United States.
On January 27, 2017, Ventex Co., Ltd. (“Ventex”)—the supplier of
the heat-reflective material that defendant-cross-appellant Seirus
Innovative Accessories, Inc. (“Seirus”) used in its accused products—
filed a petition for inter partes review of U.S. Patent No. 8,453,270 (the
“’270 Patent”) at issue in these appeals. That matter is captioned
Ventex Co., Ltd. v. Columbia Sportswear North America, Inc., IPR2017-
00789 (P.T.A.B.). The Patent Trial and Appeal Board (“PTAB”)
instituted review, and a final decision initially was expected by July
2018. Shortly before the statutory deadline for a final decision,
however, the Director of the Patent Office granted an extension of time
for the PTAB to issue its final decision in order to determine whether
Ventex failed to identify Seirus as a real party in interest and to
determine whether there is privity between Ventex and Seirus.
On April 20, 2017, plaintiff-appellant Columbia Sportswear North
America, Inc. (“Columbia”) and affiliates filed suit against Ventex in the
United States District Court for the District of Oregon for infringing the
xiv
’270 Patent and U.S. Design Patent D657,093 (the “D’093 Patent”) at
issue in these appeals. That case is captioned Columbia Sportswear
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
action pending completion of the aforementioned inter partes review of
the ’270 patent.
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
States Patent and Trademark Office (“PTO”). The PTO instituted ex
parte reexamination on May 21, 2018, and Columbia has petitioned the
Director of the PTO for a stay of the reexamination pending final
resolution of this case.
Counsel is unaware of any other case that will directly affect, or
will be directly affected by, this Court’s decision in this appeal.

COLUMBIA’S RESPONSE BRIEF IN CROSS-APPEAL
COUNTERSTATEMENT OF THE ISSUES
(1) Whether the district court correctly granted summary
judgment on infringement of the D’093 design patent, where:
(a) No reasonable jury could conclude that the patented and
accused designs were not substantially the same;
(b) The “ordinary observer” of Seirus’s accused products, which
are imported and distributed throughout the United States
complete with retail point-of-sale packaging and display for
direct sale to consumers, is the retail consumer;
(c) Affixing Seirus’s trade name and mark to the patented
design, without more, does not create a different design that
is no longer “substantially the same”; and
(d) Rotating the patented design 90 degrees, contrary to Seirus’s
use of the patented design in its own commercial products
and the testimony of both its putative designer and its CEO,
would not create a design that is no longer “substantially the
same.”
(2) Whether judgment on the jury’s verdict of the total profits
Seirus earned from the sale of the infringing articles of manufacture
should be affirmed where:
(a) The determination of the “article of manufacture” is a
question of fact that the jury resolved in this case;
(b) The jury’s verdict is supported by substantial evidence,
whether the article of manufacture is the end product
bearing the patented design as sold to the retail consumer
or, alternatively, the component of the end product made
from the fabric bearing the patented design.
(3) Whether the district court properly instructed the jury on
the steps to determine disgorgement of Seirus’s total profits pursuant to
35 U.S.C. § 289.
(4) Whether, even if the district court erred in instructing the
jury that the burden shifted to Seirus to prove a lesser profit after
Columbia established its prima facie case on the total profit for
infringing sales, any error was harmless because Seirus failed to
present evidence from which the jury could allocate profits to an article
of manufacture other than the end product sold to the consumer.

(5) Whether, as a contingent matter in the event of a remand for
any issue, the judge or the jury should determine remedies pursuant to
35 U.S.C. § 289.
COUNTERSTATEMENT OF THE CASE
I. The D’093 Patent
This patent-infringement dispute concerns patents related to
Columbia’s highly successful and revolutionary Omni-Heat® Reflective
products—a product line featuring a discontinuous array of discrete
“heat directing elements” with a partial coverage solution on material to
optimize heat reflection while maintaining breathability.
Contemporaneously with Columbia’s ’270 utility patent for the
invention of this heat-directing system, a Columbia employee received
U.S. Design Patent D657,093 (the “D’093 Patent”) for an ornamental
design for implementing the functional objectives of the utility patent.
(Appx4.)
The D’093 Patent has one claim, which is directed to “[t]he
ornamental design of a heat reflective material, as shown and
described.” (Appx4.) Figures 1, 2, and 3 of the patent are shown below.

Columbia’s inventor, Zach Snyder, explained the inspiration for
his idea of the design:
[H]ow do we communicate warmth and heat?
So exploring that in my head ... . I grew up in Tucson,

Arizona, where it gets super hot in the summer, and often
when you look on the horizon, you can literally see those
heat ripples ... a source of mirages from the heat rising off
the ground.
So the thought I had was to try to represent those heat

ripples or that disturbed air in a graphic format. And
that was the origin of the pattern ...
(Appx2099.)
As shown by the relief apparent in Figure 2 and the cross-
sectional diagram shown in Figure 3, the D’093 patent is not directed to

a mere surface ornamentation. Rather, it is an ornamental way to
apply heat-reflective elements on an underlying base fabric to create a
heat-reflective material that remains breathable. The wavy lines are
heat-reflective elements applied to the underlying base material. They
are arranged in the pattern shown.
Figures 4-10 show applications of “the heat-reflective material” to
intended products—articles of manufacture—including socks and
gloves:
Notably, these figures from the D’093 Patent show that the
claimed design may be used in various orientations, including
horizontal, vertical, and diagonal.
II. Seirus’s Infringing HeatWave Material and Products
In 2013, Seirus took samples of Columbia’s patented product

solicited from Columbia’s Chinese manufacturers and—with support
from its South Korean manufacturer, Ventex—copied the functionality
of Columbia’s highly successful Omni-Heat® products. To implement
that functionality, Seirus directed Ventex to use an ornamental design
of adjacent, contrasting wavy lines:
(Appx4295.) Seirus also demanded and obtained a world-wide
commitment from Ventex that HeatWave fabric would be sold only to
Seirus. (Appx3214.)
Seirus called the fabric “HeatWave” because, according to Seirus’s
CEO, the design brought forth images of heat or warmth rising:

“[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.)
Seirus’s accused HeatWave products can be divided into two
categories. First, Seirus makes a number of products—including glove
liners, socks, and hats—that are made entirely from HeatWave fabric
as the sole component. (Appx3211-3212; Appx3226; Appx6050-6052;
Appx6121; Appx6135-6137.) Some examples include:

These products made entirely of HeatWave fabric account for 21
percent of Seirus’s total HeatWave sales, earning gross margins roughly
13 percent higher than the remainder of Seirus’s HeatWave products.
(Appx6064.)
The remainder—or second category—of Seirus’s HeatWave
products are gloves, primarily ski gloves, that are designed with the
HeatWave fabric used as the prominent inside liner of the glove to
reflect heat back to the user. The infringing ornamental design is
incorporated in the product so the reflective elements are visibly

apparent in order to draw the user’s attention to this technological
benefit. (Appx6061.)
III. The Manufacture of the HeatWave Products
Seirus does not make any of its products. (Appx3147-3151;
Appx3414-3417.) Seirus only designs the products. It then has Chinese
manufacturers assemble the products according to Seirus’s
specifications. (E.g. Appx5747-5749; Appx6135.) Seirus’s Chinese
manufacturers supply many parts of the gloves—fabric, thread,
waterproofing, zippers, buckles, and more (Appx6138-6139) and
virtually all manufacturing and assembly, complete with point-of-
purchase labels, hang tags, and more. (Op. cit., Appx6138-6166.) The
manufacturers invoice Seirus a “black box” price, which includes all
contributions from the manufacturer, including the raw materials,
labor, taxes, freight, and its own profit. (Appx3414-3417; Appx3147-
3151; Appx6138-6166.) Seirus imports those finished products to 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
10
separately for the specialty parts and the invoiced “black box” price for
all of the manufacturer’s other contributions. (Appx6138-6166;
Appx3414-3417; Appx3214-3222.) The HeatWave fabric is such a
specialty part. Seirus buys that fabric in large rolls from Ventex in
South Korea, and sends them to its Chinese manufacturers, who use it
to make ready-for-sale products. (Appx3214-3218; Appx3164.) The
manufacturer still invoices a “black box” price for its contributions to
the finished good, including any other parts it supplies, combined with
labor, freight, profit, and other intangibles. (Appx6138-6166.) Some
products have more than one such specialty part. But all Seirus
products have a “black box” manufacturing cost, which includes labor to
remanufacture the specialty parts and make the finished product,
commodity parts, freight, taxes, and the manufacturer’s profit. Id.
For the products made entirely from HeatWave fabric, the
manufacturer cuts and stitches the product together, and adds point-of-
sale marketing and labels to create the final product. (Appx5471; e.g.,
Appx6041, Appx6046; Appx6135.)
For the HeatWave glove products, the manufacturers first cut,
form, and stitch the HeatWave product into a liner in the shape of the
11
hand or mitt, then combine the liner with an outer shell and other
pieces (buckles, cinches, insulation, and the like) into a finished
product. (Appx3217-3218; Appx3158-3159; Appx3161-3162.)
IV. Seirus’s Marketing and Promotion of its HeatWave

Products
Although many of Seirus’s glove products have multiple features,
the products are prominently marked and promoted as “HeatWave”
products if the gloves include the HeatWave fabric, regardless of any
other features. Seirus uses the HeatWave technology as a top-line
differentiator distinguishing the HeatWave line of products from all
other products. (Appx1890.)
The marketing message for the HeatWave products is based upon
the performance of HeatWave fabric:

12
(Appx6061, Appx6077, Appx5584; see also, e.g., Appx5471, Appx5585;

13
Appx5615-5646; Appx6039; Appx6073-6120.)
The prominent
HeatWave hangtags
that accompany the
imported finished
products are
illustrative.
(Appx5471.)
The word
“HeatWave” appears
about four times the
size of Seirus’s own
brand name and
highlights the wavy line
design (notably without
Seirus’s name or mark). Many hangtags say “Look Inside” of “Check It
Out” with an arrow directing the consumer to view the glove feature
made from HeatWave fabric. The remainder of the hangtag focuses on
the function of the HeatWave fabric itself. Nowhere do the hangtags

14
reference other attributes or pieces of the gloves. Such point of sale
materials reflect the products’ core marketing message. (Appx1890.)
Seirus’s catalogs and website repeat the same marketing
messages to distinguish the HeatWave product line from Seirus’s other
product lines. (Appx6036; Appx6038; Appx6061.)
(Appx6061 see also Appx6039.) Seirus’s marketing materials associate
the wavy line design and the HeatWave name with the function and
performance of the products made in whole or material part with the
HeatWave fabric. (Appx1888-1892 (citing Appx5471; Appx5623;
Appx5626; Appx6039.)) While Seirus’s overall non-HeatWave sales
declined over the damages period, sales of HeatWave products soared.
(Appx2886-2893.)
V. The Trial and Jury Verdict
Before trial, Seirus stipulated to a “Judgment of Validity” of the
D’093 Patent, and the district court entered a final judgment dismissing
15
Seirus’s invalidity challenges with prejudice. (Appx179; Appx6129.)
The district court subsequently granted Columbia’s motion for partial
summary judgment that the HeatWave products infringe the D’093
Patent. (Appx181-197.) That left only the issue of infringement
remedies.
Trial on remedies for Seirus’s infringement of the D’093 Patent
originally was scheduled for April 2017. (Appx6170.) In December
2016, the Supreme Court issued its decision in Samsung Elecs. Co. v.
Apple Inc., 137 S. Ct. 429 (2016) (“Samsung”). Samsung distinguished
“single component” products such as dinner plates from “multi-
component products” such as kitchen ovens, and held that, at least in
the case of complex consumer products like kitchen ovens and
smartphones, the relevant “article of manufacture” to which
disgorgement applies under 35 U.S.C. § 289 could be a component of the
product rather than the final end product as sold to the consumer. Id.
at 432. Invoking Samsung, Seirus asserted that all of its HeatWave
products—including those made 100 percent from HeatWave fabric—
were “multi-component” products and that the relevant “article of
manufacture” was only the “HeatWave fabric” in the products. Trial

16
was postponed to address Samsung issues, and Seirus and Columbia
stipulated to a supplemental discovery schedule, including expert
reports. (Appx5890.)
Columbia then reiterated pending discovery requests for
documents related to Seirus’s manufacture of its accused products,
including contracts with its foreign manufacturers and true cost data of
all alleged product components. Seirus refused to produce any of these
records, asserting the requests were “irrelevant” and “confidential.”
(See generally Appx5897; Appx5985.)
Supplemental expert reports on the Samsung issues were due
August 1, 2017. (Appx5895.) Columbia timely served its reports and all
supplemental discovery. Seirus instead filed multiple motions to
further delay the trial. (Appx6167 & Dkts. 176, 210.) Seirus produced
no expert reports and, throughout this period, produced no discovery on
the article-of-manufacture issue. (Appx5985.) Instead, Seirus ignored
the district court’s order and waited until four working days before trial
to submit a report from its damages expert, Carrie Distler, on the
Samsung issues. (Appx5918-5984.)

17
In her expert report, Ms. Distler assumed, based solely on
instructions from Seirus, that the raw HeatWave fabric—as sold in
large rolls by Ventex to Seirus at Ventex’s dock in Korea—was the
“relevant article of manufacture” for purposes of Section 289.
(Appx3537; Appx3559-3561.) Ms. Distler then purported to allocate
Seirus’s admitted profits from the sales of finished HeatWave products
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
into the gloves, including costs to remanufacture the raw HeatWave
fabric into components of gloves and other finished products made only
from the HeatWave material. (Appx3561) For example, if 10% of the
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
alleged article of manufacture. She used that raw material cost
because: “That’s the lowest cost I can get to.” (Appx3566.) She
undertook no qualitative analysis, and specifically excluded
consideration of, the functional importance of the components of the
finished product made from the infringing HeatWave material to the
finished product. (Appx3486; Appx3561-3567.)

18
The entire financial support for Ms. Distler’s opinion was a Seirus
spreadsheet, (Appx6138-6166), produced four days before trial showing
cost categories created by Seirus from internal records that Seirus
failed to produce in the litigation and about which no discovery was
ever taken.
The data used by Ms. Distler, however, was incomplete and
largely irrelevant to costing separately the components of the finished
products imported by Seirus. That is because Seirus does not track the
costs of individual parts or “components” within gloves. Instead, Seirus
pays a “black box” number for all of the manufacturer’s contributions,
which includes many intangibles, like labor, that are not “components”
of the product.1 In almost all cases, these grouped intangibles make up
the lion’s share of the cost of the glove. (Appx6138-6166.)
By comparing only the raw material cost of the HeatWave fabric
with this “black box” manufacturing cost, Seirus and Ms. Distler were
able to attribute only 37-42 percent of Seirus’s profits earned from
products made entirely from HeatWave fabric (such as glove liners,
socks, and hats) to the assumed article of manufacture. (Appx3567-
1As explained below, intangibles are not “components” and, thus, are
not considered under a Samsung analysis.
19
3573.) The remainder of the profit from the sales of these products was
allocated to intangibles, primarily the manufacturer’s fee that Ms.
Distler characterizes as “labor.” Id. Based on this analysis, Ms. Distler
opined that Seirus’s total profits from the sales of all products made
with HeatWave fabric were just $500,817. Id.
In contrast to Seirus’s expert, Columbia’s expert, Serena Morones,
assumed that the relevant “article of manufacture” was the hat, sock,
liner, or glove as sold to the public. In calculating profits, Ms. Morones
excluded certain multi-component gloves made by Seirus that had a
separable internal lining, an external glove, and a battery pack.
(Appx3799-3800.) Omitting those products, Ms. Morones focused her
analysis on glove liners, socks, and hats made entirely from HeatWave
fabric and unitary gloves (gloves that could not be disassembled to any
constituent components). She calculated the profits from those sales
subject to disgorgement were $3,018,174.
In calculating profits, Ms. Morones disagreed that apportioning
the costs of individual raw materials is a rational way to determine the
profits attributable to entire products and components made from those
materials, because a cost-only analysis permits no qualitative analysis

20
of the actual contribution of any alleged component to the profits from
finished HeatWave products.
Even assuming a cost-based approach could be helpful as one
input of the analysis, Ms. Morones attempted to do what Ms. Distler
should have done—determine the total costs of each alleged, material
component of the finished product, including the liner made from the
HeatWave material. But the data produced by Seirus at trial, she
testified, was inadequate to conduct this analysis. (Appx2974-2975.) In
response to Seirus’s questioning at trial, Ms. Morones testified that,
with the limited data Seirus chose to make available and ignoring the
qualitative contribution of individual alleged raw materials to profits, a
corrected analysis using Distler’s cost approach would yield “total
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
allocation, and found that Seirus’s profits attributable to the articles of
manufacture to which the wavy line design was applied were
$3,018,174. (Appx4101.) Seirus subsequently moved for judgment as a

21
matter of law on the damages issue, and the district court denied the
motion.
SUMMARY OF THE ARGUMENT CONCERNING

SEIRUS’S CROSS-APPEAL
The Court properly granted summary judgment that Seirus
infringes the D’093 Design Patent. There was no genuine dispute that
an ordinary observer would have found that Seirus’s product was
substantially identical to Columbia’s patented design, and the only
prior art raised by Seirus is different in both function and
appearance. Seirus’s defenses that it placed its logo all over the
infringing design as a designation of source, that the ordinary observer
is a commercial buyer for resale, and that its fabric can be
photographed sideways, do not allow it to escape design patent
infringement under well-established precedent.
The jury properly awarded Columbia more than $3 million in
Seirus’s profits for the infringement—Seirus’s total profits from the
sales of its HeatWave products. Many of those products are made
entirely from the HeatWave fabric, and are thus “single component”
products under Samsung as a matter of law. The jury properly
disgorged 100% of Seirus’s profits for the sales of those

22
products. Columbia also produced substantial evidence that Seirus’s
HeatWave glove products are “single component” products.
Even under the four-factor DOJ test2 for determining the “article
of manufacture to which such design ... has been applied” adopted by
the district court, Columbia produced more than substantial evidence
that the relevant articles of manufacture were Seirus’s products as sold
to market, and not the fabric within them.
Additionally, Columbia produced substantial evidence that, even if
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
selling the products as a whole. The HeatWave glove linings are
virtually the exclusive marketing focus for the gloves and thus
substantially create the value of the gloves as a whole.
At trial, consistent with 35 U.S.C. § 289, the district court
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.”).
23
a result of its infringement were less than the profits it earned selling
its infringing products to market. Moreover, Seirus cannot allege error
in this respect, because Seirus failed to satisfy even the lesser burden of
production that it claims should apply. Seirus failed to identify a
component of its infringing products to which the design was applied
and failed to produce competent evidence from which the profits for any
component could be ascertained. The Court should affirm the jury’s
verdict on either ground.
Should the court remand the disgorgement analysis for any
reason, it should remand with instructions that the analysis be decided
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
remedy of disgorgement of profits.
ARGUMENT
I. Standards Governing Summary Judgment on Design

Patent Infringement
Summary judgment is as appropriate in a design patent case as in
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.
24
First Choice Loan Serv., 811 F.3d 1314, 1323-24 (Fed. Cir. 2016). In the
Ninth Circuit, a district court’s grant of summary judgment is reviewed
to determine whether, “viewing the evidence in the light most favorable
to the nonmoving party, whether there are any genuine issues of
material fact and whether the district court correctly applied the
relevant substantive law.” Id. (citation and quotation marks omitted).
The standard for infringement of a design patent comes from
Gorham Co. v. White, 81 U.S. (14 Wall.) 511 (1871):
[I]f, in the eye of an ordinary observer, giving such attention

as a purchaser usually gives, two designs are substantially
the same ..., the first one patented is infringed by the other.
81 U.S. at 528. Under the “ordinary observer test,” the ordinary
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
infringement to be found. Braun Inc. v. Dynamics Corp. of Am., 975
F.2d 815, 820 (Fed. Cir. 1992). In conducting a design patent
infringement analysis, “[t]he ultimate question requires determining
whether the effect of the whole design [is] substantially the same,” and
25
“minor differences between a patented design and an accused article’s
design cannot, and shall not, prevent a finding of infringement.”
Payless Shoesource, Inc. v. Reebok Int’l Ltd., 998 F.2d 985, 990-91 (Fed.
Cir. 1993) (citation and quotation marks omitted).
II. The Court Properly Granted Summary Judgment of

Infringement
There is no genuine dispute that the overall appearance of the
HeatWave material is substantially the same as the D’093 Patent
claimed design. For example, Figure 2 from the D’093 Patent fits
seamlessly into the comparably-sized, representative example of the
HeatWave fabric design:
(Appx6220 overlayed with Appx11, Fig. 2.)
The uniqueness of the design of the D’093 Patent when compared
to the prior art, coupled with the virtual identity of the design of the
HeatWave Materials when compared to the design of the D’093 Patent,

26
leads to one singular conclusion—rank infringement. Seirus applies its
HeatWave Material to the same articles of manufacture and in the
same manner shown in the D’093 Patent:
Patented Design Seirus Products
(Appx5755; Appx5820-5821.)
On summary judgment, the district court considered nearly two
dozen prior art references and found none to raise a genuine dispute
over substantial similarity. Seirus now limits its argument to one
figure from the Blauer patent, contending it portrays a similar design.

27
Blauer depicts a three-dimensional structure for creating channels
(a series of ridges and valleys) to divert body heat and moisture trapped
by an impermeable outer shell of a garment. As the district court
recognized, Blauer is not a heat reflective fabric, and its structure is
very different in wave amplitude and frequency from both the D’093
ornamental design and Seirus’s virtual copy.
Design patents protect ornamental designs for specific articles of
manufacture. 35 U.S.C. § 171(a). The D’093 Patent is limited by its
preamble to heat reflective materials. That function is a critical portion
of the claim, and limits the field of prior art to that which performs that
function. Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312
(Fed. Cir. 2015) is instructive. The Ethicon design patents recited, “The
ornamental design for a user interface for a surgical instrument,
as shown and described.” Id. at 1314 (referring to U.S. Patent Nos.
D661,801, D661,802, D661,803) (emphasis supplied). This Court held
that Ethicon’s design patents were limited to products having functions
implemented by the design—“the depicted ornamental aspects of
certain combinations of the trigger, torque knob, and activation button
elements of ultrasonic surgical shears, in specific relative positions

28
and orientations.” Id. at 1334 (emphasis supplied). That claim scope
determines the relevant prior art. In this case, that scope is defined by
its heat reflective management function. See also Cornucopia, 2012 WL
3094955, *4 (“[T]he ordinary observer is assumed to be familiar with
the prior art—i.e., all relevant preexisting designs for similar
products.”) (emphasis added).
The title of the D’093 Patent is “Heat Reflective Material.” Claim
1 recites “The ornamental design of a heat reflective material.”
(Appx5753.) Accordingly, Blauer, which has nothing to do with heat
management, has little if any relevance to the infringement analysis for
the D’093 patent.3
3 Following the Federal Circuit’s decision in Egyptian Goddess, every

case Columbia has identified limits the “infringement prior art” to the
specific class of products identified in the design patent at issue.
Representative cases include: Id., 543 F.3d at 680 (“[t]he two closest
prior art nail buffers”); Warsaw Orthopedic, Inc. v. NuVasive, Inc., No.
12-cv-2738-CAB (MDD) 2015 WL 11234133, at *3 (S.D. Cal. Oct. 20,
2015) (same, prior surgical dilator design); Cornucopia Prods., LLC v.
Dyson Inc., No. CV 12–00234–PHX–NVW, 2012 WL 3094955, at *8 (D.
Ariz. July 27, 2012) (same, prior art fan designs); Revision Military, Inc.
v. Balboa Mfg. Co., No. 5:11–CV–149, 2011 WL 3875624, *14 (D. Vt.
Aug. 31, 2011) rev’d on other grounds 700 F.3d 524 (Fed. Cir. 20012)
(same, prior art goggle designs); see also Arminak & Assocs. v. Saint-
Gobain Calmar, Inc., 501 F.3d 1314, 1324-25 (Fed. Cir. 2007)
(infringement determined in context of prior trigger sprayer shroud
designs); Unidynamics, 157 F.3d at 1324 (infringement determined in
29
Second, even if considered, Blauer’s Figure 7 serves only to
highlight the near-identity of the D’093 Patent design and Seirus’s
accused design.
Blauer Patented Design Accused Product

without logo
This comparison against the most similar drawing Seirus can find
demonstrates virtual identity of the patented and accused designs.
Seirus focuses on details and argues there are differences in the width
of the HeatWave fabric lines. (Appx3151; Appx3168-3169.) But the
ordinary observer test looks to the “overall effect” of the “patented
design in its entirety,” not an assessment of isolated features. Crocs,
Inc. v. Int’l Trade Com’n, 598 F.3d 1294, 1303 (Fed. Cir. 2010). “[M]inor
context of prior vending machine designs); Braun, 975 F.2d at 820

(same, prior hand-held blender designs); Herbko Int’l, Inc. v. Gemmy
Indus. Corp., 916 F. Supp. 322, 327 (S.D.N.Y. 1996) (same, prior art
game board designs).
30
differences between a patented design and an accused article’s design
cannot, and shall not, prevent a finding of infringement.” Payless, 998
F.2d at 991.
The district court did not err in concluding that there is no
genuine dispute concerning substantial similarity between the patented
and the accused designs. Seirus’s remaining non-infringement
arguments are based upon three legally erroneous premises, addressed
in turn below.
Adding Trade Names or Logos Does Not Avoid Design

Patent Infringement.
Seirus first argues that it does not infringe because it has
repeatedly inserted its trade name or logo onto the infringing design.
But this Court has expressly rejected such an argument, concluding
that design patents do not “allow [] avoidance of infringement by
labeling.” L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1126
(Fed. Cir. 1993). “[D]esign patent protection would essentially collapse
if putting one’s own logo on an otherwise identical product could defeat
the ordinary observer test.” Cornucopia, 2012 WL 3094955, at *4.
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);
31
Physio-Control Corp. v. Med. Research Lab, No. 85 C 4973, 1988 WL
5023, (N.D. Ill. Jan. 15, 1988); Jack Schwartz Shoes v. Skechers U.S.A.,
No. 00-CIV-7721 (RMB)(THK), 2002 U.S. Dist. LEXIS 25699 (S.D.N.Y.
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
was as a source identifier. (Appx6176, Appx6182-6184.) They are not
design elements.
The proper—and telling—comparison is the patented design to the
accused design, excluding any logos or trade names:

32
(Appx5753, Fig A.; Appx5819.)
Which is which? The left figure is the D’093; the right is the
HeatWave pattern. Given the proper claim scope, Seirus’ HeatWave
pattern is virtually identical to the D’093 design.
Seirus’s Argument about Orientation Is Legally

Baseless and Belied by its Own Testimony and
Products.
Seirus next asserts that the HeatWave fabric design has a
different “orientation” that renders it non-infringing. To persuade this
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
D’093 Patented design with the lines oriented horizontally. It then
asserts that its vertical orientation was intended to create the image of
33
“a warm wind in early fall, while the patented design conveys the
impression of waves radiating upward from the ground.” (Seirus-Br. p.
39.)
This clever sophistry is belied by Seirus’s own testimony in
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
Snyder, sought to convey:
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.
(Appx3062.) Not surprisingly, the orientation of the HeatWave
material in Seirus’s accused products and marketing materials is the
same as that depicted in the corresponding articles of manufacture
portrayed in the D’093 patent.

34
(Appx6045.) And numerous images from Seirus’ marketing materials
confirm that Seirus markets its HeatWave fabric design to the public
with the wavy lines oriented horizontally:

35
(See, e.g., Appx5481, Appx5585, Appx6061.)
In any event, “[t]here is simply no requirement that a claimed
design must have a particular preferred orientation.” Apple Inc. v.
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
in any direction—just hold it differently. This point was made
startlingly clear by Seirus CEO Carey, who testified:

36
Q: If the lines -- if the wavy lines move in the direction

of the wrist to the finger tip is that horizontal?
* * *
A: If you hold the product so that they are horizontal it
would be.
(Appx192.)
Judge Hernandez properly rejected Seirus’s defense that
orientation matters in this context.
The Ordinary Observer Is the Retail Consumer of

Seirus’s Gloves
Lastly, Seirus argues that the district court erred in identifying
the ordinary observer. As precedent makes clear, the ordinary observer
in this case is the retail consumer—the buyer and ultimate user—of the
articles of manufacture Seirus sells that incorporate the patented
design. The district court did not err.
Seirus concedes that the “ordinary observer” is a purchaser of its
gloves and other products that Seirus makes with the patented design.
(Appx4270-4271.) While Seirus admits that it sells its gloves and other
accused products direct to consumers through its website, Seirus argues
that because it “sells the majority of its accused products ... to retail
stores,” the ordinary observer of its gloves is the “commercial purchaser
rather than an individual consumer” of its gloves.” (Appx4170-4271.)

37
The Supreme Court rejected Seirus’s argument almost 150 years
ago, when it ruled that the ordinary observer is not the intervening
commercial reseller but the retail consumer whose purchasing decisions
drive demand. Gorham, 81 U.S. at 527-28 (1871). Gorham rejected a
test that would include experts in the field, specifically commercial
customers, by contrasting “the ... person engaged in the manufacture
or sale of articles containing such designs,” id. at 527, with “ordinary
observers,” who are the “principal purchasers of the articles to which
designs have given novel appearances.” Id. at 528. The Court held
that, to be effective, design patent protection must focus upon
observations “by ordinary observers, [in other words] by those who buy
and use” the article bearing the design in question. Id. (emphasis
added). In finding the end user to be the “ordinary observer,” the
Supreme Court reasoned that a test based on the observations of
“person[s] versed in ... the [] trade,” like institutional, commercial
customers, would “destroy all the protection which the act of Congress
intended to give.” Id. “[T]he focus is on the actual product that is
presented for purchase, and the ordinary purchaser of that

38
product.” Goodyear Tire & Rubber Co. v. Hercules Tire & Rubber Co.,
Inc., 162 F.3d 1113, 1117 (Fed. Cir. 1998) (emphasis added).
Seirus’s reliance on Arminak is misplaced. Arminak concerned a
patented dispenser “shroud” that was manufactured by a first
commercial entity for sale to a second commercial entity that
incorporated the shroud into spray bottles that were, in turn, filled with
liquid household products, such as Windex®, sought by end consumers.
501 F.3d at 1323. End consumers never saw the “shroud” as a
standalone product, and it carried no marketing emphasis to the end
user. It was merely incidental to the end user’s decision to buy the
household cleaning product. Id. at 1318.
Arminak differs significantly from this case. Here, Seirus admits
that it sells its HeatWave products as imported by Seirus directly to
consumers (Appx4297) and through retailers who market the product as
imported by Seirus, including point of sale marketing materials affixed
during foreign manufacture. Unlike Arminak, Seirus relies primarily
upon the attractions of the HeatWave material to market directly to the
end user. See figures on pages 11-15 & 35, supra. This case is just like
Gorham, where the ordinary observers are the retail consumers—“those

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
of these reasons, the district court properly granted summary judgment
of infringement of the D’093 Patent.
III. The Jury’s Verdict Was Not Excessive and Was Supported
by Substantial Evidence on Multiple Grounds.
Seirus argues the jury’s disgorgement award was excessive,
entitling Seirus to a new trial.
The determination of the relevant article of manufacture for
purposes of disgorgement—“the thing that most fairly may be said to
embody the defendant’s appropriation of the plaintiff’s innovation.”
(DOJ Br., p. 9, Appx4222-4223)—and the measure of profits that should
be attributed to that article are issues of fact. The district court gave
substantially Seirus’s requested jury instruction on the article of
manufacture, save for the burden of rebuttal of Columbia’s prima facie
case, addressed below. As seen below, the jury had multiple grounds on
which to disgorge Seirus of all profits made from selling its HeatWave
products. Columbia produced substantial evidence that:
 All of Seirus’s separately-sold liner products (liners, hats, and

socks) are made entirely from HeatWave fabric and are
therefore single-component products such that the relevant
40
article of manufacture was the product sold to market without

further analysis.4
 Seirus’s glove products are also single-component products

such that no further analysis is required.
 Alternatively, if any of the glove products were found to be

multi-component products, then, applying the DOJ four-factor
test, there is substantial evidence that the glove products as
sold to the consumer were the relevant articles of manufacture
to which the infringing design had been applied.
 Even if the relevant article of manufacture for the gloves was

found to be the HeatWave fabric lining, consumer demand for
the gloves sold to the user was driven by the HeatWave fabric
lining, and thus disgorgement profits were in fact the total
profits that Seirus earned on the sales of the gloves as a whole.
Because the jury had substantial evidence to find in favor of
Columbia on each alternate basis, this Court should affirm the jury’s
verdict and consequent judgment.
All the Accused Products are Single-Component

Products.
In construing Section 289, the Supreme Court distinguished
“single-component” products from “multicomponent” products.
Samsung, 137 S. Ct. at 432. Where a patented design is applied to the
4 Seirus represents that the parties agreed to submit the article of

manufacture issue using the DOJ suggested factors. That is not true.
Columbia objected to Seirus’s requested version of the DOJ instruction
and requested a different instruction. (Appx1531.) The district court
gave substantially Seirus’s requested instruction on article of
manufacture.
41
former, disgorgement applies to the profits from the entire product. Id.
Only where the product is a “multi-component” product is more analysis
required. The Supreme Court provided limited guidance in this
threshold step in the analysis: a “dinner plate” is a single-component
product, and modern kitchen ovens and smartphones are both multi-
component products. Id. at 432.5
Three conclusions can be drawn. One, because dinner plates—
particularly those carrying ornamental designs—are made from
multiple raw materials that are assembled by hand or machine into a
decorated article, Apple Inc. v. Samsung Elecs. Co., 2017 WL 4776443,
*10 (N.D. Cal. Oct. 22, 2017), the mere fact that an infringing product
sold to the consumer is in part an assembly of multiple raw materials
does not make it multi-component, without more. Two, intangibles and
consumables like labor, stitching, thread, profit, freight, taxes, overhead
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
5 Seirus requested no jury instruction on single component vs. multi-

component and thus cannot be heard to complain that it was left to the
jurors’ judgments.
42
profits are disgorged for infringement. Three, the recognized multi-
component products incorporate a multitude of discrete functional
elements, such as microprocessors, sensors, housing materials,
electronic controls and the like associated with sophisticated consumer
products.
With this guidance, Seirus’s glove liners, hats, and socks made
100 percent from HeatWave fabric are necessarily single-component
products. As Seirus admits, “the sole material in these products is the
HeatWave fabric.” (Appx6018.)
Substantial evidence was presented that Seirus’s gloves that have
a HeatWave fabric lining are also single-component products. The
HeatWave fabric lining performs the overriding function of the glove—
keeping the hand warm. It is integrated by gluing (tacking) with other
parts as a single unit that cannot be separated without a seam ripper
and destroying the glove. (Appx3161-3167; Appx3229-3230.) There is
no evidence that HeatWave inserts are sold separately or used as
replacement or repair parts. It is simply a glove, sold to consumers as
such. Jurors could reasonably find it a single component product like a
dinner plate.
43
In contrast, the jury heard evidence that Seirus has made and
markets other glove products as “component” gloves, which Seirus
identifies as multiple units that are separable in use and packaging
(Appx3625-3626; Appx3230-3232.) Illustrative is the Seirus Heat Touch
Torche, which has an inner glove, a separable outer glove, and a battery
pack designed to be used separately or together. (Appx3625-3626;
Appx6067 (“Component System”) (Appx5961) (product code 1087)
(“Component Glove”)). Columbia did not seek damages from such
products. (Appx3799.)
The jury had substantial evidence directly from Seirus to find that
the integrated, single function HeatWave gloves are “single-component”
products for purposes of Section 289 and to disgorge all of Seirus’s
profits from its HeatWave Products.
Even if Considered Multi-Component Products,

Substantial Evidence Permitted the Jury to Find the
HeatWave Ski Gloves are the Relevant Article of
Manufacture for Purposes of Section 289
Disgorgement.
The district court instructed the jury that if the jurors concluded
that Seirus gloves were multi-component products, the jurors should
consider the DOJ four-factor test in identifying the relevant article of
manufacture. Consistent with the four-factor test requested by Seirus,

44
the district court instructed, “In weighing these factors, your objective
should be to identify the article of manufacture that most fairly can be
said to embody Seirus’s appropriation of Columbia’s innovation.”
(Appx4223.) Substantial evidence was presented under each factor that
the Seirus gloves as sold to the consumer are the relevant article of
manufacture.6
1. The scope of the design

As the district court explained to the jury, the first DOJ factor
“provides insight into which portions of the underlying product the
design is intended to cover, and how the design relates to the product as
a whole.” (Appx4222.) This factor “should not be deemed conclusive.”
(DOJ Br., p. 28.)
The D’093 design patent is entitled “Heat Reflective Material,”
and it claims “the ornamental design of a heat-reflective material, as
shown and described.” (Appx10.) A design patent is obligated to
identify at least one article of manufacture to which the design can be
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.
45
extensive with the article to which it is applied. In re Zahn, 617 F.2d
261, 268 (C.C.P.A. 1980). The figures in the D’093 Patent show the
heat-reflective material covering the inside surfaces of boots, a pair of
pants, a sock, a glove, a sleeping bag, and a jacket. (Appx10.) These
items of apparel are shown in dotted lines, which portrays, as
“environmental subject matter,” the anticipated article(s) of
manufacture to which the design will be applied.
Seirus argues that the patent claims a fabric printed with the
ornamental design. But the jury heard substantial evidence to the
contrary. At trial, the patent’s inventor, Zach Snyder, testified that the
invention covers an ornamental design of a functional product: “It’s not
the fabric we’re talking about here. It’s the actual heat-reflective
material itself”—i.e., the internal surface of a glove, sock, or hat.
(Appx2113.) That claimed design is intended to be applied to articles of
manufacture, such as a glove, sock or hat—to provide warmth, exactly
how Seirus has used it. (Appx2104-2105.) The jury had substantial
evidence to find that the scope of the patent covers an article
incorporating heat-reflecting material bearing the design, and that this
factor favored finding that the HeatWave products as sold to market

46
were the relevant articles of manufacture.
2. The relative prominence of the design within the

product as a whole
The D’093 design implements heat-reflective material, providing
the function of heat retention. The importance of the “design” element
in the DOJ lexicon includes not just the aesthetic appearance but also
the attributes—including performance, functionality and technology—
that the designed article implements. Seirus repeatedly ignores this
important attribute, seeking to restrict its analysis only to the aesthetic
features of the design in the abstract and to apportion disgorgement
profits to those features alone. Section 289 was adopted expressly to
reject such limitations, and this second DOJ factor properly rejects such
limitations.
Congress enacted Section 289 to reject the Supreme Court’s
holding in Dobson v. Hartford Carpet Co., 114 U.S. 439, 444 (1885), that
required a design patent owner to prove that recoverable profits or
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
article’s other attributes contributed to those profits.” (DOJ Br., p. 10.)

47
Congress further eliminated any requirement of proof of causal
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
article or articles to which the design, or colorable imitation thereof, has
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 extent to which the infringer’s profit on the relevant article of
manufacture was attributable to the infringing design.” Id. p. 11.
Accordingly, both the aesthetics and the functionality of the
designed article must be evaluated to measure prominence. Each
consideration separately establishes that the HeatWave fabric lining is
the single most prominent feature of the glove as sold to the consumer.
In this case, the aesthetics of the patented design alone establish
its prominence as the single most important design feature of the end
product. The jury heard testimony that the shiny silver lining makes
an outsized visual impression: “if you go into like an R.E.I. or
something, there is a wall of gloves, the wall of black gloves. Most
gloves come in black. Most don’t come in a lot of colors. And part of the
48
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
lining of the Seirus glove] is rather prominent.” (Appx3627.)
Referencing the marketing impact of the patented design, Zach Snyder
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
as a designer, so when you find something that helps make a glove
stand out a little bit, it’s a really big deal,” (Appx2102), and can be the
most important design element in the product as a whole. (Appx2102-
2103.) Even in Seirus’s gloves where the lining is on the inside, Seirus
amplifies the visibility of the HeatWave fabric on all of its products by
prominently incorporating the infringing design on attached hangtags,

49
frequently with a bubble saying “look inside” to draw the consumer’s
attention to the HeatWave fabric. (Appx5471.)
Seirus argues that the
design is “not visible” in some of
its products unless the user looks
inside. (Seirus-Br. p. 33.) But
Seirus directs the user to look
inside, with a hangtag
prominently bearing the same
infringing pattern. And at trial
the jury had actual products they
could examine (Appx5288-5295;
Appx6040-6060; Appx6067;
Appx6124-6127.), not
manipulated photographs, and jurors were free to look at those products
from any angle they liked. When physical products are examined, the
shiny silver lining stands out.
Under the third DOJ factor (conceptual separation), in the
following section, we address the functional importance of the

50
HeatWave component as implemented by the design. That discussion
applies equally when evaluating the prominence of the design
component to the end product.
Because Seirus prominently incorporated the infringing design
into its products, and then amplified the presentation of the design
through marketing that emphasized the design, the jury had sufficient
evidence to find that the second DOJ factor supported Columbia.
3. The HeatWave fabric is not conceptually

separate from the liners and ski gloves
As the DOJ and the district court’s instruction both explain,
If a product contains other components that are

conceptually distinct, it may be appropriate to conclude
that the component is the article of manufacture. For
example, a bookbinding and the literary work contained
within it are conceptually distinct and different articles of
manufacture.
(Appx4222; DOJ Br., p. 29 (citing Bush & Lane Piano Co. v. Becker
Bros., 234 F. 79, 83 (2d Cir. 1916) (“Piano II”). This factor focuses on
functional consistency or separation. In Piano II, a piano’s mechanism
“served a function distinct from that of the case.” (DOJ Br., p. 20 (citing
Piano II at 81-82).)
In all of Seirus’s HeatWave ski glove products, the designed heat-
management material component is not conceptually separate from the

51
functions of the product sold to the consumer. A ski glove is intended to
perform one essential function: keep the user’s hands warm. The key,
distinguishing element in the accused products is the inclusion of a
heat-management material bearing the infringed design that enables
the glove to perform this function. While other pieces of the glove
support the HeatWave fabric and supplement this function, without the
HeatWave fabric as the entire inside surface, there is not a functional
glove that keeps the user’s hands warm.
Seirus’s own advertising confirms that the design element and the
function of the HeatWave fabric are “integrated” with the glove as a
whole (Appx6078), and the jury heard testimony that the gloves cannot
be disassembled (a fact the jurors could confirm for themselves), nor can
the heat-management material be separated and replaced. (Appx3628-
3629.) While insulation, a waterproof shell or other materials support
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
purpose of keeping hands warm. The HeatWave fabric is conceptually
identical to the purposes and function of the glove as a whole.

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.
4. The physical relationship between the design

and the product as a whole
While HeatWave fabric as a raw material is produced exclusively
for Seirus in rolls, Seirus directs that the HeatWave fabric be re-
manufactured as a glove insert and then “integrated” (Seirus’s term)
into ski gloves as the dominant design and functional attribute of the
end product. (E.g., Appx6078.) The insulation is sewn to the HeatWave
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.
53
(Appx5304-Appx5306, Appx5316; see also Appx3628-3629.)

54
No witness testified that anyone had ever replaced the heat-
management lining in any of these gloves. The jury was able to handle
the gloves themselves, and had ample basis to conclude that the
physical relationship between the design and the product as a whole
indicated that the relevant article of manufacture was the product as a
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
were single-component products, the HeatWave products were the
relevant “articles of manufacture to which [the HeatWave] design ... has
been applied” under the instructions provided to the jury. Cf. 35 U.S.C.
§ 289.
The Jury Had Substantial Evidence to Find that

Seirus’s Profits on the Products Incorporating
HeatWave Fabric were $3,018,174.
The jury also had substantial evidence from which to award
Seirus’s total profits on the ski gloves even were the HeatWave glove
lining considered the only possible article of manufacture. That is
because Columbia presented substantial evidence that the profits

55
attributable to the HeatWave fabric were the profits that Seirus earned
on the accused products as a whole.
In the context of a multi-component product, a patent holder is
entitled to disgorgement of “profits ... calculated on the whole machine
[where] the entire value of the whole machine, as a marketable article,
is properly and legally attributable to the patented feature.” Garretson
v. Clark, 111 U.S. 120, 121 (1884). Thus, “where the entire commercial
value of the mechanism arises from the patented improvement[,] the
owner of the patent will be entitled to recover from the infringer the
total profits derived from the ... sale of such mechanism.”
Carborundum Co. v. Electric Smelting & Aluminum Co., 203 F. 976,
982 (3rd Cir. 1913). “[T]his rule applies although the mechanism
without such patented improvement may not be wholly worthless.” Id.
Sales of entire products can be attributable to a single, patented
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]
56
... undertaking results from the use of the invention, the patentee will
be entitled to recover the entire profits.”). A patent holder can establish
that a patented feature drove demand for product sales by relying on
the defendant’s own marketing materials “showing that the patented
feature was important to the defendant’s ability to compete in the
market.” Interwoven, Inc. v. Vertical Computer Sys., No. CV-10-04645
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
infringer’s own marketing materials show that it “market[ed] 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
the importance of the patented feature, Fonar, 107 F.3d at 1552-53,
there is substantial evidence that the patented invention drove market
demand for the patented products as a whole.
Here, Seirus concedes the importance and dominance of the
HeatWave material components.7 Columbia’s proffered evidence
7 Seirus concedes that the HeatWave fabric is the key technological

feature of the HeatWave products and that this patented component is
heavily emphasized in Seirus’s promotion of this line of products, which
has been Seirus’s fastest growing line every year since its introduction.
(Appx5996; see also Appx6128.)
57
establishes that Seirus’s marketing and promotional materials tout the
value of the HeatWave fabric, and the profits attributable to the sale of
HeatWave fabric are thus the total sales from HeatWave products.
The hangtag directly affixed
to HeatWave products is most
telling. (Appx5471.) At trial, Mr.
Scott Trepanier explained that the
ubiquity of the wavy pattern on
the hangtag serves as a visual cue
to draw consumers toward the
HeatWave fabric. (Appx1888-
1889.) The remainder of the
hangtag describes the beneficial
features of the HeatWave fabric,
and at the top portion of the hangtag, within a reflective-embossed
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
HeatWave fabric can be found.

58
Seirus makes the same claims in its product catalogs (App5584;
Appx6073; Appx5623; Appx5626), and testimony confirmed the
prominence and reliance upon the message of performance attributable
to the HeatWave fabric. (Appx1890 (“Clearly Heatwave is the primary
message.”); Appx1894-1895 (“Seirus uses the wavy lines ... to associate
that design with Heatwave.” (referencing Appx6073)); Appx1891
(referencing Appx5615).)
59
(Appx5585, Appx6061; Appx1893; Appx2286.) Notably, the only
promoted “component” is that made from the HeatWave fabric.
Given the substantial evidence that the HeatWave fabric drove
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
from the HeatWave products to the HeatWave fabric.
IV. The Court Correctly Allocated the Burdens of Proof for the
Recovery of “Total Profit” Under 35 U.S.C. § 289.
Section 289 is a disgorgement statute. It grants a design patentee
the right to recover the infringer’s “total profit” received from the
infringer’s “application” of a patented design to an “article of
manufacture” that the infringer “sells or exposes for sale” to the public.
Congress specifically enacted Section 289 to relieve the design patentee
of any burden to apportion the design patent damages remedy to “the

60
design” benefits or to show that use of the design “caused” any injury to
the patentee. Samsung, 137 S. Ct. at 433.
Disgorgement remedies contrast with “damages” remedies.
Damages, such as those available under 35 U.S.C. § 284 for both design
and utility patent infringements, is a compensatory remedy that seeks
to make the patentee whole from injuries caused by the infringement.
That compensatory purpose gives rise to specific requirements of proof
of injury and causation.
Disgorgement statutes and common law disgorgement remedies—
typically styled as an accounting for the wrongdoer’s profits—are, in
contrast, restitutionary, and therefore share different principles of
purpose and proof. Their overriding goal is to deprive the wrongdoer—
here, Seirus—of all benefit from its wrongful conduct, regardless of
causal injury. Nike Inc. v. Wal-Mart Stores, Inc., 138 F.3d 1437, 1448
(Fed. Cir. 1998) (Section 289 requires disgorgement “such that []
infringers retain no profit from their wrong.”); Bergstrom v. Sears,
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).
That goal is implemented by a well-recognized allocation of the burdens

61
of proving disgorgement profits, whether the disgorgement principle is
applied by statute as in trademark,8 copyright,9 and design patent
cases,10 by common law restitution remedies for the recovery of a
wrongdoer’s profits,11 or through government enforcement actions.12
8 Trademark, 1946: “In assessing profits, the plaintiff shall be required

to prove defendant’s sales only; defendant must prove all elements of
cost which are claimed.” 15 U.S.C. § 1117(a) (2008). Trademark, 1905:
Law of Feb. 20, 1905, ch. 592, § 19, 33 Stat. 723, 729 (1905) (same).
9 Copyright, 1978: innocent party need only prove “gross revenue” after
which “the infringer is required to prove ... deductible expenses and
the elements of profit attributable to elements other than the
copyrighted work.” 17 U.S.C. § 504(b) (2010). Copyright, 1947: Law of
July 30, 1947, ch. 2, § 101(b), 61 Stat. 652, 661 (1947) (substantively
identical). Copyright, 1909: Law of Mar. 4, 1909, ch. 320, § 25(b), 35
Stat. 1075, 1081 (1909) (same).
10 Design patent, 1952: Innocent party entitled to recover “total profit”
from infringer’s “sale or exposure for sale” of an “article of manufacture”
to which the patented design has been “applied” by the wrongdoer. 35
U.S.C. § 289. Design Patent, 1887: unchanged, Law of Feb. 4, 1887, ch.
105, 24 Stat. 387 (1887); Henry Hanger & Display Fixture Corp. v. Sel-
O-Rak Corp., 270 F.2d 635, 643 (5th Cir. 1959) (burden of avoidance of
lost profits is on the defendants); Bergstrom, 496 F. Supp. at 497; In re
AI Realty Mktg. of N.Y., Inc. 293 B.R. 586, 618 (Bankr. S.D.N.Y. 2003)
(“...the burden shifts to the infringer to demonstrate the nature and
amount of the costs as well as their relationship to the infringing
product.), aff’d on this issue, sub. nom. Sunbeam Prods. v. Wing Shing
Prods. (BVI) Ltd., 311 B.R. 378 (S.D.N.Y. 2004).
11 The common law action for disgorgement of profits was styled an
“accounting” for unlawful profits and applies the same burden shifting
rules. Robert Bosch, LLC v. Pylon Mfg. Corp., 719 F.3d 1305, 1309-10
(Fed. Cir. 2013); Restatement 3rd of Restitution and Unjust Enrichment
§51 (2011).
62
Under the disgorgement allocation of the burdens of proving
recoverable profit, the innocent party has only the burdens of
production and persuasion to make an initial showing of the gross
revenues received by the wrongdoer and their connection with the
infringement (design patent, copyright, trademark) or other wrongful
conduct (e.g., government enforcement actions, common law). Upon
meeting this burden, the patent owner has satisfied a prima facie case
for disgorgement of profits and both burdens shift. Contrary to Seirus’s
unsupported arguments, Section 289 dictates the specific burden for the
patentee: the patentee must prove that the infringer sold or exposed for
sale to the public and profited from an article of manufacture bearing
the infringing design. The district court clearly and correctly instructed
the jury on Columbia’s burden to provide this proof. (Appx4222-4223,
Appx4366-4363.) Columbia unquestionably carried that burden of
production and persuasion. (Appx3766-3767; Appx 6068; Appx 6064.)
12Enforcement actions by government seeking disgorgement also follow

the same burden shifting rules, SEC v. First City Financial Corp., 890
F.2d 1215, 1231 (D.C. Cir. 1989); SEC v. Platforms Wireless Int’l Corp.,
617 F.3d 1072, 1096 (9th Cir. 2010) (same), including disproof of causal
connection to wrongdoing; SEC v. Bilzerian, 29 F.3d 689, 697 (D.C. Cir.
1994); SEC v. Whittemore, 744 F. Supp. 2d 1, 8 (D.D.C. 2010) aff’d 659
F.3d 1 (D.C. Cir. 2011); United States SEC v. Halek, 537 F. App’x 576,
581 (5th Cir. 2013).
63
Columbia’s prima facie case was satisfied.
Disgorgement principles permit the wrongdoer to avoid this proof
only by carrying the burdens of production and persuasion that the
innocent party’s profits as proved are incorrect or excessive. Section
289 has always been interpreted to require the wrongdoer to carry the
burdens of production and persuasion as to any reductions in avoidance
of the innocent party’s prima facie proof of recoverable profits. See
n. 10, supra. The same principles logically apply equally, or with even
greater force, where the wrongdoer contends that its total profit should
not be measured by the articles of manufacture it sold to the public
bearing the infringing design, but by a lesser part of those articles.
The determination of the relevant article of manufacture arises
under, and only under, Section 289, the disgorgement statue. It is
inextricably intertwined, where applicable, with the measurement of
the profit to be disgorged. The same principles that gave rise to the now
well-established shifting of the burdens of production and persuasion to
determine the measure of total profits—equity, the infringer’s ready
access to information about its products and their costs, and a purpose
64
to assure no wrongful profit is retained—apply equally to the
determination of the relevant article of manufacture.
Since the adoption of Section 289’s predecessor statute in 1887, no
court has applied to the patent holder the burden of persuading the jury
of the inappropriateness of a lesser profit, as Seirus urges here. See,
e.g., Henry Hanger, 270 F.2d at 643 (burden of establishing expenses on
avoidance of lost profits is on the defendants).13 Moreover, this
paradigm, requiring the infringer to bear the burden of proving any
deductions from its total profits, including a claim that the design is
applied to something other than the article of manufacture it sells to
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
law.”); Campbell v. United States, 365 U.S. 85, 96 (1961) (fairness
dictates). The infringer is best positioned to identify alleged costs that
it claims should be deductible from the prima facie proof of “total
profits” as well as any alleged different article of manufacture
13Henry Hanger is the earliest case Columbia has been able to identify
addressing the burdens under Section 289 or its predecessor statute.
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
because such is “peculiarly within [defendant’s] knowledge.”); see also
DOJ Br., p. 31 (defendant “has superior knowledge of the identity of the
[defendant’s] product’s components ...”).
Seirus asks this Court to apply rules of proof developed under the
very different purposes of section 284 to up-end 100 years of established
procedures developed under section 289 and its predecessor statute that
are consistent with both statutory and common law rules for proof of
disgorgement. See Callaghan, 128 U.S. at 666 (“it is the defendants
who are responsible for having blended the lawful with the unlawful,
and they must abide the consequences”) (citing Mawman v. Tegg, 2 Eng.
Reports, 385 (1826)). No justification is proffered for such sweeping
new rules.
Seirus acknowledged and accepted application to this case of the
well-established disgorgement paradigm and its shifting burdens of
proof under Section 289. (Appx1538, citing approvingly Schnadig, 620
14Seirus argues that modern discovery practices grant the patentee

equal access to the infringer’s complete information. Yet, in its four-
days-before-trial disclosure, Seirus failed to provide information on this
very issue. See discussion, infra, at 16-18.
66
F.2d at 1172.) Additionally, Seirus’s requested jury instructions
acknowledged that Seirus was required to carry the burdens of both
production and persuasion to show additional, if any, deductions from
the patentee’s prima facie proof of the gross profits received from sales
of the infringing articles to the public. (Appx1538-1531.) Those
burdens apply equally to the issue of the relevant article of manufacture
arising under the same statute and do not change because the jury
rejected Seirus’s alleged proof. The district court properly instructed
the jury on Seirus’s burden of proof in light of Columbia’s prima facie
proof of Seirus’s total profits from the infringement.
V. Seirus Failed to Satisfy Even the Lesser Burden of

Production, Rendering its Objection on the Burdens of
Proof Harmless
The burden of production has two critical parts in the context of
Section 289. First, the burden of production requires a defendant to
timely identify a lesser component of the accused infringing product
that it claims is a relevant “article of manufacture.” Second, Seirus
must timely identify competent evidence sufficient to permit a
reasonable jury to find and reliably allocate total profit to that
alternative article of manufacture. Sabrah v. Lucent Techs., 1998 WL

67
792503, *4 (N.D. Tex. Nov. 6, 1998) (“The burden of production requires
more than an assertion--it requires evidence.”) (emphasis added)).
Seirus never met either prong of this initial burden of production, and
thus any error is harmless.
Seirus Failed to Identify a Legally-Sufficient,

Alternate “Article of Manufacture.”
Seirus argues that the relevant “article of manufacture” was the
raw HeatWave material as sold by Ventex in large rolls and shipped to
Seirus’s designated manufacturer in China for further processing into
the finished products imported and sold by Seirus.
But the HeatWave fabric on the dock in South Korea is not a
“component” of the infringing products sold by Seirus in the United
States. There are no rolls of fabric “on the dock” in Seirus’s gloves.
Instead, the raw material is transformed into something else, before it
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
a glove lining before it is incorporated into the finished glove product.
Seirus’s identification of the raw material fails to account for how the
68
good is imported into the United States as a finished product, which is
the focus of design patent infringement.
Seirus Failed to Provide Sufficient Evidence in

Support of its Defective Disgorgement Theory
Regardless of what lesser article of manufacture may qualify for
purposes of Section 289, Seirus failed to produce competent evidence
from which a jury could ascertain the profits for that article.
To identify the profits attributable to various components, Seirus’s
and Ms. Distler’s methodology relied on dividing the respective costs of
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
qualitative analysis) as a proxy for the profits allocable to the
HeatWave fabric—simply multiplying the resulting percentage by
Seirus’s profits for the sale of each product.
By doing so, Seirus allocated all of the intangible costs to the
denominator. But the Supreme Court expressly rejected the contention
that intangibles are components to which profits could be allocated,
holding that “[a] component of a product ... is a thing made by hand or
machine.” Samsung, 137 S. Ct. at 435 (emphasis added). And for a
single-component product, the Supreme Court stated that all profits

69
are to be disgorged, notwithstanding that single component products
still have intangible costs and multiple pieces in creating them.
Therefore, the Supreme Court rejected an approach where profits can
be bifurcated between profits made from the “components,” which are
subject to disgorgement, and profits allegedly made on intangible
contributions.15 However, that is exactly what Seirus did. Using this
approach, Seirus has asserted that only 37-42% of the profits for a
product made 100% of HeatWave fabric are attributable to the
HeatWave fabric—the rest of the profits, it asserts, were made on
intangibles such as labor. Seirus’s approach is legally flawed. And it
used this flawed approach for all of its products.
Moreover, because it essentially produced only two cost values—(i)
HeatWave fabric as a raw material, and (2) a “black box” with
everything else, including intangibles—Seirus failed to produce
evidence to support any other analysis. See discussion, infra, at 16-18.
All of the more detailed financial information was requested by
Columbia. But Seirus refused to respond to discovery requests for the
15 Unallocated labor, profits, import duties, know-how, marketing

materials, and the like are not “components” of a multi-component
article of manufacture.
70
information and failed to produce the costs for each of the raw
materials, as would have been necessary to complete the analysis that
Seirus relied upon at trial.
It is not enough for Seirus to simply point at a lesser “component”
in an article of manufacture to carry its burden of production. That
“component” must, unto itself, be legally supportable as an “article of
manufacture.” Moreover, whatever the component, Seirus must
produce evidence from which profits attributable to that component can
be ascertained. Seirus failed in both regards. Its failure to carry its
burden of production moots any issue regarding the allocation of the
burden of persuasion to prove an alternate article of manufacture.
Rocket Jewelry Box, Inc. v. Quality Int’l Packaging, Ltd., 250 F. Supp.
2d 333, 341 (S.D.N.Y. 2003) (defendant failed to produce sufficient
evidence to permit finding different than injured party’s prima facie
case), vacated in part on other grounds, 90 F. App’x 543 (Fed. Cir. 2004).
VI. Conditionally, Should the Court Remand the Disgorgement

Analysis for any Reason, it Should Remand with
Instructions that it be Decided by the Court, Not a Jury
In advance of trial, Columbia moved that all issues concerning
disgorgement of profits—article of manufacture and attributable

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
disgorgement analysis for any reason, it should do so with instructions
that all issues concerning the application of Section 289 be tried by the
bench.
Section 289’s right to and remedy of disgorgement of profits is
purely equitable. Chauffeurs, Teamsters & Helpers, Local No. 391 v.
Terry, 494 U.S. 558, 570 (1990) (“we have characterized damages as
equitable where they are restitutionary, such as in ‘action[s] for
disgorgement of improper profits’…”); Petrella v. MGM, 134 S. Ct. 1962,
1967 n. 1, 1978-79 (2014) (disgorgement under Copyright Act is an
“equitable” remedy); SCA Hygiene Prods. Aktiebolag v. First Quality
Baby Prods., LLC, 137 S. Ct. 954, 964 (2017) (accounting of profits in
patent law was an “equitable” remedy); Reebok Int’l, Ltd. v. Marnatech
Enters., 970 F.2d 552, 559 (9th Cir. 1992).
The Supreme Court has held that this doctrine applies where a
patent statute allows for disgorgement of profits. Packet Co. v. Sickles,
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
72
statute for utility patent infringement. Congress patterned 35 U.S.C.
§ 289 after that statute. Samsung, 137 S. Ct. at 433; DOJ Br., pp. 12-
13.
For equitable remedies, it is a well-established rule that there is
no right to a jury trial on any disputed factual issues. Am. Universal
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
predicate facts to the remedy of disgorgement” under the Sarbanes-
Oxley Act); Am. Calcar, Inc. v. Am. Honda Motor Co., 651 F.3d 1318,
1333 (Fed. Cir. 2011).
No different rule applies under Section 289. SCA Hygiene, 137 S.
Ct. at 964. The question of the relevant “article of manufacture” is
simply one predicate finding inextricably intertwined with the measure
of disgorgement and, as such, must be decided by the court. Cf., e.g.,
Teva Pharms. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 835 (2015).
Should this Court remand design patent infringement issues, the
Court should order that all issues related to Columbia’s claim for
73
disgorgement shall be tried to the Court.
COLUMBIA’S REPLY ON APPEAL
Columbia largely relies on its opening brief arguments and takes
this opportunity to reply to a few specific issues. In particular, Seirus
has failed to overcome Columbia’s arguments that:
 Fottinger fails to disclose the “innermost surface” limitation

 Fottinger fails to disclose “discrete heat-directing elements, each
independently coupled” to the base material
 Fottinger fails to disclose the “3:7 to 7:3” ratio limitation
 The other prior art of record fails to fill these gaps
 Seirus failed to provide sufficient evidence of a motivation to
combine
 The jury was not properly instructed
 The Court erred in transferring the case to California
I. Reply Concerning the ’270 Utility Patent
Overview.
The claims in this case recite heat directing elements on the
innermost surface of body gear in a coverage ratio of 30-70% to reflect
body heat back to the wearer. Prior to Mr. Blackford’s invention, that
had never been done.
A critical issue at trial was whether the prior art taught the 30-
70% coverage ratio. Even assuming, arguendo, that Fottinger’s binder
was heat reflective, Fottinger taught no more than a 5-40% coverage
ratio, and recommended that, to avoid “undesirable stiffening,” and

74
“impair[ing]” “the transfer of moisture,” the coverage should be limited
to “[p]referably ... 10 to 20%.” (Appx4135 1:79, 1:84-94; 1:105-106.)
Thus, Fottinger teaches away from a coverage ratio that extends up to
70%.
The jury also heard substantial evidence concerning the interplay
between heat reflectivity and breathability in a garment, which made
the 30-70% coverage range critical and unexpected. For example, the
jury heard that conventional knowledge was that covering fabric with
heat reflective elements would have a linear effect on breathability—
the more that was covered, the less breathable it would be. The jury
heard testimony that Mr. Blackford discovered the surprising result
that the coverage ratio has a linear relationship with respect to heat
reflectivity, but a non-linear relationship with respect to breathability,
resulting in an optimal coverage range of 30-70%.
The jury also heard that none of the other asserted prior art
related to heat direction. The district court granted summary
judgment, establishing as the law of the case prior to trial, that neither
Blauer, Halley, Vaughn, or Worley concerned heat direction or
reflectivity. Worley, for example, disclosed covering fabric with a non-

75
heat-reflective substance in a ratio of 1-100%, clearly failing to
anticipate Mr. Blackford’s optimal range of 30-70% coverage. Halley
and Vaughn both disclosed 30-70% coverage of abrasion resistant dots
on fabric, but the coverage ratio was based having enough coverage to
resist abrasion when the garment is pulled over other clothing (see
Appx4152 ¶ [0045])—neither is concerned with heat reflection or
balancing heat reflection with water vapor permeability.
Seirus takes one portion of testimony out of context. Columbia’s
expert was asked whether Mr. Blackford invented “the idea of 30- to 70-
percent coverage.” (Appx3731.) Of course, Mr. Blackford did not invent
the idea of 30-70 percent coverage in a vacuum. Halley and Vaughn
both disclosed 30-70% coverage of something on fabric. Dr. Cole was
asked, in the abstract, about that range. She answered without
reference to the varying concerns about heat reflection and
breathability that “somewhere around the middle is where you probably
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-
70% coverage ratio of heat reflecting elements on the innermost surface
of a garment, which was supported by substantial evidence at trial.

76
Seirus’s Introduction of False Evidence Necessitates a

New Trial.
It is against this background that Seirus decided to introduce false
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
the offending demonstrative exhibit containing new (but incomplete)
opinions well into the trial, and Columbia had moved that such new,
previously undisclosed opinions be excluded from trial. The district
court heard oral argument. Seirus convinced the court that the new
opinion should be allowed on the percent coverage in Dr. Block’s
hitherto undisclosed graphic illustration, because it was “math that a
high schooler could do.” (Appx3203.) Seirus only disclosed to the judge
that the number fell somewhere in the 5-40% range. Id. (emphasis
added.)
Seirus claims that it “didn’t hide anything.” (Seirus-Br. p. 66.)
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
percent coverage of about 18%, as that would have contradicted its
position before the jury).

77
Moreover, on cross examination, Dr. Block insisted that his 36%
analysis was right. Columbia’s attorneys tried to get Dr. Block to
acknowledge that he had misrepresented the “unit cell” in the dot
pattern, which resulted in his erroneous math. Dr. Block was
indignant: for pages and pages of testimony (Appx3325-3334), Dr. Block
argued that Columbia’s attorneys were “not correct” (Appx3330), “don’t
understand what a unit cell is” (Appx3330), and “don’t know what
you’re talking about” (Appx3332), used basic calculations of the areas of
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
concedes before this Court—the testimony was all false.
It is chutzpah to call this “an innocent mistake.” (Cf. Seirus-Br. at
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
witness stand. Such tactics are hardly innocent.

78
Seirus’s Misconduct Cannot Be Excused by

Speculation that the Jury Ignored the False
Testimony.
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
statements] on the jury and its findings.” Rather, it is “impossible
accurately to appraise the extent to which the jury relied on testimony
tainted by” falsehoods. Fraige v. Am.-Nat. Watermattress Corp., 996
F.2d 295, 299 (Fed. Cir. 1993). Instead, a new trial is required when a
party taints the trial with false testimony.
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
79
approach. Fraige, 996 F.2d at 297 (rejecting the theory that “there were
two other grounds, independently sustainable, on which the jury made
findings which support the judgment.”). Moreover, the Supreme Court
has held that such speculation is improper. Minneapolis, S. P. & S. S.
M. R. Co. v. Moquin, 283 U.S. 520, 521-22 (1931). Instead, when false
testimony going to a critical issue is presented at trial, a new trial is
required.
On no ground could the error be considered harmless. As
discussed above, this was a critical issue at trial and substantial
evidence supported Columbia’s position on validity. When the false
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).
The Violation of the Federal Rules is Clear.
It is beyond refute that admission of Dr. Block’s previously-
undisclosed, now-admittedly false testimony violated the Federal Rules
of Civil Procedure (Rules 26(a)(2)(B)(i) & (iii); and 37(c)(1)), the Federal
Rules of Evidence (702) and Supreme Court precedent (see Daubert v.
Merrell Dow Pharms, Inc., 509 U.S. 579 (1993)). Nonetheless, Seirus
80
argues that this Court should ignore those violations and allow a jury
verdict based on this testimony to stand.
Seirus’s argument would set a dangerous and remarkable new
precedent—that parties can introduce surprise, false evidence that
violates the Rules at trial, and as long as there is an opportunity to
cross-examine a witness about it, any jury verdict should stand. Such a
position would sanction trial by ambush and thus undermine the
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.
The District Court’s Failure to Properly Instruct the

Jury Independently Requires a New Trial.
As explained in the opening brief, in this very context—
determination whether the prior art taught a specific claimed range of
values—the Court failed to give an essential jury instruction. Columbia
asked for two jury instructions, and the judge gave neither. Instead, all
guidance as to the anticipatory effect of a prior art range on a claimed
range was provided by none other than Dr. Block, which was given with
his false testimony. After testifying wrongly that Fottinger discloses a
specific 36% coverage, Dr. Block opined for the jury, over Columbia’s
81
objection16, on the legal standard: “[It]s my understanding that if you
have a portion of a range, you have disclosed the entire range.”
(Appx3258.) That standard was false, exacerbating the prejudice
caused by his false opinions. This Court’s precedent is clear: merely
disclosing a portion of a range does not anticipate the range. Atofina v.
Great Lakes Chem. Corp., 441 F.3d 991 (Fed. Cir. 2006) (range of 150 to
350°C does not anticipate a range of 330 to 450°C).
Columbia offered a correct standard, which the Court rejected.
Columbia first offered proposed Jury Instruction 33, which explained
the law in the context of the disputes in the case. (Appx1567-68.) Jury
Instruction 33 was accurate. Seirus has failed to identify any issue
with proposed Jury Instruction 33. It instead attempts to shift the
focus on proposed Jury Instruction 32, which is not in dispute in this
appeal. (See Columbia-Br. p. 32 (citing Appx1567-68, Jury Instruction
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
guidance was given the jury on this critical issue.
16Columbia objected to all testimony concerning the demonstrative

exhibit. (Dkt. 335.)
82
After the district court rejected Instruction 33 and invited a
revised instruction, Columbia offered an instruction stating simply that
a prior art range only anticipates an overlapping range if the skilled
artisan would “understand the range in the prior art to disclose the
range in the patent.” (Appx1667.) That instruction was also accurate, a
point that Seirus again does not dispute. (See Seirus-Br. p. 63.)
The Court rejected that requested instruction, too, instead
instructing only that “each and every limitation of the claim must be
present within a single item of prior art.” (Appx4241.) Particularly
given Dr. Block’s false testimony and improper legal opinions, this
instruction provides no guidance to the jury on this critical issue. Such
a failure was error that necessitates a new trial.
II. In the Event of Remand, the Court Should Transfer the

Case to the District of Oregon
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).
Judge Hernandez considered non-rule-based waiver at length and
categorically found that Seirus waived its venue defense. (Appx1640-
41.) Nonetheless, believing incorrectly that transfer was mandatory if
TC Heartland was an intervening change in the law, venue was moved.

83
(Appx1641-1648.) Micron holds that legal conclusion was error. There
is nothing further for consideration on remand. To the extent this
Court remands, it should accept the district court’s unchallenged
determination that Seirus waived its venue defense, and remand with
instructions to transfer the case back to Oregon.
CONCLUSION
For the reasons explained above, this Court should affirm the
district court’s grant of summary judgment of infringement of the D’093
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.
Dated this 18th day of September, 2018.
Respectfully submitted,

David W. Axelrod
Nicholas F. Aldrich, Jr.
Sara Kobak
Schwabe, Williamson & Wyatt
1211 S.W. Fifth Avenue, Suite 1900
Portland, OR 97204
daxelrod@schwabe.com
naldrich@schwabe.com
skobak@schwabe.com
Telephone: 503-222-9981
84
Attorneys for Plaintiff-Appellant

Columbia Sportswear
North America, Inc.
CERTIFICATE OF COMPLIANCE
1. This brief complies with the type-volume limitation of
Federal Rule of Federal Circuit Rule 32(a) because this brief contains
13,989 words, excluding the parts of the brief exempted by Fed. R. App.
P. 32(f).
2. This brief complies with the typeface requirements of Fed. R.
App. P. 32(a)(5) and the type style requirements of Fed R. App. P.
32(a)(6) because this brief has been prepared in a proportionally spaced
typeface using Microsoft Word 2016 in 14 point Century Schoolhouse.
Dated: September 18, 2018.

Nicholas F. Aldrich
ii
CERTIFICATE OF SERVICE
I hereby certify that a copy of the RESPONSE AND REPLY
BRIEF OF APPELLANT COLUMBIA SPORTSWEAR NORTH
AMERICA was served by the Appellate CM/ECF System, on the 18th
day of September, 2018, on the following parties:
Christopher S. Marchese (SBN

170239)
marchese@fr.com
Seth M. Sproul (SBN 217711)
sproul@fr.com
Oliver J. Richards (SBN 310972)
orichards@fr.com
Craig E. Countryman
countryman@fr.com
Tucker N. Terhufen
terhufen@fr.com
Fish & Richardson P.C.
12390 El Camino Read
San Diego, CA 92130
Tel: 858-678-5070
Attorneys for Defendant/Cross-

Appellant Seirus Innovative
Accessories, Inc.
By: /s/ Nicholas F. Aldrich

Nicholas F. Aldrich
PDX\106477\239332\NFA\23894844.2

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Case: 18-1329 Document: 37 Page: 1 Filed: 09/18/2018

Case Nos. 18-1329, -1331, -1728

UNITED STATES COURT OF APPEALS

COLUMBIA SPORTSWEAR NORTH AMERICA, INC.,

SEIRUS INNOVATIVE ACCESSORIES, INC.,

Appeals from the United States District Court

RESPONSE AND REPLY BRIEF OF

AMENDED CERTIFICATE OF INTEREST

Pursuant to Federal Circuit Rule 47.4, counsel for Appellant

Columbia Sportswear North America, Inc. (“Columbia”) certifies:

1. The full name of every party or amicus curiae represented by

me is: Columbia Sportswear North America, Inc.

3. All parent corporations and any publicly held companies

represented by me are: Columbia Sportswear Company.

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

agency or amicus curiae, or are expected to appear in this Court, are:

SCHWABE, WILLIAMSON & WYATT P.C.: David W. Axelrod, Nicholas

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

be directly affected by this court’s decision in the pending appeal is:

Columbia Sportswear North America, Inc., et al. v. Ventex Co.,

Dated this 18th day of September, 2018.

/s/ Nicholas F. Aldrich

AMENDED CERTIFICATE OF INTEREST ............................................. i

AMENDED STATEMENT OF RELATED CASES ...............................xiii

COUNTERSTATEMENT OF THE ISSUES ............................................. 1

COUNTERSTATEMENT OF THE CASE................................................. 3

I. The D’093 Patent...................................................................... 3

ARGUMENT ............................................................................................. 23

I. Standards Governing Summary Judgment on Design

Seirus’s Argument about Orientation Is Legally

The Ordinary Observer Is the Retail Consumer of

III. The Jury’s Verdict Was Not Excessive and Was

Even if Considered Multi-Component Products,

1. The scope of the design ........................................ 44

2. The relative prominence of the design

3. The HeatWave fabric is not conceptually

4. The physical relationship between the

The Jury Had Substantial Evidence to Find that

IV. The Court Correctly Allocated the Burdens of Proof for

Seirus Failed to Provide Sufficient Evidence in

VI. Conditionally, Should the Court Remand the

I. Reply Concerning the ’270 Utility Patent ............................. 73

Seirus’s Introduction of False Evidence

Seirus’s Misconduct Cannot Be Excused by

The Violation of the Federal Rules is Clear. ............... 79

The District Court’s Failure to Properly Instruct

II. In the Event of Remand, the Court Should Transfer the

In re AI Realty Mktg. of N.Y., Inc.

Am. Calcar, Inc. v. Am. Honda Motor Co.,

Am. Universal Ins. Co. v. Pugh,

Apple Inc. v. Samsung Elecs. Co.,

Apple Inc. v. Samsung Elecs. Co.,

Arminak & Assocs. v. Saint-Gobain Calmar, Inc.,

Atofina v. Great Lakes Chem. Corp.,

Bergstrom v. Sears, Roebuck and Co.,

Bose Corp. v. JBL, Inc.,

Braun Inc. v. Dynamics Corp. of Am.,

Bush & Lane Piano Co. v. Becker Bros.,

Campbell v. United States,

Carborundum Co. v. Electric Smelting & Aluminum Co.,

Chauffeurs, Teamsters & Helpers, Local No. 391 v. Terry,

Concrete Pipe & Prods. v. Constr. Laborers Pension Trust,

Cornucopia Prods., LLC v. Dyson Inc.,

Crocs, Inc. v. Int’l Trade Com’n,