{"id":1504,"date":"2017-04-17T15:52:10","date_gmt":"2017-04-17T19:52:10","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1504"},"modified":"2017-04-19T16:33:35","modified_gmt":"2017-04-19T20:33:35","slug":"failure-of-licensee-to-mark-may-upend-15-7-million-damage-award","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1504","title":{"rendered":"Failure of Licensee to Mark May Upend $15.7 Million Damage Award"},"content":{"rendered":"

In Rembrandt Wireless Technologies, LP v. \u00a0Samsung Electronics CO., LTD.<\/em>, [2016-1729] (April 17, 2017), the Federal Circuit affirmed the district court’s claim construction and denial of JMOL, but vacated\u00a0$15.7 million in damages and remanded because of a lack of patent marking.<\/p>\n

In affirming the claim construction, the Federal Circuit found unambiguous statements in the prosecution history defined the meaning of\u00a0\u201cdifferent types\u201d of modulation, and Samsung\u2019s arguments to the\u00a0contrary do not diminish the unambiguous statements in
\nthe prosecution history. \u00a0Samsung also attacked the use of the term \u201ci.e.,\u201d which Samsung argued\u00a0introduces an exemplary item in a set, but the Federal Circuit found that the use of i.e. was \u201ci.e., is often definitional, noting that i.e. is Latin for id est, which means \u201cthat is.\u201d \u00a0The Federal Circuit also rejected Samsung’s reference to the broader construction in a related IPR, noting that the construction is not binding, and that IPR proceedings operates under\u00a0a broader claim construction standard than the federal
\ncourts.<\/p>\n

In affirming the non-obviousness determination, the Federal Circuit rejected Samsung’s argument that it was a claim construction issue of the scope of “different types,” and characterizing it as a factual question of whether the reference disclosed “different types” of modulation. The Federal Circuit found that there was substantial evidence to support the jury’s presumed finding underpinning the non-obviousness determination.<\/p>\n

On the marking issue\u00a0prior to\u00a0trial, Samsung moved to limit Rembrandt\u2019s potential
\ndamages award based on its failure to mark products\u00a0covered by previously-asserted claim 40 of the \u2019580 patent. \u00a0Specifically, Rembrandt had licensed the \u2019580\u00a0patent to Zhone Technologies, Inc., and the\u00a0license agreement between\u00a0Rembrandt and Zhone did not require Zhone to\u00a0mark its products with the patent number. Pursuant to\u00a0the patent marking statute, 35 U.S.C. \u00a7 287, Samsung\u00a0sought to limit Rembrandt\u2019s damages to those incurred\u00a0after<\/em> Samsung received notice of Rembrandt\u2019s patents, which, according to Samsung, occurred when Rembrandt\u00a0filed its complaint. Eight days later, Rembrandt withdrew\u00a0claim 40 from its infringement allegations and filed\u00a0a statutory disclaimer pursuant to 35 U.S.C. \u00a7 253(a) and\u00a037 C.F.R. \u00a7 1.321(a), disclaiming claim 40 in the U.S.\u00a0Patent and Trademark Office. The court accepted
\nRembrandt\u2019s argument that any prior obligation to mark\u00a0products embodying claim 40 vanished once it disclaimed\u00a0claim 40.<\/p>\n

The Federal Circuit held that Rembrandt cannot use disclaimer to avoid\u00a0the marking requirement in 35 U.S.C. \u00a7 287, and vacated\u00a0the judgment of the district court as it relates to marking. \u00a0While marking under\u00a035 U.S.C. \u00a7 287 is permissive,\u00a0there is a consequence if the patent owner chooses not to mark:<\/p>\n

In the event of failure so to mark, no damages\u00a0shall be recovered by the patentee in any action for infringement,\u00a0except on proof that the infringer was notified\u00a0of the infringement and continued to infringe thereafter,\u00a0in which event damages may be recovered only for infringement\u00a0occurring after such notice.<\/p><\/blockquote>\n

The Federal Circuit said that the marking statute protects the\u00a0public\u2019s ability to exploit an unmarked product\u2019s features\u00a0without liability for damages until a patentee provides
\neither constructive notice through marking or actual\u00a0notice. \u00a0The Federal Circuit added that\u00a0allowing Rembrandt to use disclaimer to avoid the consequence\u00a0of its failure to mark undermines the marking\u00a0statute\u2019s public notice function. \u00a0While a disclaimer can disclaim the rights of the patent owner, the Federal Circuit said it has never held that a\u00a0patent owner\u2019s\u00a0disclaimer relinquishes the rights of the public. \u00a0Considering the rights held by the\u00a0public, the Federal Circuit held that disclaimer cannot serve to retroactively\u00a0dissolve the \u00a7 287(a) marking requirement for a\u00a0patentee to collect pre-notice damages.<\/p>\n

Before the district court, Rembrandt argued, consistent with its disclaimer position, that the marking requirement is determined on a claim by claim basis, rather than on a patent-by-patent basis. \u00a0The Federal Circuit left this question for the district to determine in the first instance on remand.<\/p>\n","protected":false},"excerpt":{"rendered":"

In Rembrandt Wireless Technologies, LP v. \u00a0Samsung Electronics CO., LTD., [2016-1729] (April 17, 2017), the Federal Circuit affirmed the district court’s claim construction and denial of JMOL, but vacated\u00a0$15.7 million in damages and remanded because of a lack of patent … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[1],"tags":[],"class_list":["post-1504","post","type-post","status-publish","format-standard","hentry","category-uncategorized"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1504","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1504"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1504\/revisions"}],"predecessor-version":[{"id":1505,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1504\/revisions\/1505"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1504"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1504"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1504"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}