{"id":1847,"date":"2017-12-08T12:55:58","date_gmt":"2017-12-08T17:55:58","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1847"},"modified":"2017-12-09T11:17:09","modified_gmt":"2017-12-09T16:17:09","slug":"patent-owner-has-burden-to-prove-marking-once-infringer-identifies-unmarked-products","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1847","title":{"rendered":"Patent Owner Has Burden to Prove Marking Once Infringer Identifies Unmarked Products"},"content":{"rendered":"

In Arctic Cat Inc. v. Bombardier Recreational Products Inc.<\/a>, [2017-1475] (December 8, 2017), the Federal Circuit\u00a0affirme the district court\u2019s denial
\nof judgment as a matter of law as to obviousness, the
\njury\u2019s royalty rate, willfulness,\u00a0treble damages, and award of an ongoing
\nroyalty to Arctic Cat, but vacated the court\u2019s denial of\u00a0judgment as a matter of law as to marking and remand\u00a0for further consideration limited to that issue.<\/p>\n

The case involved U.S. Patent Nos. 6,568,969 and 6,793,545 directed to\u00a0thrust steering\u00a0systems for personal watercraft.\u00a0\u00a0At trial, the jury found both patents not invalid,\u00a0awarded a royalty for past infringement of $102.54 per unit, and based upon the jury’s finding of willful infringement, the district court trebled damages.\u00a0 The district court also\u00a0awarded an ongoing royalty of $205.08 per unit.<\/p>\n

On the obviousness finding the Federal Circuit said\u00a0that it presumes the jury found that an ordinarily skilled\u00a0artisan would not have been motivated to combine the prior art as appellant proposed, and that if
\nsuch a fact finding is supported by substantial evidence, it cannot not reverse it. The Federal Circuit noted that appellant\u00a0devoted much of its argument to re-litigating its case\u00a0and its evidence rather than addressing the evidence that\u00a0could have supported the jury\u2019s finding of no motivation to\u00a0combine. The Federal Circuit said that it does not reweigh the evidence and reach its own factual determination regarding motivation. The\u00a0question on appeal is only whether substantial
\nevidence supports the jury\u2019s presumed finding, and the Federal Circuit found substantial evidence did support the finding.<\/p>\n

As to objective indicia of non-obviousness, the patent owner argued the claimed invention received\u00a0industry praise and satisfied a long-felt need. The Federal Circuit again presumed the jury found in favor of patentee, and the Federal Circuit cannot reverse these\u00a0presumed findings if they are supported by substantial evidence, which the Federal Circuit found they were.<\/p>\n

As to the marking issue,\u00a0 the Federal Circuit said that the patent owner\u00a0patentee bears the burden of pleading and proving it complied with \u00a7 287(a)\u2019s marking requirement, because if a patentee who makes, sells, offers for sale, or\u00a0imports the patented articles has not given notice of its\u00a0right\u201dby marking the articles pursuant to the marking\u00a0statute, it is not entitled to damages before the date of\u00a0actual notice.\u00a0\u00a0A patentee\u2019s licensees must also comply with \u00a7287,\u00a0because the statute extends to persons making or selling\u00a0any patented article for or under the patentee.\u00a0 The Federal Circuit add that recognizing that it may be difficult for\u00a0a patentee to ensure his licensees\u2019 compliance with the
\nmarking provisions, its has held that where third parties\u00a0are involved, courts may consider whether the patentee\u00a0made reasonable efforts to ensure compliance with\u00a0the marking requirements.<\/p>\n

In the present case, the patent owner Arctic Cat licensed patents to Honda, and the agreement\u00a0specifically stated Honda\u00a0\u201cshall have no obligation or requirement to mark\u201d its\u00a0licensed products.\u00a0 However, While Honda sold products in the U.S. without marking them, Arctic Cat contended they were not covered by the patent and thus should not have been marked.<\/p>\n

Arctic Cat and Bombardier disputed whether the products Honda sold were patented articles that\u00a0were required to be marked, as well as who had the burden of proof.\u00a0 There was a split in the Circuits on the burden of proof, which the Federal Circuit resolved by holding that\u00a0an alleged infringer who challenges the patentee\u2019s\u00a0compliance with \u00a7 287 bears an initial burden of\u00a0production to articulate the products it believes are unmarked\u00a0\u201cpatented articles\u201d subject to \u00a7 287. The Federal Circuit said that this was a low bar, and that the alleged infringer need only put the
\npatentee on notice that it or its authorized licensees sold\u00a0specific unmarked products which the alleged infringer\u00a0believes practice the patent. The Federal Circuit said that the alleged infringer\u2019s\u00a0burden is a burden of production, not one of persuasion or\u00a0proof.\u00a0\u00a0The Federal Circuit said that\u00a0 once the alleged infringer\u00a0meets its burden of production, however, the patentee\u00a0bears the burden to prove the products identified do not\u00a0practice the patented invention.<\/p>\n

The Federal Circuit declined to determine the minimum showing
\nneeded to meet the initial burden of production, but found that it was satisfied.\u00a0\u00a0The Federal Circuit did say that alleged\u00a0infringer need not produce claim charts to meet its initial\u00a0burden of identifying products, because it is the patentee who\u00a0bears the burden of proving that it satisfied the marking\u00a0requirements and thus the patentee who would have to\u00a0prove that the unmarked products identified by the\u00a0infringer do not fall within the patent claims. The Federal Circuit concluded that the district\u00a0court erred in placing this burden upon BRP and\u00a0vacated and remanded on the issue of marking.<\/p>\n

On the pre-judgment and post-judgment royalty rates, the Federal Circuit found no error, noting that a difference in the rates may be justified by the change in\u00a0the parties\u2019 legal relationship and other factors.\u00a0 Finally the Federal Circuit affirmed the district court on the issue of willfulness and enhanced damages.<\/p>\n

 <\/p>\n

 <\/p>\n","protected":false},"excerpt":{"rendered":"

In Arctic Cat Inc. v. Bombardier Recreational Products Inc., [2017-1475] (December 8, 2017), the Federal Circuit\u00a0affirme the district court\u2019s denial of judgment as a matter of law as to obviousness, the jury\u2019s royalty rate, willfulness,\u00a0treble damages, and award of an … 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":[48,53,12,36],"tags":[],"class_list":["post-1847","post","type-post","status-publish","format-standard","hentry","category-damages","category-objective-indicia","category-obviousness","category-secondary-considerations"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1847","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=1847"}],"version-history":[{"count":2,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1847\/revisions"}],"predecessor-version":[{"id":1849,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1847\/revisions\/1849"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1847"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1847"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1847"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}