The District of Massachusetts, in In re NeuroGrafix (‘360) Patent Litigation, Case No. 1-13-md-02432 (Judge Stearns) (August 1, 2016), denied defendants’ summary judgment motion to limit plaintiff’s damages for its licensees’ failure to mark. The fact pattern is one that is relatively common when multiple defendants are sued under the same patents: The plaintiff had settled with two manufacturers, and in the agreement gave a license to the manufacturers, but then failed to ensure that they marked the licensed MRI system with the patent number. The court denied the motion, citing the following facts: (1) “it is unclear to the court what, if any, products should have been market with the [patent],” (2) the licensees “expressly denied infringement in their respective settlement agreements,” and (3) the agreements did not “identify a specific set of licensed products.” Elec. Order at 1. “Finally, the court notes that obtaining a patent license after being sued is a common compromise undertaken to settle a claim and avoid expensive and uncertain litigation. Because defendants have not met their burden of production in showing that there are licensed products practicing the patented technology that should be marked, their motion for summary judgment on this ground will be denied.” Id.
The Northern District of California, in Corning Optical Commc’ns Wireless LTD. v. SOLiD, Inc., et al., Case No. 5:14-cv-03750 (Judge Paul S. Grewal) (September 28, 2015), denied plaintiff’s motion for reconsideration of the Court’s order granting summary judgment in favor of defendants that “there is no genuine dispute that Section 287(a) applies to Corning’s claims” because Corning imported patented articles into the US. (slip op. at 2). The Court also found the location of the sales of the patented products was the US under Section 271(a).
On February 5, 2015, in Rembrandt Wireless v. Samsung, Case No. 2:13CV213-JRG-RSP, Judge Payne entered a Magistrate’s Recommendation recommending that Samsung’s motion for summary judgment be denied. Samsung argued that Rembrandt should be barred from receiving any pre-notice damages, because Rembrandt had allegedly not complied with the marking statute. Specifically, Samsung alleged that while Rembrandt itself had no products to mark, one of its licensees – Zhone – had sold products embodying claim 40 of the asserted ‘580 patent but had not marked them.
On March 2, in azd-2-12-cv-01797-267, Case No. CV-12-01797-PHX-JAT, Judge Teilborg of the District of Arizona denied a motion for summary judgment based on a marking defense. Holland moved for summary judgment of no damages for units sold before the date of actual notice, arguing that no constructive notice had been provided since PCT did not properly mark. The products at issue were coaxial connectors, and PCT argued that the products were too small to make it feasible to legibly mark on the products themselves. That being said, Holland pointed out that PCT did affix a label to some of the connectors, bearing the PCT logo as well as the PCT part number. These labels, however, are 5mm in height and have text of only 2.8mm, and PCT countered that it was not feasible to add the patent information to these labels, or to make the labels any larger.
On December 31, 2013, Judge Rakoff of the Southern District of New York issued a summary judgment opinion in Cognex Corp. v. Microscan Systems, Inc., 13 Civ. 2027 (JSR) (Doc. No. 142), in which the court ruled on an issue concerning failure to plead patent marking. According to the court, the plaintiffs’ complaint plead the date of actual notice but failed to plead compliance with the marking statue. The defendants moved for summary judgment that plaintiffs could not recover damages prior to actual notice.
On November 29, 2012, Judge Jonker of the Western District of Michigan issued an opinion in Stryker Corp. v. Zimmer Inc., Case No. 1:10-cv-1223 (Doc. No. 246), addressing Zimmer’s argument that Stryker’s marking did not provide adequate constructive notice of alleged infringement. The issue concerned marking of actual products versus package marking. Zimmer argued that Stryker could have marked the commercial embodiments with the patent numbers, but only marked the product packaging, and that Stryker’s marking thus ran afoul of 35 U.S.C. Section 287 (the marking statute).
On August 24, 2012, the Federal Circuit in ActiveVideo Networks, Inc. v. Verizon Communications, Inc., Case Nos. 2011-1538, -1567, 2012-1129, -1201 (Fed. Cir.), ruled on two interesting issues related to damages. The first concerned an allegedly comparable license for reasonable royalty, and the second cleared up what could be perceived as ambiguity in the marking law for method claims.
Two months ago, this blog did a write-up on the Mformation case , which held that pre-suit damages could be waived for failure to mark if apparatus claims were asserted in conjunction with method claims, even if those apparatus claims later were dropped or thrown out. Now, just two months later, faced with nearly identical facts, Judge Furgeson in the Northern District of Texas reached the opposite conclusion.