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Rembrandt Wireless Technologies, LP v. Samsung Electronics Co.

Remand Necessary to Determine Whether, for Damages Purposes, Disclaimer of Claim Can Cure Failure to Mark

Rembrandt Wireless Technologies, LP v. Samsung Electronics Co., (Fed. Cir. Apr. 17, 2017) (Taranto, Chen, STOLL) (E.D. Tex.: Gilstrap) (3 of 5 stars)

Fed Cir affirms infringement judgment and claim construction, while vacating denial of motion to limit damages for failure to mark. The district court did not err in construing Rembrandt’s claims as broad enough to cover multiple “types” of modulation methods. That interpretation was based on the applicant’s post-allowance insertion of language into the claim, with its statement that the interpretation “clarified” to establish that it would cover multiple methods. That the statement included an “i.e.” clause—“two types of modulation methods, i.e., different families of modulation techniques, such as [FSK and QAM]”—did not render it non-definitional for purposes of claim construction. The opinion also rejects Samsung’s argument that the district court’s interpretation created a conflict with a dependent claim.

The district court also did not err in rejecting Samsung’s obviousness attack. There was a fact question as to whether one of Samsung’s references actually disclosed a key limitation, and the jury was free to reject Samsung’s arguments on this issue as well as to the sufficiency of Samsung’s proof for a motivation to combine. Though Rembrandt had argued that one of Samsung’s references taught away from combination with the other, it was not necessary to weigh whether there was substantial evidence to support a teaching away determination. “Whether a reference teaches away is doctrinally distinct from whether there is no motivation to combine prior art references.” Slip op. at 13.

As to damages, the district court did not err in denying Samsung’s motion to exclude testimony from Rembrandt’s damages expert on methodological grounds in his assessment of the incremental value associated with the patented technology. The opinion rejects Samsung’s arguments that the time periods analyzed by the expert were improperly chosen, that the expert erred in attributing the entirety of an observed price differential to the patented technology, and that the expert should not have relied on a settlement agreement that was redacted in various ways. As such, substantial evidence supported the jury’s award of damages on “all of Samsung’s infringing sales,” subject to the marking/notice issue infra.

The district court erred, however, in denying Samsung’s motion to limit damages based on Rembrandt’s failure to mark products covered by one of its claims—a claim that Rembrandt subsequently disclaimed. The opinion discusses how § 287 exists to “protect[] the public’s ability to exploit an unmarked product’s features without liability for damages until a patentee provides either actual or constructive notice through marking or actual notice.” Slip op. at 20. Rembrandt cannot perform an “end-run” around the marking statute via disclaimer. “[D]isclaimer cannot serve to retroactively dissolve the § 287(a) marking requirement for a patentee to collect pre-notice damages.” Id. at 21–22. However, Rembrandt’s argument that the marking statute should attach on a claim-by-claim, not patent-by-patent, basis is novel, not waived, and not developed by the district court. “We therefore remand to the district court to address in the first instance whether the patent marking statute should attach on a patent-by-patent or claim-by-claim basis.” Id. at 23.

KEYWORDS: INFRINGEMENT (YES); CLAIM CONSTRUCTION; OBVIOUSNESS (NO); MARKING; DAMAGES