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Federal Circuit Eliminates Pre-Go well with Damages for Failure of Licensee to Mark


by Dennis Crouch

This is a vital case in just a few methods.  The most important holding, I believe, is the courtroom’s statements that “technique patents” can’t be used to “circumvent” the marking requirement of Part 287.  As well as, though not coated in depth right here, the software program claims have been discovered patent eligible. 

Packet Intelligence LLC v. NetScout Methods, Inc. (Fed. Cir. 2020)

A jury sided with the patentee Packet Intelligence–discovering its three patents willfully infringed by NetScout and the claims not-invalid.  The jury additionally awarded the patentee $5.75 million in a operating royalty. US6665725; US6839751; US6954789. Choose Gilstrap topped the awarded with additional $2.eight million in enhanced damages and likewise denied a wide range of post-verdict JMOL motions.  On enchantment, the Federal Circuit has affirmed most points of the choice, however has reversed the pre-suit portion of the injury award.

Pre-Go well with Damages and Patent Marking:

35 U.S.C. § 287(a) gives a limitation on damages in patent circumstances.  If approved patented articles are being offered or imported, they need to be marked as patented (with the patent numbers). If not marked, then the statute bars any damages from earlier than “the infringer was notified of the infringement.”  The statute was amended as a part of the AIA to permit for “virtual marking” that has now grow to be widespread.

Though Packet Intelligence doesn’t make any merchandise itself, it has licensed its patents, and the marking requirement extends to approved (i.e., licensed) merchandise made underneath the patent.

In Arctic Cat Inc. v. Bombardier Leisure Prods. Inc., 876 F.3d 1350 (Fed. Cir. 2017), the Federal Circuit endorsed a burden-shifting course of related to patent marking:

  1. The infringer has the preliminary burden of manufacturing to supply proof of unmarked merchandise. “[T]his is a low bar” and one that might seemingly be confronted as abstract judgment. Arctic Cat.
  2. Nevertheless, if the case will get to trial, the patentee then has the burden of proving that it complied with Part 287 (both exhibiting that the merchandise have been marked or they didn’t must be marked).

Arctic Cat was determined after the jury verdict on this case and the district courtroom adopted a unique method — inserting your complete burden on the defendant of proving the existence of a licensed product.  The query of marking was given to the jury with directions for the jury to award six-years of again damages until NetScout “present[s] the existence of a … a licensed product that practices a number of claims of the ’789 patent.” (Observe under, NetScout didn’t object to this portion of the decision).

On enchantment, the Federal Circuit reversed the pre-suit injury award — discovering that NetScout had met its burden-of-production by figuring out a product that arguably embodied the invention and that the patentee had not confirmed that the product “doesn’t observe the []patent.”

“Methodology Patents” and Patent Marking:  The claims in two of the patents have been all technique claims — not topic to the marking requirement which focuses on “patented articles.”  Nevertheless, on enchantment, the Federal Circuit additionally discovered that no substantial proof supported the jury verdict for again damages of these technique claims.

Packet Intelligence can not merely depend gross sales of the software program accused of infringing the ’789 patent as gross sales of the tactic claimed within the ’725 and ’751 patents. As an alternative, Packet Intelligence was required to supply proof that the claimed technique was truly used and therefore infringed.

Apparently some proof was produced of infringement-by-use, but it surely was all concerning internal-use, gross sales, and coaching — and there’s “no proof supporting damages brought on by or ensuing from these pre-suit actions.”  As an alternative, all the damages calculations centered on gross sales.

The courtroom went-on to carry that it will be improper to permit the patentee to “circumvent § 287” by capturing gross sales of an unmarked product with its technique claims:

Packet Intelligence is barred from recovering damages for pre-suit gross sales of the [accused] merchandise as a result of it did not adjust to the marking requirement. It can not circumvent § 287 and embody these merchandise in its royalty base just by arguing that NetScout’s infringement of associated technique claims drove gross sales. As a result of neither the document nor the regulation helps Packet Intelligence’s restoration of pre-suit damages for any of the asserted patents, NetScout is entitled to judgment as a matter of regulation on this situation.

Id. In the long run, the courtroom discovered that the infringer was entitled to judgment as a matter of regulation cancelling the pre-suit injury award.  I’d have thought {that a} new trial could be most popular due to the defective jury directions.

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The jury directions have been in error as a result of they positioned the burden on the infringer of proving no-marking quite than on the patentee of proving that it correctly marked.  Nevertheless, the infringer (NetScout) didn’t object to these specific directions.  Failure to object usually means no enchantment, until there’s a “plain error” within the directions.  Fed. R. Civ. Professional. R. 51(d). On this case, the courtroom didn’t discover “plain error” however as a substitute pursued an alternate method on enchantment.

In keeping with the courtroom, jury directions don’t grow to be “regulation of the case” for evaluating sufficiency of the proof. Fairly, the appellate panel won’t look to see whether or not the jury adopted the directions as introduced however quite they need to have been introduced:

We’re certain by the regulation, not by the jury cost, even when the cost was not objected to. Markman v. Westview Devices, Inc., 52 F.3d 967, 975 n.5 (Fed. Cir. 1995) (en banc). And NetScout’s failure to object to the district courtroom’s jury instruction doesn’t render the instruction regulation of the case for evaluating the sufficiency of the proof. Boyle v. United Techs. Corp., 487 U.S. 500, 514 (1988) (citing Metropolis of St. Louis v. Praprotnik, 485 U.S. 112, 120 (1988) (plurality opinion)).

I’ll be aware that on this level that the Federal Circuit cites its personal regulation and never fifth Circuit because it did for different procedural issues within the case. One motive for that is that the Federal Circuit’s method shouldn’t be within the majority. See:

When a celebration fails to object to directions within the trial courtroom, these directions usually grow to be the regulation of the case, and appellate assessment is precluded until plain or elementary error could be discovered.

Corpus Juris Secundum, 89 C.J.S. Trial § 876 (2020). A lot of sources disagree on this entrance.

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Lastly I’ll be aware that Choose Reyna dissented-in-part. He would have discovered the asserted claims ineligible underneath Part 101:

In my opinion, the claims are directed to the summary thought of figuring out knowledge packets as belonging to “conversational flows” quite than discrete “connection flows.” Whereas the claimed implementations of this concept could finally include ingenious ideas that save the claims, it was clear error for the district courtroom to base its discovering of inventiveness on the summary thought itself and its attendant advantages.

Slip Op.  The bulk disagreed — holding that “The declare solves a technological drawback by figuring out and refining a conversational circulate such that completely different connection flows could be related to one another and finally with an underlying utility or protocol.”


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