United States District Court, E.D. Virginia, Alexandria Division
O'GRADY UNITED STATES DISTRICT JUDGE.
matter comes before the Court on Defendant Adobe Inc.'s
Motion for Judgment as a Matter of Law That TecSec, Inc. Has
Not Complied with 35 U.S.C. § 287(a) (Dkt. 1338). An
opposition brief was filed and the Court heard oral argument.
The Court granted the Motion during trial for the reasons
stated from the bench and for good cause shown, and issued an
Order to that effect. This Memorandum Opinion follows to more
fully explain the Court's reasoning for granting the
Motion from the bench.
The Marking Motion for Judgment As a Matter of Law Was
argues that the issue of marking is moot because of TecSec
and Adobe's joint stipulation that "in light of the
Court's ruling to exclude certain evidence relating to
whether Adobe possessed pre-suit knowledge of acts
constituting infringement (over TecSec's objection),
TecSec will not seek damages in this trial for the time
period pre-dating the filing of the present lawsuit."
Dkt. 1330. The Court disagrees.
evidence the Court excluded was not related to whether TecSec
complied with the marking obligations of 35 U.S.C. §
287(a). Instead, it was related to the separate issue of
whether TecSec put Adobe on notice of the patents-in-suit
prior to the lawsuit through some means other than marking.
the issue of marking was fully litigated in the trial prior
to the filing of the joint stipulation. Each party brought
forth all the testimony on the issue of marking that could be
brought forth. Because the marking issue was fully litigated,
it would be prejudicial to Adobe, and the other defendants in
this case,  not to make an affirmative ruling
regarding marking. See Mannatech, Inc. v. Wellmss Quest,
LLC, 2015 WL 11120881, at *3 (N.D. Tex. Nov. 5, 2015)
(finding that the plaintiff was "entitled to an
affirmative ruling" regarding the defendant's fully
litigated, but withdrawn, defenses). Therefore, the issue of
marking was not mooted by the parties' joint stipulation
regarding pre-suit damages.
TecSec Held the Burden of Proving Marking in Compliance
with § 287(a).
Federal Circuit established the parties' relative burdens
regarding marking in Arctic Cat Inc. v. Bombardier
Recreational Prods. Inc., 876 F.3d 1350 (Fed. Cir.
2017). Contrary to Plaintiffs argument, the standards set
forth in Arctic Cat are general, and apply both at
the summary judgment stage and during trial.
Arctic Cat, "an alleged infringer who
challenges the patentee's compliance with § 287
bears an initial burden of production to articulate the
products it believes are unmarked 'patented articles'
subject to § 287." Id. at 1368. This
burden of production "is a low bar." Id.
The alleged infringer "need only put the patentee on
notice that he or his authorized licensees sold specific
unmarked products which the alleged infringer believes
practice the patent." Id. Adobe satisfied its
burden by identifying the following sold products it believed
practiced patents-in-suit: TecSec's VEIL, TecSec's
CKM, seven Microsoft products (including Windows Vista),
Sterling's Connect:Direct, and Boeing's Digital
Cinema. TecSec does not appear to dispute that Adobe met its
burden of production. See Dkt. 1335.
Adobe met its burden of production, the burden then shifted
back to TecSec to prove that the identified products were
either marked or did not practice the asserted patents.
See Arctic Cat, 876 F.3d at 1367 ("The burden
of proving compliance with marking is and at all times
remains on the patentee.").
TecSec Failed to Meet Its Burden As a Matter of
failed to offer any evidence that the identified products did
not practice the asserted products. TecSec also failed to
provide evidence demonstrating its compliance with the
marking requirements of § 287(a).
demonstrate full compliance with the marking statute, a
patentee must show that it consistently and continuously
marked substantially all of the sold products practicing the
claimed inventions. Nike, Inc. v. Wal-Mart Stores,
Inc., 138 F.3d 1437, 1446 (Fed. Cir. 1998). Where a
practicing product was sold by a third-party licensee, the
licensee's failure to mark may be excused only if the
patentee "made reasonable efforts to ensure" that
the licensees complied with the marking requirements.
Arctic Cat, 876 F.3d at 1366.
did not produce any evidence that the Microsoft practicing
products, Sterling Connectr Direct, or Boeing Digital Cinema
were marked with the TecSec patents-in-suit. Mr. Wack's
testimony at trial also failed to demonstrate that TecSec
took reasonable efforts to ensure these licensed, sold
products were marked. None of the licensing agreements
contained a provision requiring marking and while Mr. Wack
claims to have stressed the importance of marking to the
licensees, he admitted that he doesn't "particularly
police people" to see if their products were marked and
did not take any steps to determine whether the licensees
actually marked their products. Under these facts, no
reasonable jury could find that TecSec "made reasonable
efforts to ensure" the licensees marked their products.
See K&KJump Start/Chargers, Inc. v. Schumacher Elec.
Corp.,52 Fed.Appx. 135, 141 (Fed. Cir. Nov. 25, 2002)
(holding the defendant was entitled to judgment as a matter
of law on the issue of marking because "[a]lthough there
was a provision in the contract between [the plaintiff] and
[its licensee] requiring marking, [the plaintiff] took no
steps to determine if [the licensee] was actually marking the
products until after the start of the current
litigation"); Devices for Med., Inc. v. Boehl,822 F.2d 1062, 1066 (Fed. Cir. 1987) ...