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Failure to Mark Patented Article Creates New Issues


By
Smith & Hopen PA

Rembrandt v. Samsung, (Fed. Cir. 2017), decided April 17, 2017.

Rembrandt sued Samsung on patents involving modem communications. Rembrandt’s licensee, Zhone, sold a product to Samsung that embodied claim 40 of the Rembrandt patent. However, Zhone did not mark the product with the patent number. Rembrandt subsequently disclaimed claim 40 and asserted various other claims against Samsung. A jury found Samsung infringed Rembrandt’s asserted patents and awarded $15.7 million in damages. Samsung, appealed several issues including whether Zhone’s failure to mark its product reset the date in which damages are calculated. The district court found Rembrandt’s disclaimer of claim 40 resolved the issue but the Federal Circuit reversed and remanded.

35 USC 287(a) provides that “[i]n the event of failure so to mark, no damages shall be recovered by the patentee in any action for infringement, expect on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice.” The Federal Circuit noted that the marking statute serves three related purposes:

1) Helping to avoid innocent infringement;

2) encouraging patentees to give notice to the public that the article is patented; and

3) aiding the public to identify whether an article is patented.

The Federal Circuit found Rembrandt’s position an “end-run around” the marking statute and its purpose. Whether disclaiming a failure to mark claim applies on a claim-by-claim basis (Rembrandt’s position) or on a patent-by-patent basis (Samsung’s position) was not briefed to the Federal Circuit. Accordingly, this issue of whether the failure to mark forgoes pre-notice damages for the entire patent or just the claims effected is remanded back to the district court.




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