Dyson v. SharkNinja - PL MSJ Haas (289) Brief

Case: 1:14-cv-00779 Document #: 410 Filed: 05/16/17 Page 1 of 19 PageID #:19179
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IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
)
DYSON, INC. and )
DYSON TECHNOLOGY LIMITED, )
)
Plaintiffs and ) Case No. 1:14-cv-00779
Counterclaim-Defendants, )
) Judge: Hon. Robert M. Dow, Jr.
v. )
) JURY TRIAL DEMANDED
SHARKNINJA OPERATING LLC and )
SHARKNINJA SALES COMPANY, )
)
Defendants and )
Counterclaim-Plaintiffs. )
)
DYSONS MEMORANDUM OF LAW IN SUPPORT OF ITS MOTION TO

EXCLUDE CERTAIN REBUTTAL OPINIONS OF SHARKS DAMAGES EXPERT
DAVID A. HAAS UNDER DAUBERT AND FEDERAL RULE OF EVIDENCE 702
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TABLE OF CONTENTS
Page
I. INTRODUCTION ...............................................................................................................1
II. STATEMENT OF FACTS ..................................................................................................4
A. Dysons Asserted Patents And Sharks Accused Products ......................................4
B. David Haass Article Of Manufacture Analysis...................................................4
III. DAUBERT STANDARD .....................................................................................................8
IV. ARGUMENT .......................................................................................................................8
A. Apportionment Between The Value Of Design And Functional Features Is

Impermissible As A Matter Of Law Under 35 U.S.C. 289...................................8
1. When Congress Passed The Predecessor To Section 289 In 1887, It

Overruled The Requirement That A Patent Owner Prove The
Portion Of Profits Attributable Solely To Ornamental Design....................8
2. The Supreme Court In Samsung v. Apple Did Not Disturb The

Settled Rule That Apportionment Is Impermissible ..................................11
B. Mr. Haass Article Of Manufacture Methodology Builds In An

Impermissible Apportionment Between Design And Functionality ......................12
V. CONCLUSION ..................................................................................................................15
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TABLE OF AUTHORITIES
Page(s)
Cases
Bergstrom v. Sears, Roebuck & Co.,

496 F. Supp. 476 (D. Minn. 1980) .............................................................................. 10, 13
Daubert v. Merrell Dow Pharm., Inc.,

509 U.S. 579 (1993) ............................................................................................................ 8
Dobson v. Dornan,
118 U.S. 10 (1886) .............................................................................................................. 9
Dobson v. Hartford Carpet Co.,

114 U.S. 439 (1885) ........................................................................................................ 8, 9
LeClercq v. The Lockformer Co.,

No. 00 C 7164, 2005 WL 1162979 (N.D. Ill. Apr. 28, 2005)............................................. 8
Lewis v. Citgo Petroleum Corp.,

561 F.3d 698 (7th Cir. 2009) .............................................................................................. 8
Medicines Co. v. Mylan Inc.,

No. 11-cv-1285, 2014 WL 1227214 (N.D. Ill. Mar. 25, 2014) .................................... 8, 14
Nike, Inc. v. Wal-Mart Stores, Inc.,

138 F.3d 1437 (Fed. Cir. 1998)............................................................................. 10, 11, 13
Samsung Elecs. Co., Ltd. v. Apple Inc.,

137 S. Ct. 429 (2016) ........................................................................................ 1, 11, 12, 13
Trans-World Mfg. Corp. v. AI Nyman & Sons, Inc.,

750 F.2d 1552 (Fed. Cir. 1984)......................................................................................... 11
Untermeyer v. Freund,
58 F. 205 (2d Cir. 1893)............................................................................................ 1, 9, 13
Statutes
35 U.S.C. 289 ........................................................................................................................... 1, 9
Rules
Fed. R. Evid. 702 ............................................................................................................................ 8
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I. INTRODUCTION
Dyson seeks disgorgement of Sharks profits under 35 U.S.C. 289 as a remedy for
Sharks infringement. It has been settled lawsince the 1800sthat under 289, the patentee
should recover the total profits for the infringing article of manufacture and that it is
impermissible to apportion those profits between the amount due to the ornamental design, and
that due to other features of the product, including its functionality. See Untermeyer v. Freund,
58 F. 205, 21112 (2d Cir. 1893). The statutes total profits language prohibits any such
apportionment: [t]he manifest purpose of congress was to enlarge the remedy against infringers
of design patents, and to declare that the measure of profits recoverable on account of the
infringement should be considered to be the total net profits upon the whole article. Id. at 212.
The rule which congress declared for the computation of profits was the total profit from the
manufacture or sale of the article to which the design was applied, as distinguished from the pre-
existing rule of the profit which could be proved to be attributable to the design. Id.
Recently, the Supreme Court in Samsung Elecs. Co., Ltd. v. Apple Inc., 137 S. Ct. 429,
433 (2016), considered the question of what constitutes the article of manufacture. Before
Samsung, the law provided that the article of manufacture was the entire product as sold to an
end user, regardless of whether the design was only applied to some limited portion of that
product. Id. The propriety of that approach was questioned, for example, in relation to
recovering profits of an entire car when the design patent only covers a headlight. The Samsung
Court found that article of manufacture can be either an end product sold to consumers or, in
the case of a multicomponent product, a component of that product. Id. at 434. In doing so,
the Court expressly declined to set forth a test for identifying the article of manufacture in the
case of a multicomponent product. Id. at 436. But at the same time, the Court reaffirmed over
100 years of precedent, holding that [t]otal, of course, means all such that the total profit
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for which 289 makes an infringer liable is thus all of the profit made from the prohibited
conduct, that is, from the manufacture or sale of the article of manufacture to which [the
patented] design or colorable imitation has been applied. Id. at 434.
In this case, Dyson asserts three design patents covering the ornamental design of a stick
vacuum and/or hand vacuum. For example, Dysons U.S. Design Patent No. D668,010 covers
the ornamental design of a stick vacuum with a hand-vac portion, floor tool, and a wand
connecting the two:
(Dkt. 138, Claim Construction Jt. Appendix, at J.A. 187 (010 patent at Fig. 4).)
Dyson accuses Sharks Rocket line of hand- and stick-vacuums of infringing its design
patents. For example, Sharks Rocket stick-vac consists of a hand-vac portion, a floor tool, and a
wand connecting the two. Also in the box are other various tools that can be interchangeably
used with the product. Dyson and its expert contend that the Rocket stick-vac consists of
precisely those three componentsthe hand-vac portion, the floor tool, and the wand (as
highlighted below)while factoring out the other tools in the box.
Dysons other asserted patents have different scope. For those, Dyson has identified the
portion of the accused product that is covered by the design: the hand-vac portion and the wand
for U.S. Design Patent No. D668,823, and the hand-vac portion for U.S. Design Patent No.
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D577,163. The parties agree on the components of the accused products that correspond to the
patented designs, and the analysis should end there. (Ex. A, Haas Rep. 67.)
But Shark goes further. It argues that the design is only applied to the visible
portions of the vacuum, and that everything underneath is functional. Sharks expert, David
Haas, thus determined the article of manufacture by selecting only those items from the bill of
materials (screws, washers, springs, etc.) that Shark contends are visible to the eye, excluding
everything else. According to Mr. Haas, because it is appropriate to factor out functional
aspects and components from the calculation of profits, he has removed materials and
components that cannot be seen. (Ex. B, Haas Dep. Tr. at 81:2282:14.) Mr. Haas suggests
further that his identification of article of manufacture is still over-inclusive because it does
not take into account the fact that certain visible components that make up the ornamental
appearance of the accused products may also be functional, which would result in lower
disgorgement numbers. (Ex. A, Haas Rep. 67.) The goal of Sharks and Mr. Haas approach
is to reduce Sharks profit that will be disgorged under the law. For the 010 patent, for example,
Mr. Haass approach reduces the disgorgement award by , which would award
Dyson only of the profit he calculates is attributable to the hand-vac, wand, and floor tool.
Mr. Haass approach is contrary to law. While the Supreme Court did not specify the test
for determining the article of manufacture, it did not disturb the hundred-plus years of clear
law prohibiting an infringer from paying profits on only that portion of a product that is
attributable solely to design. Shark simply backdoors the disallowed apportionment into its
definition of the article of manufacture. Sharks approach runs afoul of the statutory
requirementwhich the Court in Samsung did not and could not disturbthat Shark is liable to
Dyson for the total profit of the infringing article to which the patented design has been
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design expert, Mr. Ball, who has identified the visible components of the accused SharkNinja
products using the bills of materials produced by SharkNinja (id. 65).
To calculate Sharks profits for disgorgement, Mr. Haas divided the cost of the elements
identified by Mr. Ball as visible to an ordinary observer by the total cost of all vacuum and
accessory components identified by [Dysons design expert] Mr. Mauro as related to each of the
accused product families. (Id. 67.)
Mr. Haas performed this calculation in Exhibits 4.1 through 4.4 of his report, with each
exhibit corresponding to one of the four Accused Products. Mr. Haass methodology was
identical for each product. For example, Exhibit 4.2.1 is Mr. Haass HV300 Article of
Manufacture Allocation - Article of Manufacture Cost table. (Ex. A, Haas Rep. at Ex. 4.2.1 at
16 1 ).) The first column in Mr. Haass table identifies the relevant Component. For the
HV300, he identifies the Main Body component (i.e., hand vac portion); Power Nozzle
component; and Tube component, along with various packaging, artwork, and tool/accessory
components. (E.g., id. at Ex. 4.2.1 at 1620; Ex. B, Haas Dep. at 150:23151:9.) In the third
column Mr. Haas identifies the various Materials that make up each Component. (Ex. A,
Haas Rep. at Ex. 4.2.1 at 1620; see also Ex. B, Haas Dep. at 148:20150:3 (testifying that you
can associate those [various materials listed in column 3] with a particular component that
[hes] identified in Column 1).) If Mr. Ball identified a specific material as visiblewhich is
indicated in Mr. Haass Exhibit 4.2.2 with a yes in the Potential Infringement Scenarios [2]
columnsMr. Haas includes the cost associated with that material in his Exhibit 4.2.1 to be
included in his disgorgement calculation; for components Mr. Ball found to be not visible, as
1
Mr. Haas provides a number of exhibits that have separately sequentially numbered pages.
Dysons citations to page numbers when discussing Mr. Haass Exhibits relate to the page
numbers provided at the bottom of the specific Haas exhibit Dyson is addressing.
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indicated by a no in the Potential Infringement Scenarios [2] columns, Mr. Haas excludes
the profit, as indicated by - in Exhibit 4.2.1. (Ex. A, Haas Rep. at Ex. 4.2.1 at 1620; Ex. B,
Haas Dep. at 146:1924.)
Mr. Haas thus reports his article of manufacture in terms of a fractional portion of the
entire value of the profits Shark made on the infringing products. For the 010 patent, for
example, it is Mr. Haass opinion that the article of manufacture comprises a variety of
components that account for only between of the value of the total product. (Haas
Rep. 68; see also id. 6970 (163 and 823 patent results).)
In his deposition, Mr. Haas admitted that he was taking a portion of the functional
aspects of the product and removing them from what might be ornamental:
Q. If you identify the article of manufacture as only the components that are
visible to the eye and excluding all of those components that are not visible to the
eye, youre at least taking a portion of the functional aspects of the product and
removing them from what might be ornamental, right?
A. I think thats correct.
(Ex. B, Haas Dep. at 79:2180:4 (objection omitted).)
Mr. Haas also opines that Dysons damages expert, Ms. Julie Davis, has improperly
calculated disgorgement based on more than the article of manufacture. (Ex. A, Haas
Rep. 16.) He offers this opinion because of his view that the article of manufacture Ms.
Davis uses in her analysiswhich includes all of the materials associated with the relevant
componentsdidnt factor out the functional aspects and components:
Q. In your view, Ms. Davis has overstated the disgorgement analysis based on her
overstating of whats included in the article of manufacture, right?
A. Its my belief that because her analysis did not make any adjustment to account
for the cost of components, to account for the functional features identified by the
court in its claim construction order, but including just the total cost of all
components that are included in her definition of article of manufacture causes her
results to be overstated.
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Q. [] They're overstated because she didnt factor out the functional aspects and
components in her use of an article of manufacture, right? Thats your opinion,
right?
A. I think thats correct.
(Ex. B, Haas Dep. Tr. at 81:2282:14 (objections omitted).)
Mr. Haas further opines that his identification of the article of manufacture is
conservative, because it does not take into account the fact that certain visible components
that make up the ornamental appearance of the accused products may also be functional, which
would result in lower disgorgement numbers. (Ex. A, Haas Rep. 67.) At his deposition, he
reiterated that Mr. Balls identification of visible materials is overly inclusive because some
visible materials had functional uses that would be distinct from the ornamental uses:
Q. You said you talked to Mr. Ball about functional aspects. What was that
conversation? What was the substance of it?
A. The substance of that conversation was that he indicated that several of the
components that were included in his analysis of the article of manufacture of the
visible parts -- I guess, to be clear, his analysis of the -- which parts were visible.
He indicated to me that there were, amongst those components, a number of them
that had functional uses that would be distinct from the ornamental uses.
Q. And how did you use that in your analysis?
A. I just understood that his conclusions may be considered to be, perhaps, overly
inclusive, and that eliminating the elements that have functional uses may
reduce the number, may reduce the value of the article of manufacture, or the --
I guess, the parts that would be purely ornamental.
(Ex. B, Haas Dep. Tr. at 75:1476:9.)
Mr. Haas alternatively calculates disgorgement damages using the article of
manufacture applied by Dysons expert, Ms. Julie Davis. (Id. at 74:520 (discussing Ex. A,
Haas Rep. 79).) When applying the same article of manufacture as Ms. Davis, his calculation
of total profits increases, for example, from for the 010 patent.
(Cf. Ex. A, Haas Rep. 79, with id. 160.)
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III. DAUBERT STANDARD
[C]ourts must act as gatekeepers to ensure that expert testimony satisfies the
admissibility requirements of Federal Rule of Evidence 702. LeClercq v. The Lockformer Co.,
No. 00 C 7164, 2005 WL 1162979, at *1 (N.D. Ill. Apr. 28, 2005) (citing Daubert v. Merrell
Dow Pharm., Inc., 509 U.S. 579 (1993)). Expert testimony must be based upon sufficient facts
or data, the product of reliable principles and methods, and the witness must have applied the
principles and methods reliably to the facts of the case. LeClerq, 2005 WL 1162979, at *1
(quoting Fed. R. Evid. 702). The burden is on Shark, as the proponent of the expert at issue, to
prove that each of the admissibility requirements of Rule 702 are met by a preponderance of the
evidence. Lewis v. Citgo Petroleum Corp., 561 F.3d 698, 705 (7th Cir. 2009).
Expert opinions that appl[y] the wrong legal standard are legally flawed and will not
be helpful to the trier of fact. Medicines Co. v. Mylan Inc., No. 11-cv-1285, 2014 WL 1227214,
at *5 (N.D. Ill. Mar. 25, 2014). Such testimony is excludable on that basis. Id.
IV. ARGUMENT
A. Apportionment Between The Value Of Design And Functional Features Is

Impermissible As A Matter Of Law Under 35 U.S.C. 289
1. When Congress Passed The Predecessor To Section 289 In 1887, It

Overruled The Requirement That A Patent Owner Prove The Portion
Of Profits Attributable Solely To Ornamental Design
In 1885, the Supreme Court held that a design patent owner could recover only that
portion of the infringers profits that it could prove to be attributable to the ornamental design.
Dobson v. Hartford Carpet Co., 114 U.S. 439, 44546 (1885). Under that rule, the patent owner
would have to separate or apportion the defendants profits between the patented feature and
the unpatented features. Id. at 445. In setting out that rule, the Court explained that the article
which embodies the patented design consists not only of its ornamentation or shape, but also
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of other intrinsic merits of quality and structure. Id. A carpet, for example, has not only an
ornamental pattern imprinted on it, but also other qualities like durability of fabric and
fastness of color. Id. at 444. That carpet may also be protected by utility patents if, for example,
it is made on an infringing loom, or made using one of various infringing processes or
mechanisms for carding, spinning or dyeing. Id. In view of those observations, the Dobson
Court concluded that the only damages recoverable for design patent infringement were those
proven to be tied specifically to the ornamental appearance of the infringing product. Id. at 445-
46; see also Dobson v. Dornan, 118 U.S. 10, 17 (1886) (The plaintiff must show what profits or
damages are attributable to the use of the infringing design.).
Just two years later, Congress enacted the predecessor statute to Section 289, explicitly
overturning the Dobson requirement of apportionment in design patent cases. See Untermeyer v.
Freund, 58 F. 205, 21112 (2d Cir. 1893). The manifest purpose of congress was to enlarge the
remedy against infringers of design patents, and to declare that the measure of profits
recoverable on account of the infringement should be considered to be the total net profits upon
the whole article. Id. at 212. Accordingly, [t]he rule which congress declared for the
computation of profits was the total profit from the manufacture or sale of the article to which
the design was applied, as distinguished from the pre-existing rule of the profit which could be
proved to be attributable to the design. Id.
The current version of 35 U.S.C. 289, codified in 1952, continues to expressly award
design patent owners the total profit due to an infringing design:
Whoever during the term of a patent for a design, without license of the owner,
(1) applies the patented design, or any colorable imitation thereof, to any article of
manufacture for the purpose of sale, or (2) sells or exposes for sale any article of
manufacture to which such design or colorable imitation has been applied shall be
liable to the owner to the extent of his total profit.
35 U.S.C. 289 (emphasis added).

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In view of that history, courts have long held that Section 289 disgorgement does not
permit apportionment of profits attributable to design as opposed to other aspects of the article of
manufacture, including functional aspects. For example, in Bergstrom v. Sears, Roebuck & Co.,
the accused infringer argue[d] that a design patentee can only recover profits under 35
U.S.C. 289 which are attributable to the design or ornamental aspects of the patent, rather than
the entire profits on the sale of the patented article. 496 F. Supp. 476, 494 (D. Minn. 1980).
The court rejected that argument, and held that the recoverable profit under [ 289] should not
be diminished by allowing only profit on sales which resulted from the design of the article. Id.
It looked to the plain language of the statute, as well as to authority discussing the purpose of
Congress in passing the statute, explaining that it is unlikely that Congress would have used
such all encompassing language if it intended that a design patentee could only recover profits
attributable solely to the design or ornamental qualities of the patented article. Id.
Likewise, in Nike, Inc. v. Wal-Mart Stores, Inc., the Federal Circuit recited Section 289s
history at length in explaining that for design patents, as enacted in 1887, there is no need to
apportion the infringers profits between the patented design and the article bearing the design.
138 F.3d 1437, 1442 (Fed. Cir. 1998). It pointed out that, according to the Congress that
overturned the Dobson requirement, [a]pportionment presented particularly difficult problems
of proof for design patentees, for the patentee was required to show what portion of the
infringers profit was due to the design and what portion was due to the article itself. Id. at
1441. The 1887 Congress made clear that in its view, the Dobson requirement of apportionment
would provide no effectual money recovery for infringement. Id. (quoting H.R. Rep. No. 1966
at 1 (1886)). Congress made clear such a rule was unacceptable: [i]t is expedient that the
infringers entire profit on the article should be recoverable, for it is not apportionable, and it
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is the design that sells the article. Id. (quoting H.R. Rep. No. 1966 at 23 (1886)); accord
Trans-World Mfg. Corp. v. AI Nyman & Sons, Inc., 750 F.2d 1552, 156768 (Fed. Cir. 1984)
(discussing the history of the Dobson decision and the 1887 Congresss actions superseding it).
2. The Supreme Court In Samsung v. Apple Did Not Disturb The Settled
Rule That Apportionment Is Impermissible
This past term, in Samsung Elecs. Co., Ltd. v. Apple Inc., the Supreme Court addressed a
narrow dispute over the meaning of the phrase article of manufacture as used in Section 289.
137 S. Ct. 429, 434 (2016). The case involved Samsungs infringement of design patents
covering certain ornamental aspects of the iPhone. Apple was awarded Samsungs entire profits
for its infringing phones, even though those patents did not cover the entire phone, but rather
only a portion of the front face of the phone. Id. at 433. The question presented was whether,
in the case of a multicomponent product, the relevant article of manufacture must always be the
end product sold to the consumer or whether it can also be a component of that product. Id. at
434. The Court held that [t]he term article of manufacture, as used in 289, encompasses
both a product sold to a consumer and a component of that product. Id.
In view of that holding, [a]rriving at a damages award under 289 thus involves two
steps. First, identify the article of manufacture to which the infringed design has been applied.
Second, calculate the infringers total profit made on that article of manufacture. Id.
The Court did not disturb, and in fact reaffirmed, the longstanding rule that a design
patent owner is entitled to the total profits of an infringing article of manufacture, and not to
some sub-portion that is only attributable to ornamental appearance. Id. at 434. Total, of
course, means all such that [t]he total profit for which 289 makes an infringer liable is thus
all of the profit made from the prohibited conduct, that is, from the manufacture or sale of the
article of manufacture to which the patented design or colorable imitation has been applied.
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Id. In fact, Samsung argued that Section 289 contains a causation requirement, but
abandoned th[e] theory at argument, and the Court declined to address it. Id. n.2. Moreover,
the Court went out of its way to recite Dobson and the congressional history relating to its
rejection. Id. at 43233.
Following Samsung, while parties may dispute what constitutes the article of
manufacture, one thing is fundamentally clear: apportionment of the amount attributable to
design versus the amount attributable to functional or other characteristics is not permitted. Id.
at 434.
B. Mr. Haass Article Of Manufacture Methodology Builds In An

Impermissible Apportionment Between Design And Functionality
As discussed above, the law is clear that a design patent owner is entitled to the total
profits of the article of manufacture to which the infringing design is applied, not some sub-
portion that is solely attributable to design as opposed to functionality. Yet Mr. Haas and Shark
have attempted to circumvent the law by expressly conducting such an apportionment in the
guise of the determination of the article of manufacture.
Here, Dyson and its experts have identified three components in the claimed design
the handvac portion, the wand, and the floor tool. But unlike the headlight-on-a-car example
referenced above, Dysons 010 patent is directed to the complete productthat is each of the
three componentsand thus is applied to the entire Shark Rocket stick vac:
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(Dkt. 138 at J.A. 187 (010 patent at Fig. 4).) By contrast, because it disclaims the floor tool
component, Dyson contends that the 823 patent is applied to the hand-vac and tube components,
but not the floor tool component. (Dkt. 345-5 at 7, 823 patent Fig. 4.) And because the 163
patent covers only the hand-vac design, Dyson contends that the 163 patent is applied only to
the hand-vac component of the Shark Rocket. (Dkt. 345-3, 163 patent at Fig. 1.)
Mr. Haas likewise identifies three Components of the Accused Products relevant to
Dysons patents: (1) Main Body; (2) Tube; and (3) Nozzle. (Ex. A, Haas Rep. at Ex.
4.2.1.) In that sense, Mr. Haas agrees with Dysons experts as to which of these three
components should be included in a disgorgement analysis based on which of Dysons Asserted
Patents Shark infringes: the handheld unit, wand, and nozzle for the 010 patent; the handheld
unit and wand for the 823 patent; and the handheld unit for the 163 patent. (Id. 67.) The
analysis should end there as the article of manufacture relevant to each patent is identified (and
the parties agree), and under Samsung, patentees are entitled to the total profit on the sale of
the article of manufacture to which [the patented] design or colorable imitation has been
applied. Samsung, 137 S. Ct. at 434.
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But Mr. Haas goes further. Mr. Haas breaks those components that are covered by the
design into a long list of materials and calculates profits attributable solely to the visible
materials (which he incorrectly refers to as the article of manufacture). (E.g., Ex. A, Haas
Rep. at Ex. 4.2.1 at 16; id. 6768.) Mr. Haas does this to account for the functional
features, that is, to remove the portion of Sharks profits he contends are attributable to function
from his calculation of Sharks profit on each component. (Ex. B, Haas Dep. Tr. at 81:22
82:14.) As a result, Mr. Haass disgorgement calculation eliminates over
profits that, in Mr. Haass opinion, is attributable to the three components that
he identified. (Ex. A, Haas Rep. 79, 160.) That is exactly the type of apportionment that
Congress rejected in 1887 as confirmed by numerous cases, and that the Supreme Court left
undisturbed in Samsung. Untermeyer, 58 F. at 212; Bergstrom, 496 F. Supp. at 494; Nike, 138
F.3d at 144142; Samsung, 137 S. Ct. at 434.
Mr. Haas further opines that his analysis is conservative because some of the visible
components had functional uses that would be distinct from the ornamental uses. (Ex. B, Haas
Dep. at 75:1476:9.) That is, Mr. Haas intends to tell the jury that it needs to eliminate all profits
potentially due to function from its disgorgement award, and that he performed his article of
manufacture analysis to enable them to do that conservative[ly]. (Id.)
Mr. Haass further sub-division of the main body, tube, and power nozzle components
into visible materials and not-visible materials for purposes of eliminating functional (as
opposed to design) features violates the requirement of 289 mandating that Dyson is entitled to
Sharks total profit on the relevant components. Mr. Haass attempt to bypass this mandate
with his article of manufacture calculation should be excluded because it is legally flawed and
will not be helpful to the trier of fact. Medicines Co., 2014 WL 1227214, at *5.
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V. CONCLUSION
Mr. Haass article of manufacture calculation, as set forth in paragraphs 33, 57-58, 60-
72, and 152-161, and Exhibits 4.1 through 4.4.2, of his report should be excluded under Federal
Rule of Evidence 702 and Daubert because his methodology contradicts the statutory
requirement that Dyson is entitled to Sharks total profit on the article of manufacture to which
the infringing design is applied.
Date: May 15, 2017 Respectfully Submitted,
By: /s/ Bryan S. Hales, P.C.

Bryan S. Hales, P.C. (IL Bar No. 6243060)
bhales@kirkland.com
Dennis J. Abdelnour (IL Bar No. 6292242)
dabdelnour@kirkland.com
Brian A. Verbus (IL Bar No. 6314193)
brian.verbus@kirkland.com
Jay J. Emerick (IL Bar No. 6312746)
jay.emerick@kirkland.com
KIRKLAND & ELLIS LLP
300 North LaSalle
Chicago, Illinois 60654
Telephone: (312) 862-2000
Facsimile: (312) 862-2200
Gregg F. LoCascio, P.C. (admitted pro hac vice)

glocascio@kirkland.com
655 Fifteenth Street, N.W.
Washington, D.C. 20005-5793
Telephone: (202) 879-5000
Facsimile: (202) 879-5200
Counsel for Plaintiffs Dyson, Inc.

and Dyson Technology Limited
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CERTIFICATE OF SERVICE
I hereby certify that on this 15th day of May, 2017, the foregoing document was filed
electronically through the Courts Electronic Case Filing System. Service of this document is
being made upon all counsel of record in this case by Email and a redacted copy of this
document is being served by the Notice of Electronic Filing issued through the Courts
Electronic Case Filing System on this date.
/s/ Bryan S. Hales, P.C.

Case: 1:14-cv-00779 Document #: 410-1 Filed: 05/16/17 Page 1 of 1 PageID #:19198

EASTERN DIVISION
)
DYSON, INC. and )
)
v. )
)
Defendants and )
)
SEALED EXHIBIT A TO

bhales@kirkland.com
300 North LaSalle
Telephone: (312) 862-2000
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Case: 1:14-cv-00779 Document #: 410-2 Filed: 05/16/17 Page 1 of 1 PageID #:19199

EASTERN DIVISION
)
DYSON, INC. and )
)
v. )
)
Defendants and )
)
SEALED EXHIBIT B TO

bhales@kirkland.com
300 North LaSalle
Telephone: (312) 862-2000
Facsimile: (312) 862-2200

Dyson v. SharkNinja - PL MSJ Haas (289) Brief

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Dyson v. SharkNinja - PL MSJ Haas (289) Brief

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Case: 1:14-cv-00779 Document #: 410 Filed: 05/16/17 Page 1 of 19 PageID #:19179

IN THE UNITED STATES DISTRICT COURT

DYSONS MEMORANDUM OF LAW IN SUPPORT OF ITS MOTION TO

II. STATEMENT OF FACTS ..................................................................................................4

A. Dysons Asserted Patents And Sharks Accused Products ......................................4

B. David Haass Article Of Manufacture Analysis...................................................4

III. DAUBERT STANDARD .....................................................................................................8

IV. ARGUMENT .......................................................................................................................8

A. Apportionment Between The Value Of Design And Functional Features Is

1. When Congress Passed The Predecessor To Section 289 In 1887, It

2. The Supreme Court In Samsung v. Apple Did Not Disturb The

B. Mr. Haass Article Of Manufacture Methodology Builds In An

Bergstrom v. Sears, Roebuck & Co.,

Daubert v. Merrell Dow Pharm., Inc.,

Dobson v. Hartford Carpet Co.,

LeClercq v. The Lockformer Co.,

Lewis v. Citgo Petroleum Corp.,

Medicines Co. v. Mylan Inc.,

Nike, Inc. v. Wal-Mart Stores, Inc.,

Samsung Elecs. Co., Ltd. v. Apple Inc.,

Trans-World Mfg. Corp. v. AI Nyman & Sons, Inc.,

35 U.S.C. 289 ........................................................................................................................... 1, 9

Fed. R. Evid. 702 ............................................................................................................................ 8

patented] design or colorable imitation has been applied. Id. at 434.

connecting the two:

highlighted below)while factoring out the other tools in the box.

products using the bills of materials produced by SharkNinja (id. 65).

accused product families. (Id. 67.)

Haas Dep. at 146:1924.)

A. I think thats correct.

(Ex. B, Haas Dep. at 79:2180:4 (objection omitted).)

componentsdidnt factor out the functional aspects and components:

A. I think thats correct.

(Ex. B, Haas Dep. Tr. at 81:2282:14 (objections omitted).)

Q. And how did you use that in your analysis?

(Ex. B, Haas Dep. Tr. at 75:1476:9.)

Mr. Haas alternatively calculates disgorgement damages using the article of

(Cf. Ex. A, Haas Rep. 79, with id. 160.)

III. DAUBERT STANDARD

A. Apportionment Between The Value Of Design And Functional Features Is

1. When Congress Passed The Predecessor To Section 289 In 1887, It

it is made on an infringing loom, or made using one of various infringing processes or

damages are attributable to the use of the infringing design.).

proved to be attributable to the design. Id.

design patent owners the total profit due to an infringing design:

35 U.S.C. 289 (emphasis added).

overturned the Dobson requirement, [a]pportionment presented particularly difficult problems

both a product sold to a consumer and a component of that product. Id.

rejection. Id. at 43233.

manufacture, one thing is fundamentally clear: apportionment of the amount attributable to

B. Mr. Haass Article Of Manufacture Methodology Builds In An

guise of the determination of the article of manufacture.

components should be included in a disgorgement analysis based on which of Dysons Asserted

applied. Samsung, 137 S. Ct. at 434.

82:14.) As a result, Mr. Haass disgorgement calculation eliminates over

F.3d at 144142; Samsung, 137 S. Ct. at 434.

manufacture analysis to enable them to do that conservative[ly]. (Id.)

the infringing design is applied.

Date: May 15, 2017 Respectfully Submitted,

By: /s/ Bryan S. Hales, P.C.

Gregg F. LoCascio, P.C. (admitted pro hac vice)

Counsel for Plaintiffs Dyson, Inc.

Electronic Case Filing System on this date.