Nordock Pretrial Report

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IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF WISCONSIN

NORDOCK, INC. ) ) Plaintiff, ) ) v. ) ) SYSTEMS, INC. ) ) Defendant. )

CIVIL ACTION: 11-CV-0118 District Judge Rudolph T. Randa Magistrate Judge William E Callahan

PLAINTIFF'S FINAL PRETRIAL REPORT

Pursuant to Eastern District of Wisconsin Local Rule 16(c), Plaintiff, Nordock, Inc.

(herein “Plaintiff” or “Nordock”) hereby files its Pretrial Report.

A. SUMMARY OF CASE

Nordock was founded in 2001 and is a relative newcomer to the established dock leveler

industry – an industry dominated by three manufacturers (i.e., Rite-Hite, 4Front Engineered

Solutions, Inc. and Systems, Inc. "Systems"). Although a variety of manufacturers sold a variety

of dock levelers throughout the United States, Nordock developed a distinctive front end design

with a lip, lug and header plate arrangement not previously sold in the United States. Many dock

leveler consumers recognize Nordock’s distinctive front end design, much like many automobile

consumers recognize the distinctive front end of a particular automobile. Nordock obtained U.S.

Patent No. D579,754 (“the ‘754 Design Patent”) for its distinctive front end design. Although the

‘754 Design Patent issued November 4, 2008, this design patent receives the benefit of a

December 23, 2002 filing date for Nordock’s original U.S. patent application disclosing the

distinctive front end lip, lug and header plate design. Systems does not dispute the December 23,

2002 priority date of the ‘754 Design Patent.

Case 2:11-cv-00118-RTR Filed 02/18/13 Page 1 of 12 Document 128

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This litigation arises from Systems’ unabashed adoption of Nordock’s proprietary and

patented dock leveler front end design. Although Systems had a 40-year history of making

levelers with a front end “piano hinge” design, in early 2005 Systems obtained a copy of

Nordock’s original patent disclosing its new front end design, and in October 2005 started selling

dock levelers with a highly similar front end “lip, lug and header plate” design (Accused

Leveler). After Nordock’s ‘754 Design Patent issued on November 4, 2008, and prior to filing

this litigation, Nordock advised Systems of its ‘754 Design Patent, and tried to persuade Systems

to modify its Accused Levelers starting May 19, 2009. Nordock sent Systems letters advising it

of the ‘754 Design Patent, and addressing Systems’ assertions that the ‘754 Design Patent was

invalid. These efforts went unheeded. Systems has stalwartly refused to make any changes to its

Accused Levelers, and maintains that the patent is invalid, unenforceable and not infringed. No

other loading dock manufacturer has followed Systems down this path.

Under U.S. law, Nordock’s ‘754 Design Patent is presumed valid unless Systems proves

otherwise by clear and convincing evidence. Systems simply refuses to consider the wide

variety of dock leveler front end designs that demonstrate that the “overall appearance” of

Nordock’s front end design of the ‘754 Patent is ornamental, and not de jure functional. Systems

also fails to identify a “primary reference” necessary to invalidate a U.S. design patent. The

various alternate designs and the high degree of similarity between the ‘754 Design Patent and

Systems’ Accused Leveler render infringement undeniable.

Systems’ unfair competition is equally undeniable. In 2005/2006, without Nordock’s

authorization or consent, Systems adopted Nordock’s front end design trade dress for Systems’

Accused Levelers. The high degree of similarity between Nordock’s front end design and

Systems front end design, combined with the fact that the goods are sold in the same channels of


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trade to identical consumers, creates a likelihood of confusion by dock leveler consumers.

Moreover, Systems is using Nordock’s front end design trade dress on its lower end levelers,

which misleads consumers to think they are obtaining a higher end leveler of the type sold by

Nordock when in fact they are obtaining a lower end Systems leveler. Prior to Systems’ first sale

of its Accused Levelers, Nordock had, through its continuous sale of dock levelers incorporating

its distinctive front end design, acquired product configuration trade dress rights to this design as

dock leveler consumers had come to recognize that design as indicating the source of the leveler

as made by Nordock, endorsed or sponsored by Nordock, or associated with Nordock.

Notwithstanding, these product configuration trade dress rights, Systems adopted a confusingly

similar dock leveler front end design.

B. STATEMENT OF ISSUES

This is an action for patent infringement under 35 U.S.C. §271 (Count I), federal unfair

competition under 15 U.S.C. §1125 (Count II), common law unfair competition (Count III), and

unfair methods of competition or unfair deceptive acts or practices under Wisconsin Statute

§§100.18 and 100.20 (Count IV) against Systems, Inc. (“Systems”). Discovery is closed.

Under patent law, Nordock’s ‘754 Design Patent is presumed valid unless Systems

proves otherwise by clear and convincing evidence. Systems wildly asserts that the ‘754

Design Patent is invalid for obviousness, anticipation or lack of ornamentation.

To date, Systems has failed to meet even the threshold step necessary to assert the

invalidity of the ‘754 Design Patent based on anticipation or obviousness. To date, Systems has

not identified a “primary reference” upon which it could even begin to make an invalidity

assertion, let alone prove it by clear and convincing evidence. As explained in Nordock’s

Summary Judgment motion, Systems has failed meaningfully respond to Nordock’s


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Interrogatory Nos. 15 and 16, and has not identified a primary reference or the date it learned of

that primary reference.

Systems asserted the ‘754 Design Patent is invalid based on Crawford and Combursa

references that allegedly constitute prior are that disclose Nordock’s claimed deign. However,

Systems failed to show that either reference was published prior to December 23, 2002. In fact,

Systems failed to identify any publication date for these references. Accordingly, the Crawford

and Combursa references are not prior are that can be used to assert the invalidity of the ‘754

Design Patent.

Systems attempts to overcome its Crawford and Combursa publication date shorfalling

by throwing Norbert Hahn “under the bus” and having him testify that he saw a Hafa leveler

with a front end design that looks similar to the Crawford leveler at a Hanover, Germany trade

show in the mid-1990s. According to Systems, his return to the United States constitutes a basis

for invalidating the ‘754 Design Patent. Yet, when questioned at his deposition, Mr. Hahn said

he was not aware of any brochure to substantiate what he recalls seeing in Hanover about 20

years ago, and could not identify anyone to corroborate the appearance of the front end of that

leveler, or that such a leveler even existed. Mr. Hahn was also not able to remember or describe

the details of the design he saw in Hanover, and was unable to draw a perspective or front view

of the front end design he saw in Hanover. Mr. Hahn also stated he has been a friend of Mike

Pilgraim, a shareholder of Systems, for many years, that Mr. Pilgrim asked him for his “knee

jerk” thoughts about the ‘754 Design Patent, and that he was surprised that Systems listed him as

a witness in this case.

Systems relies on its asserted technical expert, Patent Attorney Adam Brookman, to

assert the ‘754 Design Patent is invalid because the claimed design lacks ornamentation.


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Systems’ reliance on Brookman is flawed for several reasons. First, the Federal Circuit has

stated that allowing a Patent Attorney (with experience similar to Brookman) to testify about the

validity or infringement of a patent is reversible error.

Second, Brookman himself is a listed co-inventor of two “cutting board” design patents

that clearly contradict his opinion that the ‘754 Design Patent lacks ornamentation. According to

Brookman, the only possible feature other than the shape of a single small groove in an edge of

the cutting board is the rounded corners of the board. Yet, notwithstanding his years of

experience as a patent attorney, he signed a declaration attesting that these two cutting board

designs contain sufficient ornamentation for design patent protection. Moreover, Brookman

stated under oath that the advertising brochures lauding the benefits of the groove in the cutting

board do not necessarily invalidate these cutting board design patents. This flatly contradicts

Brookman’s opinion that the ‘754 Design Patent is invalid for lack of ornamentation because

Nordock’s brochures state a benefit of using a header plate to reinfocce the underside of the deck

of a dock leveler.

Third, Brookman admits his June 20, 2012 Report fails to mention Chapter 1500 “Design

Patents” of the Manual of Patent Examining Procedure (“MPEP”), which is used by the U.S.

Patent & Trademark Office Examiners to review the allowability of design patent applications.

Brookman also admits patent examiners are considered persons of ordinary skill in the art, and

that they are presumed to have done their job properly. Notwithstanding these presumptions,

Brookman admits he only reviewed the very same references listed on the cover and page 2 of

the ‘754 Design Patent, and that each of these references were already considered by the U.S.

Patent & Trademark Office prior to its allowance of the ‘754 Design Patent.


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Fourth, Brookman improperly asserts that Claims 36-41 of a co-pending parent “utility”

patent application shows the ‘754 Design Patent is invalid for lack of ornamentation. This

allegation is without merit and contradicts Brookman’s own practice. MPEP clearly states

examiners are to consider parent patents when reviewing a design patent. Brookman admits that

the parent patents and applications are listed in the first sentence of the application for the ‘754

Design Patent, and that he has no evidence that the examiner did not read this sentence or do her

job properly to support his paid opinion that the patent is invalid due to Claims 36-41. Brookman

admits that many ornamental features shown in the ‘754 Design Patent are not required by

Claims 36-41. Brookman’s own practice also contradicts his opinion. Bookman has obtained

design patent protection for a napkin holder based on a co-pending parent utility patent showing

describing and claiming the same napkin holder.

Fifth, Brookman admits the deck and deck beams shown in the ‘754 Design Patent are in

dotted lines, and thus are not part of the claimed design. Yet Brookman’s opinion finds that an

admittedly unclear statement in the specification of the co-pending patent utility application

regarding a benefit of using a header plate is to reinforce the deck renders the ‘754 Design Patent

invalid for lack of ornamentation. Brookman also fails to provide any reason why the Patent

Examiner would not have considered this and the fact that the deck is shown in dotted lines,

particularly given MPEP 1504.01(c). Pages 1-3 and 5 of the Examiner’s October 31, 2007 Office

Action refer to Application No. 11/179,941 and acknowledges Nordock’s claim to priority. In

addition the “Response Acknowledge” section of the June 23, 2008 Notice of Allowability for

Design Application refers to Application No. 11/179,941 and acknowledges that this ‘941

Application provides antecedent basis for the parts shown in the current application.


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Systems’ infringement is clearly established by comparing the overall appearance of the

front end design of Systems’ Accused Leveler to the claimed design of the ‘754 Design Patent.

This comparison establishes a high degree of similarity between the overall appearance of the

front ends of the Accused Levelers and the ‘754 Design Patent. Ordinary observer witnesses will

further demonstrate that purchasers are misled by this high degree of similarity into thinking the

front end design of the Accused Levelers is that of the ‘754 Design Patent.

Systems infringement is willful. Systems’ vice president, Mike Pilgrim, admits he was

aware of Nordock in about 2003. Systems also admits it was aware of Nordock’s December 23,

2002 patent application, which ultimately issued as the ‘754 Design Patent by at least early 2005,

well prior to Systems’ first sale of its Accused Levelers in 2006. In spite of this knowledge,

Systems obtained no opinion of counsel upon which a reasonable individual could rely to

proceed with launching its Accused Levelers. Nordock also marks its products with its ‘754

Design Patent. In spite of this marking, as well as Nordock’s written May 2009 notice letter and

follow up pre-litigation correspondence, Systems has made no change to its Accused Levelers.

With respect to Nordock’s unfair competition counts, Nordock will present evidence of

its extensive marketing and advertising displaying its distinctive “front end design” for its dock

levelers. Nordock will also present witness testimony to the distinctive nature of this front end

design and that prospective customers have come to associate that distinctive front end design

with a single source, namely Nordock, and that Systems’ unauthorized adoption and use of its

distinctive front end design causes prospective consumers to mistakenly believe that its dock

levelers, with their highly similar front end design, are associated with or sponsored by Nordock.

Systems provides no survey evidence to contradict the secondary meaning and likelihood of

confusion testimony by Nordock witnesses.


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C. WITNESSES

See attached “Plaintiff’s Witness List.”

D. BACKGROUND OF NORDOCK EXPERTS 1. Qualifications of Professor Steven C. Visser as an expert witness in industrial design

and the ornamental appearance of products of industry and the Validity of the ‘754 Design Patent and its Infringement by Systems .

Professor Visser received a Masters of Fine Art in Industrial Design in 1988 from the

University of Illinois at Urbana-Champaign. Professor Visser is currently a tenured Full

Professor at Purdue University in the area of Industrial Design. He has four design patents and

three utility patents. He has designed a variety of products as an industrial designer for

companies including, Samsung, Delta Faucet, Klipsch Audio, Ansco, and Shure Microphones.

Of particular interest in this case, which is about a commercial product, he has designed several

commercial products, including a rotary assembly table for Raven engineering, track lighting for

Omega Lighting (Philips), a Radio Frequency Meter for Trilithic, Inc. and a blood analyzer for

Coulter, Inc.

Professor Visser is an Industrial Designer. Sometimes Industrial Designers are confused

for Industrial Engineering. This is due to how similar the names sound. However, they are rather

far apart on what they do. According to Webster’s Unabridged Dictionary Industrial Design is

“the art that deals with the design problems of manufactured objects, including problems of

designing such objects with consideration for available materials and means of production, of

designing packages, bottles, etc. for manufactured goods, and graphic design for manufactured

objects, packages, etc.” On the other hand Industrial Engineering is “engineering applied to the

planning, design and control of industrial operations.”


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Profeesor Visser’s design work has been recognized nationally and internationally. He

has received recognition in international design competitions, including the following: Award of

Excellence in the Taiwan International Design Competition, two Opus Awards in an

International eyewear design competition from Japan, a silver IDEA Award in the USA, and

Second Place in Neste Forma Finlandia 3 International Plastic Design Competition.

Professor Visser’s designs have been exhibited both nationally and internationally.

Locations include the following: the Chicago Antheneum, the Cooper Hewitt National Design

Museum (Smithsonian) in New York, the Groninger Museum (Netherlands), Veletrzni Palác

Prague (Czech Republic), and the Biennale Internationale Design 2000 and 2002 sponsored by

the Museum of Modern Art in Saint-Étienné (France). And the Museum of Modern Art in New

York.

2. Qualifications of Dr. Stanley V. Smith as an expert witness of Damages

Economist Stan V. Smith is President of Smith Economics Group in Chicago, a national

economic consulting firm offering a broad range of consulting services and litigation support in

economics and finance. For over two decades, Dr. Smith has assisted thousands of law firms

nationwide in successful results for both plaintiffs and defendants, including the U.S.

Department of Justice, in all types of commercial cases, personal injury cases, employment

cases, credit damage cases, etc.

Dr. Smith’s work on intellectual property cases includes calculations of loss of sales and

profits and reasonable royalties. He has worked on various patent infringement cases, including

Quick Tag, Inc. v. Stallman & Pollock, et al and Huntair v. Climatecraft Inc., and trade dress and

trade secret cases including Kaiser, et al. v. The Pampered Chef, et al.


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Trained in economics at the world-acclaimed University of Chicago, Dr. Smith taught the

first course nationwide in Forensic Economic Damages at De Paul University, based on his

textbook, Economic/Hedonic Damages, which has also been used at other college and

universities. He has presented his concepts of damages at the annual meetings of the American

Bar Association, the Defense Research Institute, at many dozens of state bar and state trial

lawyer association meetings, on Larry King, and other media programs. Dr. Smith received his

Master's Degree and Ph.D. in Economics from the University of Chicago and his B.S. Degree

from Cornell University. He has written numerous articles appearing in the ABA Journal, the

Journal of Forensic Economics and elsewhere. He and his work have been profiled on the front

page of The Wall Street Journal and The National Law Journal, as well as in the ABA Journal,

Larry King Live, Trial, Best Lawyers in America: Experts Directory, in many law review

articles, The Atlantic Monthly, and elsewhere.

E. EXHIBIT LIST

See attached “Plaintiff’s List of Exhibits.”

F. DEPOSITION TRANSCRIPT DESIGNATIONS

See attached “Plaintiff’s Deposition Transcript Designations.”

G. ESTIMATE OF TIME NEEDED FOR TRIAL

Nordock estimates that it will take two days to present its case-in-chief, and that the

duration of the trial will be four days, not counting jury deliberation.

H. JURY TRIAL

(i) Proposed Voir Dire Questions

See attached “Plaintiff’s Proposed Voir Dire Questions.”

(ii) Proposed Jury Instructions


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See attached “Plaintiff’s Proposed Jury Instructions.”

(iii) Proposed Verdict Form

See attached “Plaintiff’s Proposed Verdict Form.”

Dated: this 18th day of February, 2013.

Respectfully submitted,

SOKOL LAW OFFICE Counsel for Plaintiff Nordock, Inc. s/Jeffrey S. Sokol Jeffrey S. Sokol

P.O. ADDRESS: 828 North Broadway Milwaukee, WI 53202 414.272.7200 (telephone) 414.272.7204 (facsimile) CO-COUNSEL: O'NEIL, CANNON, HOLLMAN, DeJONG & LAING S.C. Gregory W. Lyons 111 East Wisconsin Avenue, Suite 1400 Milwaukee, Wisconsin 53202 Phone 414.276.5000


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CERTIFICATE OF SERVICE

I hereby certify that on February 18, 2013, I electronically filed an un-redacted version of the foregoing with the Clerk of the Court using the ECF system which will send notification of such filing to the following:

Philip P. Mann Mann Law Group Seattle Tower 1218 3rd Avenue, Ste. 1809 Seattle, WA 98101

David A. Affeldt Affeldt Law Offices 8741 W National Ave West Allis, WI 53227 John Whitaker Whitaker Law Group Seattle Tower 1218 3rd Avenue, Ste 1809 Seattle, WA 98101

COUNSEL FOR NORDOCK, INC.

Jeffrey S. Sokol /s/Jeffrey S. Sokol

Sokol Law Office 828 North Broadway Milwaukee, WI 53202 (414) 272-7200





PLAINTIFF'S WITNESS LIST

Plaintiff, Nordock, Inc., (“Nordock”), pursuant to Fed. R. Civ. P. 26(a)(3)(A) makes its

required disclosures as follows:

1. Plaintiff intends to call the following individuals:

a. Denis Gleason Nordock, Inc. 405 Lake Road, Unit #2 Bowmanville, Ontario Canada L1C 4P8

b. Shawn Ward Nordock, Inc. W278 N2697 Rocky Point Road Pewaukee, WI 53072

c. Jim Flatley Flatley Corporation 3026 Helsan Drive, Unit B Richfield, WI 53076

d. Professor Steven C. Visser Steve Visser Design 2472 Gala Ct. West Lafayette, IN 47906

e. Dr. Stan V. Smith, PhD. Corporate Financial Group, Ltd. 1165 N. Clark Street, Suite 600 Chicago, IL 60610

Case 2:11-cv-00118-RTR Filed 02/18/13 Page 1 of 4 Document 128-1

2. Plaintiff’s may call the following individuals:

f. William, Weber Weber Company 8140 Mayfield Road Chesterland, OH 44026

g. Mark Miller Hodge Material Handling 7465 Chavenelle Rd. Dubuque, IA 52002

h. Tom Barlow BCI 832 Hwy 64 East Conway, AR 72032

i. Dan Sewell Best Handling Systems 595 Spice Islands, Dr#5 Sparks, NV 89431

i. Dan Bernacki Dan’s Overhead Doors 1810 Hwy 965 NW North Liberty, IA 52317

k. Kirby Moore Northern Dock Systems 1200 Aerowood Dr., Unit 44 Mississauga, Ontario L4W 2S7

l. Stan Fluit Speedtech 3364 Quincy Street Hudsonville, MI 49426

m. Larry Goodall Toyota Material Handling 31010 San Antonio Street Hayward, CA 94544

n. Rick Spitznagel Tri-State 6145 Rose Petal Drive Cincinnati, OH 45247


o. Edward McGuire (adversely) Systems, Inc. W194 N11481 McCormick Drive Germantown, WI 53022

p. Mike Pilgrim (adversely) Systems, Inc. W194 N11481 McCormick Drive Germantown, WI 53022

q. Gerald Palmersheim (adversely) Systems, Inc. W194 N11481 McCormick Drive Germantown, WI 53022

r. Richard Bero N16 W23217 Stone Ridge Drive RidgeView Office Center I Suite 250

Nordock reserves the right to call as a witness any person identified in Systems’ witness

list, either in its case in chief or rebuttal.

















PLAINTIFF’S DEPOSITION TRANSCRIPT DESIGNATIONS

Trial Date March 18, 2013

Ed McGure 6/18/12 from

(page:line) to

(page:line) 45:13 45:18

Ed McGuire 4/17/12

from (page:line)

to (page:line)

123:3 123:5 123:22 123:22 124:16 124:20 125:15 125:20 126:21 126:25 128:23 129:5

8:5 8:5 26:15 26:17 88:17 89:24

Pilgrim 4/18/12

from (page:line)

to (page:line)


96:23 97:10 100:12 100:16 100:21 100:21 105:20 106:5 109:8 109:12 109:19 110:1 111:25 112:21 170:10 170:12 171:14 171:18 165:9 168:4 175:15 175:18 176:9 176:16 220:11 220:19 221:5 221:11 241:6 241:13 97:5 97:12

Hahn

from (page:line)

to (page:line)

17:2 17:11 18:14 18:24 57:23 58:5 156:15 156:18 14:21 15:2 176:1 176:25 6:20 6:23 89:9 89:11 94:19 94:25 185:21 186:2 94:22 95:19 263:16 263:18 265:21 265:25 222:3 222:7 37:2 37:4 227:4 227:8 97:13 97:19 106:6 106:11 107:7 107:9


237:21 237:23 111:17 112:23

Brookman

from (page:line)

to (page:line)

192:3 192:4 193:19 194:1 206:2 206:5 77:18 77:24 125:8 125:13 83:20 83:22 182:1 190:25 60:4 60:11

Bero 8/24/12

from (page:line)

to (page:line)

73:24 75:8 79:21 80:6

Palmersheim

from (page:line)

to (page:line)

43:17 43:21 55:14 55:20 61:9 61:13 61:19 62:8 118:9 119:8


Dated: this 18th


day of February, 2013.

SOKOL LAW OFFICE Counsel for Plaintiff Nordock, Inc.

Jeffrey S. Sokol s/Jeffrey S. Sokol

P.O. ADDRESS828 North Broadway

:

Milwaukee, WI 53202 414.272.7200 (telephone) 414.272.7204 (facsimile)

CO-COUNSEL

:

O'NEIL, CANNON, HOLLMAN, DeJONG & LAING S.C. Gregory W. Lyons 111 East Wisconsin Avenue, Suite 1400 Milwaukee, Wisconsin 53202 Phone 414.276.5000




Philip P. Mann

Seattle Tower Mann Law Group

1218 3rd Avenue, Ste. 1809 Seattle, WA 98101

David A. Affeldt

8741 W National Ave

Affeldt Law Offices

West Allis, WI 53227

John Whitaker

Whitaker Law Group Seattle Tower 1218 3rd Avenue, Ste 1809 Seattle, WA 98101





PLAINTIFF'S PROPOSED VERDICT FORM

We the jury, unanimously agree to the answers to the following questions and return

them under the instructions of this Court as our verdict in this case.


FINDINGS ON NORDOCK’S CLAIMS NORDOCK’S ‘754 DESIGN PATENT CLAIM AGAINST SYSTEMS 1. For each of the following products, has Nordock proven by a preponderance of the

evidence that Systems has infringed the ‘754 Design Patent?

Please answer in each cell with a “Y” for “yes” (for Nordock), or an “N” for “no” (for Systems).

Accused Levelers Yes/No

LHP 6’ Wide 7’ Wide

LMP

6’ Wide 7’ Wide

LHD

6’ Wide 7’ Wide

LMD

6’ Wide 7’ Wide

2. If you answered “Yes” to any product listed in Question 2, and thus found that

Systems has infringed the ‘754 Design Patent, has Nordock proven by clear and convincing evidence that Systems’ infringement was willful?

Please answer in each cell with a “Y” for “yes” (for Nordock), or an “N” for “no” (for Systems).

Accused Levelers Yes/No


LMP

6’ Wide 7’ Wide

LHD

6’ Wide 7’ Wide

LMD

6’ Wide 7’ Wide

3. Has Systems proven by clear and convincing evidence that Nordock’s ‘754 Design

Patent is invalid?

Yes (not valid –for Systems) ______ No (valid – for Nordock) ______


NORDOCK’S TRADE DRESS CLAIMS AGAINST SYSTEMS Protectability 4. Has Nordock proven by a preponderance of the evidence that Nordock’s

unregistered trade dress is protectable? Please answer with a “Y” for “yes” (for Nordock), or with an “N” for “no” (for Systems).

Asserted Trade Dress Yes/No Front End of

INDUSTRIAL 6’ Wide 7’ Wide

Front End of DUAL DUTY

6’ Wide 7’ Wide

Front End of AIRDOCK

6’ Wide 7’ Wide

Front End of HEAVY DUTY

6’ Wide

7’ Wide Front End of

COLDSTORAGE 6’ Wide 7’ Wide

5. If you found Nordock’s unregistered trade dress protectable, for each of the

following products, has Nordock proven by a preponderance of the evidence that Systems has infringed Nordock’s unregistered trade dress.

Please answer with a “Y” for “yes” (for Nordock), or with an “N” for “no” (for Systems).

Asserted Trade Dress Yes/No Front End of

INDUSTRIAL 6’ Wide 7’ Wide

Front End of DUAL DUTY

6’ Wide 7’ Wide

Front End of AIRDOCK

6’ Wide 7’ Wide

Front End of HEAVY DUTY

6’ Wide

7’ Wide Front End of

COLDSTORAGE 6’ Wide 7’ Wide


DAMAGES TO NORDOCK FROM SYSTEMS (IF APPLICABLE) 6. What is the total dollar amount that Nordock is entitled to receive from Systems on the

claims on which you have ruled in favor of Nordock? $_____________________________________. 7. For the total dollar amount in your answer to Question 6, please provide the dollar

breakdown by product.

Accused Levelers Amount


LMP

6’ Wide 7’ Wide

LHD

6’ Wide 7’ Wide

LMD

6’ Wide 7’ Wide

















PLAINTIFF'S PROPOSED VOIR DIRE QUESTIONS

Trial Date: March 18, 2013 1. Have you ever tried to obtain a design patent, utility patent or trademark registration from

the U.S. Patent and Trademark Office, or a copyright registration from the U.S. Copyright Office?

If so: What was the subject matter of the patent, trademark or copyright? Did you obtain the patent, or trademark or copyright registration? Did you ever enforce your patent, trademark or copyright against anyone? 2. Do you believe U.S. patents and copyrights promote the progress of the Sciences and

useful Arts? If not, Why? 3. Have you or a member of your family ever had any dealings with the United States Patent

and Trademark office? 4. Do you have any opinions regarding the United States Patent and Trademark office,

either positive or negative? 5. Have you or any of your relatives ever worked for a company that manufactured or sold

dock levelers? 6. Have you ever bought a dock leveler?

If so: When did you purchase it? What company made the dock leveler?

7. Have you ever used a dock leveler? If so: When? How frequently? Do you know the brand or name of the manufacturer?


8. Are you familiar with more than one kind of loading dock leveler? If, so: What kinds or brands? 9. Have you ever worked on a loading dock? 10. Have you ever worked for a company where your job included transporting or unloading

material from or on to a loading dock? 11. Do you believe United States laws should apply equally to all persons and companies

doing business in the United States, regardless of whether the person lives in the United States or the company is a United States company?

12. Do you believe the United States should allow a Canadian company to have a U.S.

patent? 13. Do you believe a person or company should have the right to bring a lawsuit against

someone to protect his, her or its interests, and the need for the Court and Juries to ultimately decide the outcome?

14. Have you ever felt that there were circumstances when an inventor should not be entitled

to prevent others from making, using or selling his or her invention? 15. Does anyone have any medical condition, including any hearing or vision problems that

might interfere with your ability to adequately view or hear the evidence in this case? Dated: this 18th day of February, 2013.













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LIST OF EXHIBITS

Trial Date March 18, 2013

PLAINTIFF’S EXHIBIT INDEX DATE IDENTIFICATION DESCRIPTION OFFERS,

OBJECTIONS, RULINGS,

EXCEPTIONS

NOR SJ Motion Exhibit No. Witness

001 U.S. Patent No. 6,834,409 (Systems 4/17/12 Dep Ex 23) (NOR 4-29)

Q

002 U.S. Patent No. 7,013,519 (Systems 4/17/12 Dep Ex 24) (NOR 164-187)

003 U.S. Patent Appl. No. 11/179,941 (NOR 355-435)

004 U.S. Design Patent No. D579,754 Systems 4/17/12 Dep Ex 15) (NOR 437-442)

005 U.S. Patent Appl. No. 10/328,279 (‘409 Patent) (Brookman 8/23/12 Dep Ex 23) (NOR 91-157)

Q

006 U.S. Patent Appl. No. 29/288,137 (‘754 Design Patent) (Brookman 8/23/12 Dep Ex 24) (NOR 501-508)

U

006 Prosecution History of ‘754 Patent (‘137 Design Application) (Brookman 8/23/12 Dep Ex. 25) (NOR 436-508)

AS


2

008 Copies of 51 “References Cited” listed on page 1-2 of ‘754 Patent. (NOR 545 – 1139)

X

009 MPEP 1500 (Systems 4/17/12 Dep Ex 19) (NOR 1633-1694)

V

010 MPEP Section 706 and 2128 AAJ 011 Co-Pendency Chart

(Systems 4/17/12 Dep Ex 20) (NOR 1304-5 and 1310)

012 Assignment of U.S. Patent Appl. No. 10/328,279 (‘409 Patent) and all divisions and continuations thereof, Recorded with USPTO on 2/25/03. (NOR 1695-1697)

Q

013 Alternate Dock Leveler designs

(Not listed on ‘754 Design Patent) (NOR 1140-64 and BERO 382-493)

014 Systems alternate leveler designs, including the following with standard and gusseted piano hinge designs: - PoweRamp: PR, EH, VH, AP &CM - DLM: DA/AP, DH/EH, DM/CM/HM; - McGuire: HP/H, MA and MP (Systems 4/17-18/12 Dep Ex 6 &26) (NOR 1308-09) BERO148 and 502-509)

015 Alternate Dock Leveler Front End design, including (Systems 4/17/12 Dep Ex 7-14) (Brookman DepEx 21, 26-36 and 37).

C

016 Alternate Lug designs (Brookman 8/23/12 Dep Ex 32)

D

017 Alternate Header Plate designs E 018 Alternate Lip designs

(Also see BERO 524) F

019 Alternate Pivot Rod designs G 020 U.S. Patent No. 6,370,719 to

Alexander (NOR 965-972) I

021 Kelley, Blue Giant and Pentalift brochures (NOR 1609-32, esp 11, 17, 30-32)

Z

022 Genisys “open lug” dock leveler by


3

Rite Hite (Systems 4/18/12 Dep Ex 25) (NOR 1306-1307)

023 Systems 1/23/91 LHP Series Demonstration Outline states: Front Hinge-Piano style front lip hinge and Strongest dock leveler on market (BERO 534-37)

024-

043 Demonstrative Exhibits showing dock

levelers with Alternate front end designs.

044 LODAM “Dock Levers 101” (Systems 4/17/12 Dep Ex 5)

045 Penta Lift brochure discussing

attractive appearance (NOR 1630-31) J

046 Systems emails regarding its asserted

development of Accused Levelers (Systems 4/17/12 Dep Ex 3-4, 16-18, 30)

047 Systems Mrk Lobel email stating Nordock, Rite Hite and McGuire do not know what they are doing. To think they had figured out a better and cheaper mouse trap. “The nerve!!” (Systems 4/18/12 Dep Ex 30) (SI100519)

048 Dock Leveler rating capacities

(NOR 1454, 1456, 1617-18, 1624-25, 1629, 1631 and BERO 388, 400, 402, 426, 462, 482, 486, 499, 522, 529, 531, 533)

N

049 Nordock brochures INDUSTRIAL,

DUAL DUTY, HEAVY-DUTY (NOR 1457-60 and 1264-65)

P

050 Nordock INDUSTRIAL, HEAVY DUTY, COLDSTORAGE, SUPER DUTY and AIRDOCK brochures (NOR 1264-76)

051 List of Dock Leveler Manufacturers


4

(BERO 515-517) 052 Systems Brochures, User Manuals

and Photos showing its DLM levelers LMP, LHP, LMD and LHD Series (“Accused Levelers”), including - Complaint Exhibit 3 (Systems 4/17/12 Dep Ex 2) NOR 1619-22; (NOR 1243-44, 1311, 1461-71) (SI 100236-255, 263-314, 335-341) (BERO 382, 494-501 and 519-33)

053 Nordock photographs showing Accused Levelers, including NOR 1594-1602

054 Systems Video shown at 1/30/13 Claim Construction Hearing (Systems Exhibit 4 of CC Hearing)

055 Nordock Demonstrative Video showing operation of dock leveler.

056-075

Demonstrative Exhibits showing Accused Levelers infringement of ‘754 Design Patent

076 Pre-Litigation correspondence

(Systems 4/17/12 Dep Ex 21) (Brookman 8/23/12 Dep. Ex 20) (NOR 536-544 and BERO 379-381)

AAE

078 Mann’s 1/31/06 email to Systems

(SI300003) AAC

079 Mann’s 7/22/10 Letter to Systems (SI300001-2)

AAD

080 2010 Distributor Questionnaires

(Brookman 8/23/12 Dep. Ex. 4) (NOR 509-534)

AH

081 Complaint filed 1/28/11 082 Systems’ Initial Disclosures AZ 083 Systems’ Answers to Nordock

Interrogatory Nos. 1-20 and Supplements thereto

AB

084 Systems Responses to Nordock Document Request Nos. 1-40 and Supplements thereto


5

085 Systems alleged “Primary Reference” attempting to invalidate ‘754 Design (SI100800-940)

AE

086 U.S. Design Patents for Hinges that

Palmersheim and Hahn assert are entirely functional (no ornamentation) (NOR 1165-1207 and 1284-1303) (Systems 4/18/12 Dep. Ex. 34-46)

AM

087 Example U.S. Design patents (NOR 1284-1303)

088 Pilgrim 4/18/12 Dep Ex. 2, 15 and 25 AO 089 Hahn 8/24/12 Dep Ex. 1-6 AL 090 Web printout regarding 1998 Hafa-

Crawford Merger (NOR 1806-10) AQ

091 Declarations of Jim Flatley, William

Weber and Mark Miller AI

092 Professor Steven C. Visser 6/20/12

Report AT

093 Professor Steven C. Visser 7/20/12 Rebuttal Report

AU

094 Professor Steven C. Visser Curriculum Vitae

AAH

095 U.S. Design Patent Nos. D375,531 and Utility Patent No. 5,568,928 to Steven Visser for Video Game Controller for Exercise Machine (Visser CV, Exhibit 1, page 14)

096 Dr. Stan V. Smith 6/20/12 Damages

Report

097 Dr. Stan V. Smith 7/20/12 Rebuttal Report

098 Dr. Stan V. Smith 2012 Supplemental Damages Report

099 Dr. Stan V. Smith 2013 Supplemental Damages Report (Pending Supplemental Bero Report)

100 Stan V. Smith Curriculum Vitae 101 Systems Financial records for

Accused Levelers (Motion pending)


6

102 Bero 7/20/12 Damages Rebuttal

Report

103 Bero 2013 Supplemental Damages Rebuttal Report (Motion pending)

104 Bero subpoena served 8/_/12 105 Bero Schedule Workpapers

(BERO 1-144

106 Documents produced by Bero per his subpoena: - Walmart Sales: Nordock v Systems, including Walmart Dock Equip Spec listing “AirDock Air Powered Dock Lever by Nordock” (BERO 145-161) - Documents provided by Mike Pilgram, also including Walmart Dock Equip Spec listing “AirDock Air Powered Dock Lever by Nordock” (BERO 162-183) - Notes with Pilgrim for preparing Damages Report (BERO 282-285) - Bero’s Patent Infringement Damages: Lost Profits publication (BERO 201-228) - Bero’s Past Patent Damage Reports: a) Jore v. Kouvat, (BERO 184-195 b) Ashley Furniture (BERO 229-281) c) 4Front v Systems (BERO 286-336)

107 U.S. Patent No. D419,575 to Kouvato for Drill Bit

108 Lowes bid sheet requiring Lug Hinge

style dock leveler (Systems 4/18/12 Dep Ex 31) (NOR 1277-78)

109 U.S. Design Patent Nos. D507,463

and D512,281 to Brookman for Cutting Board, Signed Declarations, and Advertising Materials (Brookman 8/23/12 Dep. Ex. 11-14) (NOR 1503-09, 1585-93 &1603-08)

T

110 U.S. Patent Nos. D493,312, 7,543,719 and D590,213 for Napkin Holder prosecuted by Brookman (Brookman 8/23/12 Dep Exs 17-19) (NOR 1523-49)

AP


7

111 U.S. Design Patent No. D297,525 (The Baby Jogger) and Racing Stroller case (NOR 1707- 1805, esp. 1711-20, 29-36, 46-48, 50 and 61-63)

AR

112 Examples of U.S. Design Patents that are Continuations/Divisionals of U.S. Utility Patents (NOR 1312-1444)

113 U.S. Design Patent No. D496,233 and CIP U.S. Patent No. 7,621,572 for same Scoop and Sheath product (Brookman 8/23/12 Dep Exs 15-16) (NOR 1472-1502)

114 Lee v. Dayton Hudson case (Brookman 8/23/12 Dep Ex 22)

115 Brookman’s trademark book Section 6.07 comparing Trade Dress to Design Patents (NOR 1698-1706)

116 List of Patents prosecuted by Brookman (NOR 1518-22)

117 U.S.Design Patents prosecuted by Brookman (NOR 1550-84)

118 Nordock Damages Spread Sheet

(NOR 1254-63) AY

119 Nordock Engineering drawings for

dock levelers, production and range of motion drawings, 3/2002 invoice and INDUSTRIAL brochure (NOR 1279-83)

120 Systems Product Line Detail Report

for Lug Hinge –Hydraulic Sales all dates. (Systems 6/18/12 Dep. Ex 50) (SI100866-868)

121 Systems Product Line Detail Report for Lug Hinge –Mechanical Sales all dates . (Systems 6/18/12 Dep. Ex 51) (SI101010-1013)

122 DLM 2007 Product Price Catalog for LHD and LMD levelers (Systems 6/18/12 Dep. Ex 52)


8

(SI100231-235) 123 PoweRamp 2007 Product Price

Catalog for LHP and LMP levelers (Systems 6/18/12 Dep. Ex 53) (SI100249-254)

124 Dock Leveler Industry design patents

(Hahn 8/24/12 Dep. Ex. 1)

125 Systems owns several U.S. patents. (Systems 4/17/12 Dep Ex 1)

126 U.S. Patents issued to Pilgrim or

Palmersheim (Systems 4/18/12 DepEx 33 Fairborn) (NOR 1208-NOR 1242)

127 Prosecution History of ‘409 Patent

(‘279 Application) (NOR 001-157)

128 Prosecution History of ‘519 Patent (‘532 Application) (NOR 158-313)

129 Prosecution History of ‘941 Applic. (NOR 314-435)

130 Combursa brochure and patent

(Systems 4/18/12 Dep Ex 27-28) (Systems 6/18/12 Dep Ex 47) (Brookman 8/23/12 Dep Ex 7 &9-10) (Hahn 8/24/12 Dep Ex. 4)

131 Crawford brochures

(Systems 4/18/12 Dep Ex 29) (Brookman 8/23/12 Dep Ex 6) (Hahn 8/24/12 Dep Ex. 6)

132 Hafa

(Hahn 8/24/12 Dep Ex. 5)

133 Horrman brochure (April 2011) and

asserted “old version” installed about 1999-2000 at U.K. Post Office. (Systems 6/18/12 Dep Ex 48-49) (Brookman 8/23/12 Dep Ex 8)

134 All Exhibits of Record in this Case


9






10







UNITED STATES DISTRICT COURT EASTERN DISTRICT OF WISCONSIN

NORDOCK, INC.

Plaintiff, v. Case No. 11-cv-00118-RTR SYSTEMS, INC.,

Defendant.

PLAINTIFF'S PROPOSED LIST OF JURY INSTRUCTIONS Plaintiff, Nordock, Inc. (“Nordock”), by and through its attorneys, Sokol Law Office and

O’Neil, Cannon, Hollman, DeJong & Laing S.C., hereby provides the below list of jury

instructions, and which are attached hereto, to be provided to the jury at the trial of this action.

PRELIMINARY JURY INSTRUCTION I. The Nature of the Action and the Parties

A. United States Patents B. Patent Litigation

II. Contentions of the Parties III. Trial Procedure IV. Glossary of Patent and Trade Dress Terms

1.01 FUNCTIONS OF THE COURT AND THE JURY∗

1.02 NO INFERENCE FROM JUDGE’S QUESTIONS*

2.14 JUDGE’S COMMENTS TO LAWYER*

1.03 ALL LITIGANTS EQUAL BEFORE THE LAW*

1.04 EVIDENCE*

1.05 DEPOSITION TESTIMONY*

2.08 DEPOSITION AS SUBSTANTIVE EVIDENCE*

∗ Starred Jury Instructions correspond to and are taken from the Pattern Civil Jury Instructions of the Seventh Circuit.


1.06 WHAT IS NOT EVIDENCE*

1.07 NOTE-TAKING*

1.08 CONSIDERATION OF ALL EVIDENCE REGARDLESS OF WHO PRODUCED*

1.09 LIMITED PURPOSE OF EVIDENCE*

1.11 WEIGHING THE EVIDENCE*

1.13 TESTIMONY OF WITNESSES (DECIDING WHAT TO BELIEVE)*

1.17 NUMBER OF WITNESSES*

1.18 ABSENCE OF EVIDENCE*

1.21 EXPERT WITNESSES*

1.24 DEMONSTRATIVE EXHIBITS – MODIFIED*

1.27 BURDEN OF PROOF*

1.28 CLEAR AND CONVINCING EVIDENCE*

1.32 SELECTION FO PRESIDING JUROR; GENERAL VERDICT*

1.33 COMMUNICATION WITH COURT*

1.34 DISAGREEMENT AMONG JURORS*

SUMMARY OF PATENT AND TRADE DRESS ISSUES

7.1 CLAIM CONSTRUCTION – GENERALLY

7.2 CLAIM CONSTRUCTION FOR THE CASE (Modified)

8.1 DESIGN PATENT – INFRINGEMENT GENERALLY (Modified)

8.2 DIRECT INFRINGEMENT – KNOWLEDGE OF PATENT OR INTENT TO INFRINGE IS IMMATERIAL

8.3 DIRECT INFRINGEMENT

DESIGN PATENT DIRECT INFRINGEMENT – COMPARISONS

9.1 INVALIDITY CONTENTIONS OF THE PARTIES


9.2 SCOPE AND CONTENT OF PRIOR ART (Modified)

9.3 ANTICIPATION – A SINGLE REFERENCE OR A SINGLE PRODUCT

9.6 ANTICIPATION – PRIOR DESIGN BY ANOTHER (Modified)

DESIGN PATENTS – OBVIOUSNESS

9.8 OBVIOUSNESS – DIFFERENCES WITH THE PRIOR ART

9.9 DESIGNER OF ORDINARY SKILL IN THE ART

DESIGN PATENTS – INVALIDITY – LACK OF ORNAMENTALITY

DESIGN PATENT DAMAGES – BURDEN OF PROOF

DESIGN PATENT DAMAGES – DEFENDANT’S PROFITS

DESIGN PATENT DAMAGES – LOST PROFITS

DESIGN PATENT DAMAGES – LOST PROFITS – GENERALLY

DESIGN PATENT DAMAGES – LOST PROFITS – FACTORS TO CONSIDER

DESIGN PATENT DAMAGES – LOST PROFITS – AMOUNT OF PROFIT

DESIGN PATENT DAMAGES – REASONABLE ROYALTY

DESIGN PATENT DAMAGES – REASONABLE ROYALTY – DEFINITION

DESIGN PATENT DAMAGES – DATE OF COMMENCEMENT – PRODUCTS

8.6 WILLFUL INFRINGEMENT

TRADE DRESS INFRINGEMENT – INTRODUCTION

TRADE DRESS INFRINGEMENT – DEFINITION OF TRADE DRESS (15 U.S.C. § 1125(A))

TRADE DRESS INFRINGEMENT – PROTECTABILITY

TRADE DRESS INFRINGEMENT – PROTECTABILITY – DISTINCTIVENESS – SECONDARY MEANING

TRADE DRESS INFRINGEMENT – PROTECTABILITY – NON-FUNCTIONAL

REQUIREMENT


INFRINGEMENT – ELEMENTS AND BURDEN OF PROOF – TRADE DRESS (15 U.S.C. § 1125(A)(1)) TRADE DRESS INFRINGEMENT – SECONDARY MEANING – TIMING INFRINGEMENT – LIKELIHOOD OF CONFUSION – FACTORS –

SLEEKCRAFT TEST (15 U.S.C. §§ 1114(1) and 1125(A)) TRADE DRESS DAMAGES IN GENERAL TRADE DRESS DAMAGES – PLAINTIFF’S ACTUAL DAMAGES

(15 U.S.C. § 1117(A)) TRADE DRESS DAMAGES – DEFENDANT’S PROFITS (15 U.S.C. § 1117(A)) MONETARY REMEDIES – ONLY ONE RECOVERY PER ACCUSED SALE Nordock reserves the right to update this list of jury instructions and to add any additional

instructions as necessary based upon the Court’s rulings, if any, on the parties’ pre-trial filings.

Dated this 18th day of February, 2013.

SOKOL LAW OFFICE s/Jeffrey S. Sokol Jeffrey S. Sokol



PRELIMINARY JURY INSTRUCTION

Members of the jury:

Now that you have been sworn, I have the following preliminary instruction for your

guidance on the nature of the case and your role as jurors.

I. The Nature of the Action and the Parties

This is a design patent and product configuration trade dress case. The patent and trade

dress involved in this case relate to a loading dock leveler, and more particularly to the front end

design of the dock leveler.

Dock levelers are used to transfer goods between a building and a truck trailer. Dock

levers bridge the gap between the building floor to the bed of the trailer or similar carrier. Dock

levelers include a frame or support structure for mounting the leveler in a pit of a loading dock.

The rear end of a conventional dock leveler is hinged to the building floor. The opposite or front

end has an extendable lip that pivots out and onto the trailer bed. Levelers are adapted to move

from a generally horizontal position where the upper surface of the deck is flush with the surface

of the building floor to a second generally inclined position to provide a ramp between the bed of

the truck and the dock floor. The front end of the dock lever and its extendable lip can be raised

by either a hydraulic cylinder, an inflatable air bag or a mechanical spring.

This case pertains to the overall appearance of a design claimed by a design patent and

the claimed trade dress for the overall appearance of the front end of a dock leveler. For this

particular dock leveler, its front end is formed by a header plate, header lugs, lip plate, lip lugs

and a pivot rod that pivotally secure the lip plate to the deck of the dock leveler. During the trial,

the parties will offer testimony to familiarize you with this technology. For your convenience,

the parties have also prepared a glossary of some of the technical terms to which they may refer

during the trial, which will be distributed to you.


The Plaintiff is the owner of a U.S. design patent, which is identified by the Patent and

Trademark Office as Patent Number D579,754 and is entitled “Lip and Hinge Plate for a Dock

Leveler.” The D579,754 may be called “the ’754 Design Patent” or as the “Plaintiff’s Patent” or

“Nordock’s Patent.” Systems is the other party to this case.

A. United States Patents

Patents are granted by the United States Patent and Trademark Office (sometimes called

the “PTO”). A patent gives the owner the right to exclude others from making, using, offering to

sell, or selling the patented invention within the United States or importing it into the United

States. During the trial, the parties may offer testimony to familiarize you with how one obtains

a patent from the PTO, but I will give you a general background here.

To obtain a design patent, an application for a patent must be filed with the PTO. The

application includes a single claim, which is the design shown and described by the drawing

figures of the application. The purpose of the drawing figures is to set forth what the applicant

regards as the invention and to define the scope of the patent owner’s exclusive rights.

An application for a patent is reviewed by a trained PTO examiner. The examiner

reviews (or examines) the patent application to determine whether the claimed design is

patentable. In examining a patent application, the patent examiner searches records available to

the PTO for what is referred to as “prior art,” and he or she also reviews prior art submitted by

the applicant. A patent examiner is presumed to be one of ordinary skill in the art of the

invention for which the patent is being sought. When the parties are done presenting evidence, I

will give you specific instructions as to what constitutes prior art in this case. But generally it is

technical information and knowledge that was known to the public either before the invention by

the applicant or more than a year before the priority date of the patent application. The patent

examiner considers, among other things, whether each claim defines an invention that is new,


useful, and not obvious in view of this prior art. The PTO examiner also reviews the design

application to determine if the claimed design lacks ornamentation.

Following the prior art search and examination of the application, the PTO examiner

advises the applicant in writing what the patent examiner has found and whether the claimed

design is patentable (in other words, “allowed”). This writing from the patent examiner is called

an “office action.” More often than not, the initial office action by the patent examiner rejects

the claims. The applicant then responds to the office action to overcome any concern noted by

the patent examiner. This process may go back and forth between the patent examiner and the

applicant for several months or even years until the patent examiner is satisfied that the

application and claimed design are patentable.

In this case the priority date of the ‘754 Design Patent will be discussed. Under U.S. law,

an applicant can file an application for a new product with more than one inventive aspect. The

original application must show and describe each of the inventions claimed by the applicant for

the new product. The PTO examiner will then ask the application to elect one of the inventions

for examination via the original application. Then, while that original or first patent application

is pending, the applicant can file a second application for a second inventive aspect shown and

described in the original or parent application. The second or sibling application is then

examined by the PTO. When appropriate, an applicant can file a third, fourth or fifth application

to obtain protection on other inventive aspects to the new product. Provided each application is

co-pending with an earlier filed application and the applicant properly asserts priority on the

filing date of the earlier filed application or applications, the second, third, fourth or fifth

applications will legally be entitled to the priority of the filing date of the original application.

The collection of papers generated by the patent examiner and the applicant during this

time of corresponding back and forth is called the “prosecution history.” You may also hear the


“prosecution history” referred to as the “file history” or the “file wrapper.”

B. Patent Litigation

Someone is said to be infringing on claims of a design patent when they, without

permission from the patent owner, import, make, use, offer to sell, or sell the patented invention,

as defined by the claimed design, within the United States before the term of the patent expires.

A patent owner who believes someone is infringing on the exclusive rights of the patent may

bring a lawsuit like this to stop the alleged infringing acts and recover damages, which generally

is money paid by the infringer to the patent owner to compensate for the harm caused by the

infringement. The patent owner must prove infringement of the claims of the patent. The patent

owner must also prove the need for damages.

A granted patent is presumed to be valid. But that presumption of validity can be

overcome if the defendant presents clear and convincing evidence that proves the patent is

invalid. One example of a way in which the presumption may be overcome is if the PTO has not

considered, for whatever reason, invalidating prior art that is presented to you. A person sued for

allegedly infringing a patent can deny infringement and also can defend by proving the asserted

claims of the patent are invalid. The accused infringer must prove invalidity by clear and

convincing evidence. I will discuss more of this topic later.

I will now briefly explain the parties' basic contentions in more detail.

II. Contentions of the Parties

The Plaintiff contends that the Defendant makes, uses, offers to sell, or sells a dock

leveler that infringes its ‘754 Design Patent. The Plaintiff must prove that the Defendant

infringes the ‘754 Design Patent by a preponderance of the evidence. That means that the

Plaintiff must show that it is more likely that the Defendant's allegedly infringing products

infringe than do not infringe.


To determine infringement, you must compare the defendant’s accused products with the

design claimed by the ‘754 Design Patent. It will be my job to tell you what the claim of the

‘754 Design Patent covers. You must follow my instructions as to the meaning of the patent

claims.

A design patent is infringed if in the eye of an ordinary observer, giving such attention as

a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to

deceive such an observer, inducing him to purchase one supposing it to be the other, the first one

patented is infringed by the other.

The Defendant denies that it is infringing the ‘754 Design Patent. The Defendant also

contends that the ‘754 Design Patent is invalid. The Defendant believes the claimed design is

anticipated or rendered obvious by the prior art, and lacks any ornamentation.

Invalidity is a defense to infringement. Therefore, even though the PTO examiner has

allowed the claims of the ‘754 Design Patent, you, the jury, have the ultimate responsibility for

deciding whether the claimed design of the ‘754 Design Patent are valid. The Defendant must

prove invalidity by clear and convincing evidence. This is a higher standard than a

preponderance of the evidence, but it does not require proof beyond a reasonable doubt. Clear

and convincing evidence is evidence that shows it is highly probable that the claims are invalid.

III. Trial Procedure

We are about to commence the opening statements in the case. Before we do that, I want

to explain the procedures that we will be following during the trial and the format of the trial.

This trial, like all jury trials, comes in six phases. We have completed the first phase, which was

to select you as jurors. We are now about to begin the second phase, the opening statements.

The opening statements of the lawyers are statements about what each side expects the evidence

to show. The opening statements are not evidence for you to consider in your deliberations.


The evidence comes in the third phase, when the witnesses will take the witness stand

and the documents will be offered and admitted into evidence. In the third phase, the Plaintiff

goes first in calling witnesses to the witness stand. These witnesses will be questioned by the

Plaintiff's counsel in what is called direct examination. After the direct examination of a witness

is completed, the opposing side has an opportunity to cross-examine the witness. After the

Plaintiff has presented its witnesses, the Defendant will call its witnesses, who will also be

examined and cross-examined. The parties may present the testimony of a witness by reading

from their deposition transcript or playing a videotape of the witness's deposition testimony. A

deposition is the sworn testimony of a witness taken before trial and is entitled to the same

consideration as if the witness had testified at trial.

The evidence often is introduced piecemeal, so you need to keep an open mind as the

evidence comes in. You are to wait until all the evidence comes in before you make any

decisions. In other words, keep an open mind throughout the entire trial.

After we conclude the third phase, the lawyers again have an opportunity to talk to you in

what is called “closing argument,” which is the fourth phase. Again, what the lawyers say is not

evidence. The closing arguments are not evidence for you to consider in your deliberations.

The fifth phase of the trial is when I read you the jury instructions. In that phase, I will

instruct you on the law. I have already explained to you a little bit about the law. But in the fifth

phase of the trial, I will explain the law in much more detail.

Finally, in the sixth phase of the trial it will be time for you to deliberate. You can then

evaluate the evidence, discuss the evidence among yourselves and make a decision in the case.

You are the judges of the facts, and I decide the questions of law. I will explain the rules of law

that apply to this case, and I will also explain the scope of the ‘754 Design Patent. You must

follow my explanation of the law and the scope of the design claimed by the ‘754 Design Patent


even if you do not agree with me. Nothing I say or do during the course of the trial is intended to

indicate what your verdict should be.

IV. Glossary of Patent and Trade Dress Terms

Application – The initial papers filed by the applicant in the United States Patent and Trademark Office (also called the Patent Office or PTO).

Claim – The claim of a design patent is the design as shown and described by the design patent and its drawing figures.

De Jure Functional –See “lack of ornamentation” below.

File wrapper – See “prosecution history” below.

Functional –See “lack of ornamentation” below.

Lack of Ornamentation – A design with an overall appearance that is void of any ornamentation or so entirely dictated by functionality that alternative designs are not feasible.

License – Permission to use the patented invention(s), which may be granted by a patent owner (or a prior licensee) in exchange for a fee called a “royalty” or other compensation.

Office Action – Communication from the patent examiner regarding the patent application and/or the design claimed in the patent application.

Ordinary skill in the art – The level of experience, education, and/or training generally possessed by those individuals who work in the area of the invention at the time of the invention. PTO examiners are presumed to have ordinary skill in the art.

Patent Examiners – Personnel employed by the PTO in a specific technical area who review (examine) the patent application to determine (1) whether the claims of a patent application are patentable over the prior art considered by the examiner, and (2) whether the specification/application describes the invention with the required specificity.

Prior art – Knowledge that is available to the public either prior to the invention by the applicant or more than one year prior to the priority date of the application.

Prosecution history – The written record of proceedings between the applicant and the PTO, including the original patent application and later communications between the PTO and applicant. The prosecution history may also be referred to as the “file history” or “file wrapper” of the patent during the course of this trial.

Cited References – A reference consider by the PTO examiner when determining patentability. Cited References are not necessarily “Prior art.”

Specification – The information that appears in the design patent and concludes with a design patent claim. The specification includes the written text, the claim, and the drawing figures. The specification must show and describe the invention in sufficient detail to enable others skilled in


the art to practice the invention.


1.01 FUNCTIONS OF THE COURT AND THE JURY

Members of the jury, you have seen and heard all the evidence and arguments of the

attorneys. Now I will instruct you on the law.

You have two duties as a jury. Your first duty is to decide the facts from the evidence in

the case. This is your job, and yours alone.

Your second duty is to apply the law that I give you to the facts. You must follow these

instructions, even if you disagree with them. Each of the instructions is important, and you must

follow all of them.

Perform these duties fairly and impartially.

Nothing I say now, and nothing I said or did during the trial, is meant to indicate any

opinion on my part about what the facts are or about what your verdict should be.


1.02 NO INFERENCE FROM JUDGE’S QUESTIONS

During this trial, I have asked a witness a question myself. Do not assume that because I

asked questions I hold any opinion on the matters I asked about, or on what the outcome of the

case should be.


2.14 JUDGE’S COMMENTS TO LAWYER

I have a duty to caution or warn an attorney who does something that I believe is not in

keeping with the rules of evidence or procedure. You are not to draw any inference against the

side whom I may caution or warn during the trial.


1.03 ALL LITIGANTS EQUAL BEFORE THE LAW

In this case the parties are corporations. All parties are equal before the law. A

corporation is entitled to the same fair consideration that you would give any individual person.


1.04 EVIDENCE

The evidence consists of the testimony of the witnesses, the exhibits admitted in

evidence, and stipulations.

A stipulation is an agreement between both sides that certain facts are true or that a

person would have given certain testimony.


1.05 DEPOSITION TESTIMONY

During the trial, certain testimony was presented to you by the reading of depositions

and/or video. You should give this testimony the same consideration you would give it had the

witnesses appeared and testified here in court.


2.08 DEPOSITION AS SUBSTANTIVE EVIDENCE

A deposition is the sworn testimony of a witness taken before trial. The witness is placed

under oath to tell the truth and lawyers for each party may ask questions. The questions and

answers are recorded.

Deposition testimony is entitled to the same consideration and is to be judged, insofar as

possible, in the same way as if the witness had been present to testify.

Do not place any significance on the behavior or tone of voice of any person reading the

questions or answers.


1.06 WHAT IS NOT EVIDENCE

Certain things are not to be considered as evidence. I will list them for you:

First, if I told you to disregard any testimony or exhibits or struck any testimony or

exhibits from the record, such testimony or exhibits are not evidence and must not be considered.

Second, anything that you may have seen or heard outside the courtroom is not evidence

and must be entirely disregarded.

Third, questions and objections or comments by the lawyers are not evidence. Lawyers

have a duty to object when they believe a question is improper. You should not be influenced by

any objection, and you should not infer from my rulings that I have any view as to how you

should decide the case.

Fourth, the lawyers’ opening statements and closing arguments to you are not evidence.

Their purpose is to discuss the issues and the evidence. If the evidence as you remember it

differs from what the lawyers said, your memory is what counts.


1.07 NOTE-TAKING

Any notes you have taken during this trial are only aids to your memory. The notes are

not evidence. If you have not taken notes, you should rely on your independent recollection fo

the evidence and not be unduly influenced by the notes of other jurors. Notes are not entitled to

any greater weight than the recollections or impressions of each juror about the testimony.


1.08 CONSIDERATION OF ALL EVIDENCE REGARDLESS OF WHO PRODUCED

In determining whether any fact has been proved, you should consider all of the evidence

bearing on the question regardless of who introduced it.


1.09 LIMITED PURPOSE OF EVIDENCE

You will recall that during the course of this trial I instructed you that I admitted certain

evidence for a limited purpose. You must consider this evidence only for the limited purpose for

which it was admitted.


1.11 WEIGHING THE EVIDENCE

You should use common sense in weighing the evidence and consider the evidence in

light of your own observations in life.

In our lives, we often look at one fact and conclude from it that another fact exists. In

law we call this “inference.” A jury is allowed to make reasonable inferences. Any inference

you make must be reasonable and must be based on the evidence in the case.


1.13 TESTIMONY OF WITNESSES (DECIDING WHAT TO BELIEVE)

You must decide whether the testimony of each of the witnesses is truthful and accurate,

in part, in whole, or not at all. You also must decide what weight, if any, you give to the

testimony of each witness.

In evaluating the testimony of any witness, you may consider, among other things:

- the ability and opportunity the witness had to see, hear, or know the things

that the witness testified about;

- the witness’s memory;

- any interest, bias, or prejudice the witness may have;

- the witness’s intelligence;

- the manner of the witness while testifying;

- and the reasonableness of the witness’s testimony in light of all the evidence

in the case.


1.17 NUMBER OF WITNESSES

You may find the testimony of one witness or a few witnesses more persuasive than the

testimony of a larger number. You need not accept the testimony of the larger number of

witnesses.


1.18 ABSENCE OF EVIDENCE

The law does not require any party to call as a witness every person who might have

knowledge of the facts related to this trial. Similarly, the law does not require any party to

present as exhibits all papers and things mentioned during this trial.


1.21 EXPERT WITNESSES

You have heard witnesses give opinions about matters requiring special knowledge or

skill. You should judge this testimony in the same way that you judge the testimony of any other

witness. The fact that such person has given an opinion does not mean that you are required to

accept it. Give the testimony whatever weight you think it deserves, considering the reasons

given for the opinion, the witness’s qualifications, and all of the other evidence in the case.


1.24 DEMONSTRATIVE EXHIBITS – MODIFIED

Certain demonstrative exhibits have been shown to you to clarify or illustrate testimony

in this case. Those demonstrative exhibits are used for convenience and to help explain the facts

of the case. They are not themselves evidence or proof of any facts.


1.27 BURDEN OF PROOF

When I say a particular party must prove something by “a preponderance of the

evidence,” or when I use the expression “if you find,” or “if you decide,” this is what I mean:

When you have considered all the evidence in the case, you must be persuaded that it is more

probably true that not true.


1.28 CLEAR AND CONVINCING EVIDENCE

When I say that a particular party must prove something by “clear and convincing

evidence,” this is what I mean: When you have considered all of the evidence, you are

convinced that it is highly probable that it is true.


1.32 SELECTION OF PRESIDING JUROR; GENERAL VERDICT

Upon retiring to the jury room, you must select a presiding juror. The presiding juror will

preside over your deliberations and will be your representative here in court.

Forms of verdict have been prepared for you.

[Forms of verdict read.]

Take these forms to the jury room, and when you have reached unanimous agreement on

the verdict, your presiding juror will fill in, date, and sign the appropriate form.


1.33 COMMUNICATION WITH COURT

I do not anticipate that you will need to communicate with me. If you do need to

communicate with me, the only proper way is in writing. The writing must be signed by the

presiding juror, or, if he or she is unwilling to do so, by some other juror. The writing should be

given to the marshal, who will give it to me. I will respond either in writing or by having you

return to the courtroom so that I can respond orally.


1.34 DISAGREEMENT AMONG JURORS

The verdict must represent the considered judgment of each juror. Your verdict, whether

for or against the parties, must be unanimous.

You should make every reasonable effort to reach a verdict. In doing so, you should

consult with one another, express your own views, and listen to the opinions of your fellow

jurors. Discuss your differences with an open mind. Do not hesitate to reexamine your own

views and change your opinion if you come to believe it is wrong. But you should not surrender

your honest beliefs about the weight or effect of evidence solely because of the opinions of other

jurors or for the purpose of returning a unanimous verdict.

All of you should give fair and equal consideration to all the evidence and deliberate with

the goal of reaching an agreement that is consistent with the individual judgment of each juror.

You are impartial judges of the facts.


SUMMARY OF PATENT AND TRADE DRESS ISSUES

I will now summarize the issues that you must decide and for which I will provide

instructions to guide your deliberations. You must decide the following three main issues:

1. Whether the Plaintiff has proved that the Defendant infringed the design claimed

by the ‘754 Design Patent or its unregistered trade dress.

2. Whether the Defendant has proved that the ‘754 Design Patent and Plaintiff’s

unregistered trade dress are invalid.

3. What amount of damages, if any, the Plaintiff has proved.


7.1 CLAIM CONSTRUCTION – GENERALLY (Modified)

Before you decide whether Systems has infringed Nordock’s patent or whether

Nordock’s patent is invalid, you will have to understand the design patent claim. The design

patent claim states that it covers the design “as shown and described.” The figure drawings are

intended to define the boundaries of the claimed design. A design patent can only have one

claim.


7.2 CLAIM CONSTRUCTION FOR THE CASE (Modified)

It is my job as judge to provide to you the meaning of the claim of the asserted ‘754

Design Patent. You must accept the meaning that I give you and use it when you decide whether

the design patent has been infringed and whether the design patent is invalid.

The scope of the claim encompasses the design’s visual appearance as a whole and in

particular the visual impression it creates. It does not cover any broad general design concept.

Taking into account all figures in the patent, you must consider all of the visual features of the

‘754 Design Patent as a whole and not merely isolated portions or individual features of the

claimed design. All matter depicted in solid lines contributes to the overall appearance of the

design. Any features shown in broken lines in the drawings of the‘754 Design Patent and

described in the specification as disclaimed are excluded from the claimed design. Failure to

show features in broken lines signals inclusion of such features in the claimed design.

The various features of the overall appearance of the design may perform a function –

that is the nature of an article of manufacture for which this design patent has been granted. If

such functional features are illustrated in solid lines, they are part of the claimed design based on

how they contribute to the overall visual appearance.

When considering the design patent, you should view certain features in the drawings in

this way:

•

The ‘754 Design Patent claims the ornamental design of a lip and hinge plate for a dock

leveler as shown in Figures 1-7. The broken lines constitute unclaimed subject matter and form

no part of the claimed design.

‘754 Design Patent


8.1 DESIGN PATENT—INFRINGEMENT GENERALLY (Modified)

I will now instruct you as to the rules you must follow when deciding whether Nordock

has proven that Systems has directly infringed the ‘754 Design Patent.

Patent law gives the owner of a valid design patent the right to exclude others from

importing, making, using, offering to sell, or selling the patented designs within the United States

during the term of the patent. Any person or company that has engaged in any of those acts

without the design patent owner’s permission infringes the patent.

You have heard evidence about both Nordock’s commercial INDUSTRIAL, DUAL

DUTY, AIRDOCK, HEAVY DUTY and COLDSTORAGE levelers and Systems accused LMP,

LHP, LMD and LHD levelers. However, unless I have instructed you otherwise, in deciding the

issue of infringement you may not compare Systems ’ accused LMP, LHP, LMD and LHD

levelers to Nordock’s commercial INDUSTRIAL, DUAL DUTY, AIRDOCK, HEAVY DUTY

and COLDSTORAGE levelers. Rather, you must compare Systems’ accused LMP, LHP, LMD

and LHD levelers to the ‘754 Design Patent when making your decision regarding infringement.

In deciding whether a sale has taken place “within the United States,” you may find the

following guidelines helpful to your analysis: The location of the sale depends on many factors,

and you may find that the sale occurred in several places. A sale occurs wherever the “essential

activities” of the sale take place. The essential activities include, for example, negotiating the

contract and performing obligations under the contract.

Nordock bears the burden of proving by a preponderance of the evidence that each of

Systems accused products infringes ‘the 754 Design Patent. Therefore, you, the jury, must

determine infringement considering each individual product separately.


8.2 DIRECT INFRINGEMENT – KNOWLEDGE OF PATENT OR INTENT TO INFRINGE IS IMMATERIAL

In this case, Nordock asserts that Systems has directly infringed the patent. Systems

would be liable for directly infringing Nordock’s patent if you find that Nordock has proven that

it is more likely than not that Systems has made, used, offered to sell, or sold the design defined

Nordock’s patent. This standard of proof is called the “preponderance of evidence.” Someone

can directly infringe a patent without knowing that what they are doing is an infringement of the

patent. They also may directly infringe a patent even though they believe in good faith that what

they are doing is not an infringement of any patent.


8.3 DIRECT INFRINGEMENT

To determine infringement, you must compare the overall appearances of the accused

design and the claimed design (using my instructions as to the meaning of the claimed design).

Before conducting your infringement analysis, you must familiarize yourself with all of the prior

art designs that have been brought to your attention in this litigation. In view of this prior art, if

you find that, by a preponderance of evidence, the overall appearance of the accused design is

substantially the same as the overall appearance of the claimed design, then you must find that

the accused design infringes the design patent. In conducting this analysis, keep in mind that

minor differences between the patented and accused designs should not prevent a finding of

infringement. In weighing your decision, you should consider any perceived similarities or

differences.

When evaluating designs, be it the claimed design, accused design, and prior art designs,

you should always focus on the overall appearance of a design, and not individual features. You

should consider and weigh any perceived similarities and differences.

In conducting your analysis, you may find the following guidelines helpful:

1. When the claimed design is visually close to the prior art designs, small

differences between the accused design and the claimed design may be important

to your analysis as to whether the overall appearance of the accused design is

substantially the same as the overall appearance of claimed design.

2. If the accused design includes a particular feature of the claimed design that

departs conspicuously from the prior art, you may find the inclusion of that

feature important to your analysis as to whether the overall appearance of the

accused design is substantially the same as the overall appearance of claimed

design.


3. If the accused design is visually closer to the claimed design than it is to the

closest prior art, you may find this comparison important to your analysis as to

whether the overall appearance of the accused design is substantially the same as

the overall appearance of claimed design.

While these guidelines may be help to your analysis, please keep in mind that the sole

test for infringement is whether you believe that the overall appearance of the accused design is

substantially the same as the overall appearance of the claimed design. If you find that the

accused design is substantially the same, then you must find that the accused design infringes the

design patent.


DESIGN PATENT DIRECT INFRINGEMENT—COMPARISONS

In deciding the issue of infringement you must compare the front end design of Systems’

accused products to the claimed design of the ‘754 Design Patent. In addition, you have heard

evidence about certain Nordock products and models. If you determine that any of Nordock’s

products or models are substantially the same as the design claimed by Nordock’s ‘754 Design

Patent, and that the product or model has no significant distinctions with the claimed design, you

may compare the front end design of the Nordock product or model directly to the front end

design of the accused Systems products. This may facilitate your determination of whether the

accused products infringe the Nordock’s ‘754 Design Patent. If you determine that a particular

Nordock product or model does not embody the claimed design of the ‘754 Design Patent, you

may not compare it to the accused Systems product.


9.1 INVALIDITY CONTENTIONS OF THE PARTIES

Systems contends that the ‘754 Design Patent is invalid or not enforceable. Systems must

prove by clear and convincing evidence that each design patent is invalid. An issued design

patent may be found to be invalid due to (a) anticipation by a single reference; (b) obvious in

view of multiple references; (c) offered for sale to the public or in commercial use more than one

year before the patent filing or (d) inequitable conduct by the inventor or his or her attorneys;

Thus, you must determine whether the ‘754 Design Patent is invalid. Systems contends that the

‘754 Design Patent is invalid for the following reasons:

[Insert invalidity contentions]

I will now instruct you in more detail why Systems alleges that the asserted claim of the

‘754 Design Patent is invalid.


9.2 SCOPE AND CONTENT OF PRIOR ART (Modified)

Before I describe how to assess whether Nordock’s ‘754 Design Patent is invalid, I will

instruct you about documents and things called “prior art.”

Prior art includes any of the following items received into evidence during trial:

1. Any design or product that was publicly known or used by others in the United

States, or patented or described in a printed publication in the United States or a

foreign country, before the patented design was made;

2. Patents and design registrations that were published or issued more than one year

before the filing date of the patent, or before the design was made;

3. Publications having a date more than one year before the filing date of the patent,

or before the design was made;

4. Any design or product that was in public use or on sale in the United States more

than one year before the patent was filed;

5. Any design or product that was made by anyone before the named inventors

created the patented design or product where the design or product was not

abandoned, suppressed, or concealed.

[ADD ANY ADDITIONAL TYPES OF PRIOR ART]

Denis Gleason conceived the ornamental design of the ‘754 Design Patent in about

November 2001. The first drawings were produced and the first offer to sell was made in about

January 2002. The first shipment of the product was in about March 2002, and the first use was

in about April 2002. The original patent application disclosing the claimed design of the ‘754

Design Patent was filed on December 23, 2002, and the ‘754 Design Patent properly asserts

December 23, 2002 as its date of priority.


In this case, Systems contends that the following items are prior art: [identify prior art by

name]


9.3 ANTICIPATION – A SINGLE REFERENCE OR A SINGLE PRODUCT (Modified)

A person cannot obtain a design patent if someone else already has made an identical

version of the design. Simply put, the design must be new. A design that is not new or novel is

said to be “anticipated by the prior art.” Under the U.S. patent laws, a design that is “anticipated”

is not entitled to patent protection. To prove anticipation, Systems must prove with clear and

convincing evidence that the claimed design is not new.

In this case, Systems contends that the ‘754 Design Patent is anticipated.

[DESCRIBE BRIEFLY EACH BASIS FOR THE DEFENDANT’S INVALIDITY

DEFENSE]

To find that a design patent is anticipated, the jury must find that, to an ordinary observer,

the prior art reference is “identical in all material respects” to the claimed design.

You must keep this requirement in mind and apply it to each kind of anticipation you

consider in this case.


DESIGN PATENTS—OBVIOUSNESS

Even if a design is not anticipated by a single reference, it may still be invalid if the

claimed design would have been obvious to a designer of ordinary skill in the field at the time

the design was made. Unlike anticipation, which allows consideration of only one item of prior

art, obviousness may be shown by considering more than one item of prior art. The ultimate

conclusion of whether a claimed design is obvious should be based upon your determination of

several factual decisions.

First, you must decide the level of ordinary skill in the field of the patent at the time the

claimed design was made. In deciding this, you should consider all the evidence from trial,

including:

(1) the levels of education and experience of persons designing articles in the field;

(2) the types of problems encountered in designing articles in the field; and

(3) the sophistication of the field.

Second, you must determine if a designer of ordinary skill in these designs would have

combined the prior art references or modified a single prior art reference to create the same

overall visual appearance as the claimed design. To do this, you must consider whether Systems

has identified a “primary” prior art reference. A “primary” reference must be an actual design

which creates basically the same visual impression as the patented design.

If you identify a primary reference, you must then consider whether Systems has

identified one or more “secondary” prior art references. “Secondary” references are other

references that are so visually related to the primary reference that the appearance of certain

ornamental features in the other references would suggest the application of those features to the

primary reference. If you find that there are one or more such secondary references, you must


determine if a designer of ordinary skill in these designs would have combined these references

to create the same overall visual appearance as the claimed design.

Finally, before deciding the issue of obviousness, you must consider other factors that

might show that the designs were not obvious despite the prior art. You may only consider those

factors that Nordock has established through evidence admitted at trial. No one factor alone is

dispositive:

(1) Were products covered by the claimed design commercially successful due to the

appearance of the claimed design?

(2) Was there a long felt need for a new look or design of the subject product?

(3) Did others copy the claimed design?

(4) Did the claimed design achieve an unexpectedly superior appearance over the closest

prior art?

(5) Did others in the field praise the claimed design or express admiration for the claimed

design?

Answering any, or all, of these questions “yes” may suggest that the claim was not

obvious.

In deciding whether the claimed design was obvious, keep in mind that a design with

several features is not obvious merely because each individual feature was present in prior art

designs.

You must always be careful not to determine obviousness using the benefit of hindsight.

You should put yourself in the position of a person of ordinary skill in the field at the time the

claimed design was made and should not consider what is known today.


9.8 OBVIOUSNESS – DIFFERENCES WITH THE PRIOR ART

You should analyze whether there are any relevant differences between the prior art and

the claimed design from the view of a designer of ordinary skill in the art at the time the design

was created. Your analysis must determine the impact, if any, of such differences on the

obviousness or non-obviousness of the design as a whole, and not merely some portion of it. The

scope of the relevant prior art for purposes of evaluating obviousness extends to all “analogous

arts.” The field of analogous art depends on the type of design. If the design relates to the surface

appearance of an article, then any prior art that discloses a similar surface appearance would be

analogous art. However, if the design relates to the form of the article, then the field of analogous

art is limited to similar types of articles.

In analyzing the relevance of the differences between the claimed design and the prior

art, you do not need to look for precise appearance in the prior art directed to the nature or

subject matter of the claimed design. You may take into account the inferences and creative steps

that a designer of ordinary skill in the art would have employed in reviewing the prior art at the

time of the creation of the design. For example, combining known elements in a known fashion

is generally not patentable. On the other hand, a new material element may be combined with an

existing element and if that overall combination creates a new and new and integral design, then

the patent is non-obvious.

Importantly, a design is not proved obvious merely by demonstrating that each of the

elements was independently known in the prior art. Most, if not all, designs rely on building

blocks long since uncovered, and claimed discoveries almost of necessity will likely be

combinations of what is already known. Therefore, you should consider whether a reason existed

at the time of the creation of the design that would have prompted a person of ordinary skill in

the art in the relevant field to combine the known elements in the way the claimed design does.


The reason could come from the prior art, the background knowledge of one of ordinary skill in

the art, the nature of the problem to be solved, market demand, or common sense. If the prior art

discouraged a designer of ordinary skill from following the path set out in the reference or would

be led in a different direction, then the design is non-obvious.

If you find that a reason existed at the time of the creation of the design to combine the

elements of the prior art to arrive at the claimed design, this evidence would make it more likely

that the claimed design was obvious.


9.9 DESIGNER OF ORDINARY SKILL IN THE ART

The determination of whether a claimed design is obvious is based on the perspective of

the ordinary designer skilled in the art. The ordinary designer skilled in the art is presumed to be

familiar with all of the prior art designs that you have determined to be reasonably relevant.

When determining the identity of the designer of ordinary skill in the art, you should keep

in mind that the designer of ordinary skill is not any designer, but one who designs articles of the

type involved.


DESIGN PATENTS—INVALIDITY––LACK OF ORNAMENTALITY

Design patents protect the ornamental appearance, including shape or configuration, of an

article of manufacture. If Systems proves by clear and convincing evidence that the overall

appearance of the Nordock ‘754 Design Patent is dictated by how the article claimed in the

patent works, the patent is invalid because the design is not “ornamental.” In other words, the

inventor did not “design” anything because in order to achieve the function of the design, it had

to be designed that way.

When deciding this, you should keep in mind that design patents must be for articles of

manufacture, which by definition have inherent functional characteristics. It is normal that

claimed designs perform some function – that does not disqualify them from patent protection.

In determining whether a design is dictated by functionality, you may consider whether

the protected design represents the best design; whether alternative designs would adversely

affect the utility of the specified article; whether there are any concomitant utility patents;

whether the advertising touts particular features of the design as having specific utility; and

whether there are any elements in the design or an overall appearance clearly not dictated by

function.

When there are several other designs that achieve the function of an article of

manufacture, the design of the article is more likely to serve a primarily ornamental purpose.

However, this may not be true if the other designs adversely affect the utility of the article.


DESIGN PATENT DAMAGES––BURDEN OF PROOF

I will instruct you about the measure of damages for infringement of Nordock’s design

patents. By instructing you on damages, I am not suggesting which party should win on any

issue.

If you find that Systems infringed the ‘754 Design Patent, you must then determine the

money damages to award Nordock. The amount of those damages must be adequate to

compensate Nordock for the infringement. You should keep in mind that the damages you award

are meant to compensate the patent holder and not to punish an infringer.

For design patents, Nordock can elect to prove either actual damages, known as

compensatory damages, or it may elect to prove the defendant’s profits as its measure of

potential recovery with respect to the sale of each unit of an infringing product. As compensatory

damages, Nordock may prove either its own lost profits, or a reasonable royalty for the design

patent. Nordock is not entitled to recover both compensatory damages and the defendant’s profits

on the same sale.

Nordock has the burden to prove that Nordock’s calculation of damages is correct by a

preponderance of the evidence. While Nordock is not required to prove its damages with

mathematical precision, it must prove them with reasonable certainty. Nordock is not entitled to

damages that are remote or speculative.


DESIGN PATENT DAMAGES—DEFENDANT’S PROFITS

In this case, Nordock seeks Systems profits from sales of products alleged to infringe the

‘754 Design Patent. If you find infringement by Systems and do not find the ‘754 Design Patent

is invalid, you may award Nordock the amount of Systems’ total profit attributable to the sale of

its infringing products.

The “total profit” of Systems means the entire profit on the sale of the article to which the

patented design is applied, and not just the portion of profit attributable to the design or

ornamental aspects covered by the patent. “Total profit” does not include profit attributable to

other products that may be sold in association with an infringing article embodying the patented

design.

If you find infringement by Systems, Nordock is entitled to all profit earned by that

defendant on sales of articles that infringe Nordock’s ‘754 Design Patent. Profit is determined

by deducting certain expenses from gross revenue. Gross revenue is all of the infringer’s receipts

from the sale of articles using any design found infringed. Nordock has the burden of proving the

infringing defendant’s gross revenue by a preponderance of the evidence.

Expenses can include costs incurred in producing the gross revenue, such as the cost of

the goods. Other costs may be included as deductible expenses if they are directly attributable to

the sale or manufacture of the infringing products resulting in a nexus between the infringing

products and the expense. Systems has the burden of proving the deductible expenses.


DESIGN PATENT DAMAGES—LOST PROFITS

Nordock may alternatively recover compensatory damages in the form of lost profits. As

previously explained, Nordock may not recover both Systems’ profits and compensatory

damages on each sale of an infringing product.


DESIGN PATENT DAMAGES –– LOST PROFITS –– GENERALLY

In this case, Nordock seeks to recover lost profits for some of Systems’ sales of allegedly

infringing products, and a reasonable royalty on the rest of Systems’ allegedly infringing sales.

To recover lost profits for infringing sales, Nordock must show that but for the

infringement, there is a reasonable probability that it would have made sales that Systems made

of the infringing products. Nordock must show the share of Systems’ sales that it would have

made if the infringing products had not been on the market.


DESIGN PATENT DAMAGES––LOST PROFITS—FACTORS TO CONSIDER

Nordock is entitled to lost profits if it proves all of the following:

(1) there was demand for the patented design;

(2) there were no acceptable non-infringing alternatives, or, if there were, that

Nordock lost some sales as a result of the infringing activity;

(3) Nordock had the manufacturing and marketing capacity to make any

infringing sales actually made by Systems; and

(4) the amount of profit that Nordock would have made if Systems had not infringed.


DESIGN PATENT DAMAGES—LOST PROFITS—AMOUNT OF PROFIT

If you conclude that Nordock has proved that it lost profits because of Systems’

infringement, the lost profits that you award should be the amount that Nordock would have

made on any sales that Nordock lost because of the infringement, minus the additional costs that

Nordock would have incurred in making those sales, plus the amount by which Nordock’s profits

on its own sales were decreased as a result of reduced prices or increased costs caused by

Systems’ infringement.


DESIGN PATENT DAMAGES––REASONABLE ROYALTY

If Nordock has not proved its claim for lost profits or has not proved its claim to

Systems’ profits, then Nordock should be awarded a reasonable royalty for all infringing sales by

Systems. In no event should the damages you award Nordock for design patent infringement be

less than a reasonable royalty.


DESIGN PATENT DAMAGES––REASONABLE ROYALTY—DEFINITION

If Nordock has not proved its claim for lost profits, or has proved its claim for lost profits

for only a portion of the infringing sales, then Nordock should be awarded a reasonable royalty

for all infringing sales for which it has not been awarded lost profits damages.

A royalty is a payment made to a patent holder in exchange for the right to make, use or

sell the claimed design. This right is called a “license.” A reasonable royalty is the payment for

the license that would have resulted from a hypothetical negotiation between the patent holder

and the infringer taking place at the time when the infringing activity first began. In considering

the nature of this negotiation, you must assume that the patent holder and the infringer would

have acted reasonably and would have entered into a license agreement. You must also assume

that both parties believed the patent was valid and infringed. Your role is to determine what the

result of that negotiation would have been. The test for damages is what royalty would have

resulted from the hypothetical negotiation and not simply what either party would have

preferred.

A royalty can be calculated in several different ways and it is for you to determine which

way is the most appropriate based on the evidence you have heard. One way to calculate a

royalty is to determine what is called an “ongoing royalty.” To calculate an ongoing royalty, you

must first determine the “base,” that is, the product on which the infringer is to pay. You then

need to multiply the revenue the defendant obtained from that base by the “rate” or percentage

that you find would have resulted from the hypothetical negotiation. For example, if the patent

covers a nail, and the nail sells for $1, and the licensee sold 200 nails, the base revenue would be

$200. If the rate you find would have resulted from the hypothetical negotiation is 1%, then the

royalty would be $2, or the rate of .01 times the base revenue of $200.


If the patent covers only part of the product that the infringer sells, then the base would

normally be only that feature or component. For example, if you find that for a $100 car, the

patented feature is the tires which sell for $5, the base revenue would be $5. However, in a

circumstance in which the patented feature is the reason customers buy the whole product, the

base revenue could be the value of the whole product.

A second way to calculate a royalty is to determine a one-time lump sum payment that

the infringer would have paid at the time of the hypothetical negotiation for a license covering all

sales of the licensed product both past and future. This differs from payment of an ongoing

royalty because, with an ongoing royalty, the licensee pays based on the revenue of actual

licensed products it sells. When a one-time lump sum is paid, the infringer pays a single price for

a license covering both past and future infringing sales.

In determining a reasonable royalty, you may consider the following factors:

(1) The royalties received by the patentee for the licensing of the patent-in-suit,

proving or tending to prove an established royalty.

(2) The rates paid by the licensee for the use of other patents comparable to the

patent-in-suit.

(3) The nature and scope of the license, as exclusive or nonexclusive, or as restricted

or nonrestricted in terms of territory or with respect to whom the manufactured

product may be sold.

(4) The licensor’s established policy and marketing program to maintain his or her

patent monopoly by not licensing others to use the patented design or by granting

licenses under special conditions designed to preserve that monopoly.


(5) The commercial relationship between the licensor and licensee, such as whether

they are competitors in the same territory in the same line of business, or whether

they are inventor and promoter.


DESIGN PATENT DAMAGES––DATE OF COMMENCEMENT—PRODUCTS

Damages that Nordock may be awarded by you commence on the date that Systems has

both infringed and been notified of the ‘754 Design Patent.

If you find that Nordock sells products that include the claimed designs but has not

marked those products with the patent numbers, you must determine the date that Systems

received actual written notice of the patent and the specific products alleged to infringe.

While you may identify an earlier date by which Systems had notice of Nordock’s claims

of infringement based on your evaluation of the evidence, Nordock’s lawsuit provided Systems

such notice for the ‘754 Design Patent by no later than May 19, 2009. For design patent

infringement damages (as opposed to trademark infringement damages discussed below), the

start date for calculating damages should not be earlier than the November 4, 2008 issue date to

the ‘754 Design Patent.

On the other hand, if you find that Nordock does not sell products covered by a patent,

then damages begin without the requirement for actual notice under the following circumstances:

For each infringed patent that was granted before the infringing activity

began, damages should be calculated as of the date you determine that the

infringement began; or

For each infringed patent that was granted after the infringing activity

began as determined by you, damages should be calculated as of the date the

patent issued.


8.6 WILLFUL INFRINGEMENT

Nordock asserts that Systems has willfully infringed Nordock’s design patent.

The issue of willful infringement is relevant to the amount of damages Nordock is

entitled to recover in this lawsuit. However, if you decide that Systems willfully infringed the

claim of Nordock’s design patent, then it is my job to decide whether or not to award increased

damages to Nordock. You should not take this factor into account in assessing the damages, if

any, to be awarded to Nordock.

To prove willful infringement, Nordock must first persuade you, through clear and

convincing evidence, that Systems was aware of Nordock’s design patent, and that it is highly

probable that Systems acted recklessly, or in other words, acted despite an objectively high

likelihood that its actions constituted infringement of a valid design patent. Thus, the state of

mind of Systems is not relative to this objective inquiry. Legitimate or credible defenses to

infringement, even if ultimately not successful, demonstrate a lack of recklessness.

If the threshold objective standard is satisfied, Nordock must then persuade you that it is

highly probable that this objectively-defined risk was either known or so obvious that it should

have been know to Systems. To determine whether this objectively-defined risk was either

known or so obvious that it should have been known to Systems, you should consider all the

facts surrounding the alleged infringement including, but not limited to, the following:

1. whether Systems acted in a manner consistent with the standards of commerce for

its industry;

2. whether Systems intentionally copied without a reasonable basis a product of

Nordock covered by the claim of the ‘754 Design Patent, as distinguished from

trying to “design around” the patent by designing a product that Systems believed

did not infringe those claims;


3. whether Systems presented a substantial defense to infringement, including the

defense that the patent is invalid or unenforceable; and

4. [INCLUDE ONLY IF THE DEFENDANT IS RELYING ON OPINION OF

COUNSEL AS A DEFENSE TO ALLEGATION OF WILLFUL

INFRINGEMENT] whether Systems relied on competent legal advice.


TRADE DRESS INFRINGEMENT––INTRODUCTION

Nordock seeks damages against Systems for infringement of Nordock’s unregistered

front end design for its INDUSTRIAL, DUAL DUTY, AIRDOCK, HEAVY DUTY and

COLDSTORAGE trade dress. Systems denies that it infringed Nordock’s asserted trade dress

and contends it is unprotectable.

Here are the instructions you must follow in deciding Nordocks’s trade dress

infringement claims.


TRADE DRESS INFRINGEMENT––DEFINITION OF TRADE DRESS (15 U.S.C. § 1125(A))

Trade dress is the non-functional physical detail and design of a product, which identifies

the product’s source and distinguishes it from the products of others.

Trade dress is the product’s, or portion thereof’s, total image and overall appearance, and

may include features such as size, shape, color, color combinations, texture, or graphics. In other

words, trade dress is the form in which a person presents a product to the market, its manner of

display.

A trade dress is non-functional if, taken as a whole, the collection of trade dress elements

is not essential to the product’s use or purpose or does not affect the cost or quality of the

product even though certain particular elements of the trade dress may be functional.

Trade dress concerns the overall visual impression created in the consumer’s mind when

viewing the non-functional aspects of the product and not from the utilitarian or useful aspects of

the product. In considering the impact of these non-functional aspects, which are often a complex

combination of many features, you must consider the appearance of features together, rather than

separately.

A person who uses the trade dress of another may be liable for damages.


TRADE DRESS INFRINGEMENT––PROTECTABILITY

The first step in considering Nordock’s claims that Systems infringed certain of

Nordock’s INDUSTRIAL, DUAL DUTY, AIRDOCK, HEAVY DUTY and COLDSTORAGE

dock leveler trade dress is to determine whether or not each asserted trade dress is protectable.

You need to make this determination for each of Nordock’s asserted trade dresses.

You must find that an asserted Nordock trade dress is protectable if the trade dress:

1. has acquired distinctiveness through secondary meaning; and

2. is non-functional.

For each unregistered AIRDOCK, HEAVY DUTY and COLDSTORAGE trade dress,

Nordock bears the burden of proving by a preponderance of the evidence that the trade dress is

both distinctive and non-functional. If you find that Nordock has met its burden, you must find

that trade dress is protectable. Otherwise, you must find the trade dress unprotectable.

For each Nordock trade dress that you find protectable, resolving whether System has

infringed the trade dress will require you to assess additional questions that I will explain after

addressing protectability more fully.


TRADE DRESS INFRINGEMENT—PROTECTABILITY—DISTINCTIVENESS—SECONDARY MEANING

To be protectable, Nordock’s trade dresses must have acquired distinctiveness through

“secondary meaning.” A trade dress acquires a secondary meaning when it has been used in such

a way that its primary significance in the minds of the prospective consumers is not the product

itself, but the identification of the product with a single source, regardless of whether consumers

know who or what that source is.

For each asserted Nordock trade dress, you must find that the preponderance of the

evidence shows that a significant number of the consuming public associate the trade dress with

a single source, in order to find that it has acquired secondary meaning.

When you are determining whether each trade dress has acquired a secondary meaning,

consider the following factors:

1. Consumer Perception. Whether the people who purchase dock levelers associate

the claimed trade dress with Nordock;

2. Advertisement. To what degree and in what manner Nordock may have advertised

featuring the claimed trade dress;

3. Demonstrated Success. Whether Nordock has successfully used the claimed trade

dress to increase the sales of its products;

4. Extent of Use. The length of time and manner in which Nordock has used the

claimed trade dress;

5. Exclusivity. Whether Nordock’s use of the claimed trade dress was exclusive;

6. Copying. Whether Systems intentionally copied Nordock’s alleged trade dress;

and

7. Actual Confusion. Whether Systems’ use of Nordock’s alleged trade dress has led

to actual confusion among a significant number of consumers.


The presence or absence of any particular factor should not necessarily resolve whether

the asserted trade dress has acquired secondary meaning.

Nordock has the burden of proving by a preponderance of the evidence that its

unregistered trade dresses have acquired a secondary meaning.

The mere fact that Nordock is using the asserted trade dresses does not mean that they

have acquired secondary meaning. There is no particular length of time that a trade dress must be

used before it acquires a secondary meaning.


TRADE DRESS INFRINGEMENT—PROTECTABILITY— NON-FUNCTIONALITY REQUIREMENT

A product feature is functional if it is essential to the product’s use or purpose, or if it

affects the product’s cost or quality. However, if the feature serves no purpose other than as an

assurance that a particular entity made, sponsored or endorsed the product, it is non-functional. A

product feature is also non-functional if its shape or form makes no contribution to the product’s

function or operation.

To determine whether a product’s particular shape or form is functional, you should

consider whether the design as a whole is functional, that is whether the whole collection of

elements making up the design or form are essential to the product’s use or purpose.

To determine whether a product feature is functional, you may consider the following

factors:

1. The Design’s Utilitarian Advantage. In considering this factor, you may

examine whether the particular design or product feature yield a utilitarian advantage

over how the product might be without that particular design or product feature. If there

is a utilitarian advantage from having the particular design or feature, this would weigh in

favor of finding the design or feature is functional; if it seems merely ornamental,

incidental, or arbitrary it is more likely to be nonfunctional;

2. Availability of Alternate Designs. In considering this factor, you may examine

whether an alternate design could have been used, so that competition in the market for

that type of product would not be hindered by allowing only one person to exclusively

use the particular design or configuration. For this to be answered in the affirmative, the

alternatives must be more than merely theoretical or speculative. They must be

commercially feasible. The unavailability of a sufficient number of alternate designs

weighs in favor of finding the design or feature is functional;


3. Advertising Utilitarian Advantage in the Design. In considering this factor, you

may examine whether the particular design or configuration has been touted in any

advertising as a utilitarian advantage, explicitly or implicitly. If a seller advertises the

utilitarian advantages of a particular feature or design, this weighs in favor of finding that

design or feature is functional; and

4. The Design’s Method of Manufacture. In considering this factor, you may

examine whether the particular design or feature result from a relatively simple or

inexpensive method of manufacture. If the design or feature is a result of a particularly

economical production method, this weighs in favor of finding the design or feature is

functional; if the feature is essential to the use or purpose of the device or affects its cost

or quality, it is more likely functional.

If you find that the preponderance of the evidence shows that the trade dress is essential

to the product’s use or purpose, or that it affects the product’s cost or quality, then you must find

the trade dress functional and thus unprotectable.

In addition, if you find that the preponderance of the evidence shows that limiting

Nordock’s competitors’ use of the feature would impose a significant non-reputation-related

competitive disadvantage, then you must find the trade dress functional and thus unprotectable.

However, the fact that the feature contributes to consumer appeal and saleability of the product

does not mean that the trade dress is necessarily functional.

Nordock has the burden of proving by a preponderance of the evidence that its

unregistered trade dresses are non-functional.


INFRINGEMENT—ELEMENTS AND BURDEN OF PROOF—TRADE DRESS (15 U.S.C. § 1125(A)(1))

Nordock also claims that the front end designs of Systems’ LMP, LHP, LMD and LHD

dock levelers infringe the front end design trade dress of Nordock’s INDUSTRIAL, DUAL

DUTY, AIRDOCK, HEAVY DUTY and COLDSTORAGE dock levelers. To prove trade dress

infringement, Nordock bears the burden of proving by a preponderance of the evidence each of

the following elements:

1. the front end design trade dress of Nordock’s INDUSTRIAL, DUAL DUTY,

AIRDOCK, HEAVY DUTY and COLDSTORAGE dock levelers is non-

functional. See Instruction No. __ above.

2. the front end design trade dress of Nordock’s INDUSTRIAL, DUAL DUTY,

AIRDOCK, HEAVY DUTY and COLDSTORAGE dock levelers has acquired

distinctiveness through secondary meaning. See Instruction No. __ above.

3. Systems used the front end design trade dress of Nordock’s INDUSTRIAL,

DUAL DUTY, AIRDOCK, HEAVY DUTY and COLDSTORAGE dock levelers

in a manner that is likely to cause confusion among ordinary consumers as to the

source, sponsorship, affiliation, or approval of Systems’ goods.

If you find that Nordock has proved each of these elements, your verdict should be for

Nordock. If, on the other hand, Nordock has failed to prove any one of these elements, your

verdict should be for Systems.


TRADE DRESS INFRINGEMENT—SECONDARY MEANING—TIMING

Nordock must prove by a preponderance of the evidence that its asserted front end design

trade dress of its INDUSTRIAL, DUAL DUTY, AIRDOCK, HEAVY DUTY and

COLDSTORAGE dock levelers acquired secondary meaning before Systems first sold a product

that Nordock claims is infringing that trade dress.

If you find that Nordock has not proved by a preponderance of the evidence that its

asserted front end design trade dress of its INDUSTRIAL, DUAL DUTY, AIRDOCK, HEAVY

DUTY and COLDSTORAGE dock leveler acquired secondary meaning before Systems began

selling its accused LMP, LHP, LMD and LHD levelers with this trade dress, then you must find

for Systems.


INFRINGEMENT—LIKELIHOOD OF CONFUSION— FACTORS— SLEEKCRAFT TEST

(15 U.S.C. §§ 1114(1) and 1125(a))

You must decide whether Systems’ alleged use of the front end design trade dress of

Nordock’s INDUSTRIAL, DUAL DUTY, AIRDOCK, HEAVY DUTY and COLDSTORAGE

dock levelers in the Systems LMP, LHP, LMD and LHD Series dock levelers1 is likely to cause

confusion about the source, sponsorship, affiliation, or approval of Systems’ LMP, LHP, LMD

and LHD dock levelers. Nordock must prove by a preponderance of the evidence that a

reasonably prudent consumer in the marketplace is likely to be confused about the source of

Systems’ LMP, LHP, LMD and LHD dock levelers. Nordock must show more than simply a

possibility of such confusion. Nordock may prove a likelihood of confusion by providing direct

evidence of consumer confusion. Evidence of non-consumer confusion may also be relevant

where there is confusion on the part of: (1) potential customers; (2) non-consumers whose

confusion could create an inference that consumers are likely to be confused; and (3) non-

consumers whose confusion could influence consumers.

I will suggest some factors you should consider in deciding whether there is a likelihood

of confusion. The presence or absence of any particular factor that I suggest should not

necessarily resolve whether there was a likelihood of confusion, because you must consider all

relevant evidence in determining this. As you consider the likelihood of confusion you should

examine the following:

1. Strength or Weakness of Nordock’s Asserted Trade Dress. The more the

consuming public recognizes the front end design trade dress of Nordock’s

INDUSTRIAL, DUAL DUTY, AIRDOCK, HEAVY DUTY and COLDSTORAGE dock

levelers as an indication of origin of Nordock’s goods, the more likely it is that


consumers would be confused about the source of Systems goods if Systems uses a

similar design or configuration.

2. Similarity of the Goods. If Nordock and Systems use the subject designs

on the same, related, or complementary kinds of goods, there may be a greater likelihood

of confusion about the source of the goods than otherwise.

3 Similarity of the Designs. If the overall impression created by Nordock’s

asserted front end design trade dress of its INDUSTRIAL, DUAL DUTY, AIRDOCK,

HEAVY DUTY and COLDSTORAGE dock levelers in the marketplace is similar to that

created by Systems’ front end designs in appearance, there is a greater chance of

likelihood of confusion.

4. Actual Confusion. If use by Systems of Nordock’s asserted front end

design trade dress of its INDUSTRIAL, DUAL DUTY, AIRDOCK, HEAVY DUTY and

COLDSTORAGE dock levelers has led to instances of actual confusion, this suggests a

likelihood of confusion. However actual confusion is not required for a finding of

likelihood of confusion. Even if actual confusion did not occur, Systems’ use of the trade

dresses may still be likely to cause confusion. As you consider whether the design used

by Systems creates for consumers a likelihood of confusion with Nordock’s products,

you should weigh any instances of actual confusion against the opportunities for such

confusion. If the instances of actual confusion have been relatively frequent, you may

find that there has been substantial actual confusion. If, by contrast, there is a very large

volume of sales, but only a few isolated instances of actual confusion, you may find that

there has not been substantial actual confusion.

5. Systems’ Intent. Knowing use by Systems of Nordock’s asserted front

end design trade dress of its INDUSTRIAL, DUAL DUTY, AIRDOCK, HEAVY DUTY


and COLDSTORAGE dock levelers to identify similar goods may show an intent to

derive benefit from the reputation of Nordock’s trade dress, suggesting an intent to cause

a likelihood of confusion. On the other hand, even in the absence of proof that Systems’

acted knowingly, the use of Nordock’s trade dress to identify similar goods may indicate

a likelihood of confusion.

6. Marketing/Advertising Channels. If Nordock’s and Systems’ goods are

likely to be sold in the same or similar stores or outlets, or advertised in similar media,

this may increase the likelihood of confusion.

7. Purchaser’s Degree of Care. The more sophisticated the potential buyers

of the goods or the more costly the goods, the more careful and discriminating the

reasonably prudent purchaser exercising ordinary caution may be. They may be less

likely to be confused by similarities in the Nordock and Systems products.


TRADE DRESS DAMAGES IN GENERAL

If you find that Nordock has proven by a preponderance of the evidence that Systems has

infringed upon any of Nordock’s trade dresses, then there are two forms of monetary relief to

which Nordock may be entitled: Nordock’s actual damages or Systems’ profits.

In determining the amount of money to award Nordock for its trade dress claims, you

must determine the date on which damages began to accrue. Damages for trade dress

infringement of Nordock’s unregistered trade dresses started on the date that the infringing

conduct of an unregistered Nordock trade dress began. You may award Nordock money damages

for all violations that occurred on the date the products that infringed each unregistered Nordock

trade dress were released and any date after that.

Proof of damages to a certainty is not required. However, the burden is on Nordock to

show any damages to a reasonable certainty, and awarded damages may not be speculative.


TRADE DRESS DAMAGES—PLAINTIFF’S ACTUAL DAMAGES (15 U.S.C. § 1117(a))

If you find for Nordock on its trade dress infringement claims, you must determine

Nordock’s actual damages. Nordock has the burden of proving by a preponderance of the

evidence the actual damages it has suffered. Damages means the amount of money which will

reasonably and fairly compensate Nordock for any injury you find was caused by any Systems’

infringement of Nordock’s unregistered trade dresses.

You should consider the profits that Nordock would have earned but for Systems’

infringement. Such lost profits are determined by deducting all expenses from gross revenue.


TRADE DRESS DAMAGES—DEFENDANT’S PROFITS (15 U.S.C. § 1117(a))

In addition to actual damages, Nordock is entitled to any profits earned by the Systems

that are attributable to willful infringement, which Nordock proves by a preponderance of the

evidence. You may not, however, include in any award of profits any amount that you took into

account in determining actual damages. Profit is determined by deducting all expenses from

gross revenue. Gross revenue is each of the Systems’ sales of products that infringed Nordock’s

trade dresses. Nordock has the burden of proving the gross revenues of each Systems’sales of

products that infringed Nordock’s trade dresses by a preponderance of the evidence. Expenses

are all operating, overhead, and production costs incurred in producing the gross revenue.

Systems has the burden of proving the expenses and the portion of the profit attributable to

factors other than use of the infringed trade dress by a preponderance of the evidence.

Unless you find that Systems has proven that a portion of the profit from the sale of its

products that infringed any Nordock trade dress is attributable to factors other than use of the

trade dress, you shall find that the total profit is attributable to the infringement.


MONETARY REMEDIES—ONLY ONE RECOVERY PER ACCUSED SALE

You should award any remedy Nordock has proven it is entitled with respect to each sale

of an accused dock leveler, except that you should not award a party twice for the same sale of

any accused dock leveler. This means that if you award Nordock’s profits under trade dress or

design patent infringement for the sale of a certain number of accused LMP, LHP, LMD and

LHD dock levelers, you may not also award reasonable royalties or lost profits for those same

sales. If you award reasonable royalties or lost profits for the sale of a certain number of accused

LMP, LHP, LMD and LHD dock levelers, you may not award Systems ’profits as to those

accused dock levelers.

You do not have to use the same theory to calculate damages for every sale, however.

For example, an award may be split between lost profits for some sales and a reasonable royalty

for the remainder of sales of a product that infringes a patent and/or infringes a trade dress.

For any sale where you measure damages by a reasonable royalty or lost profits, you may

include royalty amounts or lost profits for the ‘754 Design Patent that you find valid and

infringed by the sale.

If a sale is awarded one form of monetary recovery, that same sale cannot be awarded

another form of monetary recovery.
