Tag: marking

Arctic Cat Inc., v. Bombardier Recreational Products Inc. BRP U.S. Inc. (CAFC Opinion, February 19, 2020)

The Federal Circuit issued a second opinion in this matter concerning the date damages accrue and patent marking. In its first opinion from December 2017, the court vacated the jury verdict from the Southern District of Florida, finding it was premised on the district court’s erroneous judgment on marking. Marking was important in this matter, because Arctic Cat sought damages prior to the date on which it served its complaint on Bombardier. Arctic Cat argued that it should be allowed damages going back in time before the date of its complaint, because a licensee to its patents in suit (i.e., Honda) sold a product that practiced the patent in the earlier time period.

In the first round of this litigation, the district court determined that to allow defendant Bombardier to limit damages to the date the complaint was filed, it was Bombardier’s burden to show that licensee-Honda had failed to mark its practicing products with Arctic Cat’s patents. Bombardier did not meet its burden per the District Court, and thus the damages period extended prior to Arctic Cat’s serving of its complaint.

The Federal Circuit explained in its 2017 opinion that the burden of marking was on the patent-holder Arctic Cat, not the defendant Bombardier. If the patent holder seeks damages prior to notice, it must prove its licensee marked practicing product. In its 2020 opinion, the Federal Circuit reiterated its findings from December 2017 that the burden of proof for marking falls upon the patent holder, not an alleged infringer.

In this latest opinion, the Federal Circuit considered when damages should accrue based on information that Arctic Cat’s licensee, Honda, both did not mark its product and stopped selling its unmarked practicing product prior to filing of the suit. Because there were no products to mark in the year or so prior to filing of the complaint, Arctic Cat argued that damages should accrue at least from when Honda stopped selling unmarked licensed products; but possibly back six years from filing based on Bombardier’s willful infringement. The District Court for its part ruled in favor of defendant Bombardier, which Arctic appealed.

The Federal Circuit affirmed the district court’s opinion that damages do not start and stop based on sales of an unmarked practicing product. It reiterated that in order for a patent holder to collect damages prior to notice, where a product practicing the patent(s) in suit is sold, that product must be marked. If a practicing product is sold but unmarked at any point in time, then the patent holder cannot seek damages prior to notice to the alleged infringer. The court also held that a finding of willfulness is irrelevant to when damages begin to accrue.

Rembrandt Wireless Technologies, LP v. Samsung Electronics Co. Ltd., et al. (Final Judgment March 28, 2018)

The long-running dispute between Rembrandt and Samsung may be over.  Eastern District of Texas Judge Gilstrap issued final judgment in which he determined that Samsung owes Rembrandt $11,111,920 as damages for Samsung’s infringement of the ‘580 and ‘228 patents. This judgment came after years of litigation, after a February 2015 jury verdict, after a ruling on a JMOL, and after an appeal to the Federal Circuit.

In February 2015, a jury determined that Samsung infringed both patents and that the patent claims were not invalid.  The jury awarded Rembrandt a lump sum of $15.7 million.  Judge Gilstrap determined that this award fell within the range offered by Mr. Roy Weinstein (Rembrandt’s damages expert), who had suggested a damages range of $14.5 million to $31.9 million.  Judge Gilstrap denied the JMOL on damages, and Samsung appealed to the Federal Circuit.

The Federal Circuit agreed with Judge Gilstrap’s opinions regarding infringement and damages, but it questioned his decision to allow Rembrandt to recover pre-notice damages.  In its defensive case, it appears Samsung argued that a licensee of Rembrandt’s practiced claim 40 of the ‘580 patent, but that Rembrandt did not require said-licensee to mark those products.  In response, Rembrandt disclaimed said-claim 40 which Samsung argued said-licensee practiced.  Rembrandt then successfully argued to the district court that, because it disclaimed said-claim 40 of the ‘580 patent, there was no marking requirement for the Rembrandt licensee, who did not practice any other claim of the ‘580 patent.  On appeal, the Federal Circuit questioned the district court’s allowance of pre-notice damages based upon disclaiming a claim, and remanded the case for adjustment of the damages award.

The Federal Circuit was interested in discussing whether the marking statute should be on a patent-by-patent basis – or instead, a claim-by-claim basis.  But it did not offer any definitive determination and instead left decision on the matter to the district court.  Ultimately, Rembrandt dropped its pre-notice damages award request, and accordingly, Judge Gilstrap left the patent-by-patent/claim-by-claim marking issue for another day.

The only remaining issue was how best to interpret the jury verdict in order to remove pre-notice damages.  Both parties volunteered competing guidance to Judge Gilstrap concerning how best to remove the pre-notice damages:

Ultimately, Judge Gilstrap decided Rembrandt’s method made more sense and that damages should be $11,111,920, to reflect the jury award minus the pre-notice time period.

Which all leads us to proclaim that the strategy of seeking to reclaim pre-notice damages by disclaiming a claimed claim is one meritorious of some acclaim….