DISCLAIMING A PATENT CLAIM MAY NOT CURE A FAILURE TO MARK

REMBRANDT WIRELESS TECHNOLOGIES, LP v. SAMSUNG ELECTRONICS CO. LTD., Appeal No. 2016-1729 (Fed. Cir. April 17, 2017).  Before Taranto, Chen and Stoll.  Appealed from E.D. Tex. (Gilstrap, J.)  (Patent Marking – Pre-Notice Damages)

In this case, Rembrandt sued Samsung for infringement of two data communication patents: the ‘580 and ‘228 patents.  Before trial, Samsung moved to limit Rembrandt’s potential damages award based on its licensee’s failure to mark products covered by asserted claim 40 of the ‘580 patent.

Furthermore, eight days later, Rembrandt withdrew claim 40 from the infringement allegations and filed a statutory disclaimer of claim 40 at the USPTO.  After trial, the jury found that Samsung infringed Rembrandt’s patents, and that the patents were not invalid over the prior art Samsung presented.  The jury awarded Rembrandt $15.7 million in royalty damages.

In addition, in denying Samsung’s motions (before and after trial) to limit liability for pre-notice damages, the district court accepted Rembrandt’s argument that any prior obligation to mark products embodying claim 40 vanished once it disclaimed claim 40.  Samsung appealed.   (continue reading)

Summary by:  John Hocker

To view additional Federal Circuit decisions, please visit our Federal Circuit Case Summaries page.