Salazar v. HTC Corporation
Filing
249
MEMORANDUM OPINION re 238 MOTION for Partial Summary Judgment On Compliance With Marking Requirements Under 35 U.S.C. § 287(a) filed by Joe Andrew Salazar.. Signed by Magistrate Judge Roy S. Payne on 5/1/2018. (nkl, )
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
JOE ANDREW SALAZAR,
Plaintiff,
v.
RSP
HTC CORPORATION,
Defendant.
§
§
§
§
§
No.
2:16-CV-01096-JRG-
§
§
§
§
MEMORANDUM OPINION
In this patent case, the Court now considers Plaintiff Joe Salazar’s Motion for Partial
Summary Judgment on Compliance With Marking Requirements [Dkt. # 238]. After
further consideration of the parties’ arguments during the pretrial conference, controlling
case law, and the procedural history of this case, the Court will VACATE its earlier
decision to grant Salazar leave to file the motion and DENY the motion as untimely.
I.
BACKGROUND
Salazar accuses HTC Corporation of infringing U.S. Patent 5,802,467 by making
and selling various models of smartphones. Second Am. Compl. [Dkt. # 44] ¶ 7. The ’467
Patent relates to a system for two-way communication with appliances, such as intercoms,
televisions, sound systems, and the like. See, e.g., ’467 Patent fig.1b. According to the
patent, prior-art devices communicated with such appliances only using one-way
communication, and usually with only one of an infrared (IR) signal or a radio frequency
1/7
(RF) signal. Id. at 1:18–50. Relative to the prior art, the ’467 Patent considered full twoway communication directly with an appliance using IR or RF links to be significantly
advantageous. Id. at 1:51–2:11.
Salazar’s operative pleading, filed June 15, 2017, alleges
[a]fter the ‘467 Patent issued in 1998, beginning in 1999, Salazar
manufactured and sold products that embody the inventions disclosed and
claimed in the ‘467 Patent. These products were marked with U.S. Patent No.
5,802,467 in accordance with and in compliance with the Marking Statute,
35 U.S.C. § 287.
Pl.’s Second Am. Compl. [Dkt. # 44] ¶ 13; see also Pl.’s First Am. Compl. [Dkt. # 17] ¶ 11
(same language). During discovery, Salazar identified the products at issue in a verified
interrogatory response: the Model Hughes Remote Phone, the 650D My One Remote, and
the My1Remote (collectively, “the I3 devices”1). Pl.’s Second Am. Resps. to Def.’s First
Set of Interrogs. [Dkt. # 242-3] at 11.
The deadline for dispositive motions ran on February 12, 2018. Sixth Am. Docket
Control Order [Dkt. # 145] at 2. On March 7, 2018, Defendant answered Salazar’s Second
Amended Complaint and alleged, under the heading “Affirmative and Other Defenses”:
Salazar’s claim for damages is statutorily limited by 35 U.S.C. §§ 286 and/or
287. Salazar alleges that the Model Hughes Remote Phone, the 650D My
One Remote, and the My1Remote devices practiced the asserted claims of
the ’467 patent. Because I3 failed to consistently and continuously mark
substantially all of the Model Hughes Remote Phone devices with the ’467
patent number from 1999 to 2001, Salazar is precluded from recovering pre1
Innovative Intelcom Industries, or I3, was the entity that sold the devices. Salazar was the
president of I3 during the time these devices were sold. Salazar Decl. (Apr. 18, 2018) [Dkt.
# 238-2] ¶ 2.
2/7
suit damages. Because I3 also failed to consistently and continuously mark
substantially all of the 650D My One Remote devices with the ’467 patent
number from 2001 to 2003, Salazar is precluded from recovering pre-suit
damages. Because I3 also failed to consistently and continuously mark
substantially all of the My1Remote devices with the ’467 patent number from
2003 to 2005, Salazar is precluded from recovering pre-suit damages.
Def.’s Am. Answer & Counterclaims [Dkt. # 180] ¶ 31. Salazar then “answered” this
“defense” by changing his position and alleging the I3 devices do not, in fact, meet all of
the limitations of the asserted claims. Pl.’s Answer & Reply to Def.’s Am. Answer &
Counterclaims [Dkt. # 200] at 23. Alternatively, Salazar claims the I3 devices “were
consistently and continuously (although mistakenly) marked with the ‘467 patent number.”
Id.
At an April 16, 2018 pretrial conference, the parties disputed whether this marking
issue should go the jury. Salazar explained the I3 devices were mistakenly marked, and
only recently did he dissect the I3 devices and conclude they didn’t embody any asserted
claims. Salazar contended (1) the I3 devices “unequivocally” do not meet the IR limitation
of the asserted claims, (2) this issue would only confuse the jury, (3) Defendant raised the
issue after the deadline for dispositive motions, and (4) Defendant never identified the
products as required under Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 876
F.3d 1350 (Fed. Cir. 2017). See H’rg Tr. (Apr. 16, 2018) [Dkt. # 235] at 7:21–12:8.
In response, Defendant’s counsel indicated the marking issue had not been
thoroughly explored. In fact, he had not even seen the I3 products or had an opportunity
to inspect Salazar’s marking evidence. Defendant simply asked an interrogatory about all
3/7
products that practiced the invention and based his “defense” on Salazar’s verified
response. See id. at 12:12–14:20.
In deciding whether to allow an expedited motion for summary judgment on this
issue, the Court noted
I know that it’s late, but on the other hand, it sounds like this defense was
injected late, and I’m -- if you had something that you were going to present,
I’d consider it now on the question of whether or not to allow the motion.
But what I’m hearing is that at this point, you don’t have anything other than
a possible critique on the sufficiency of the Plaintiff’s evidence.
Id. at 14:21–15:5. Defendant agreed with that proposition, id. at 15:6–8, after which the
Court granted Salazar leave to expeditiously file the motion now before the Court.
II.
APPLICABLE LAW
The patentee, who best knows whether his articles (or his licensees’ articles) have
been marked, has the burden of pleading and proving compliance with the marking
requirement of 35 U.S.C. § 287. See Arctic Cat Inc. v. Bombardier Recreational Prods.
Inc., 876 F.3d 1350, 1366 (Fed. Cir. 2017) (citing Maxwell v. J. Baker, Inc., 86 F.3d 1098,
1111 (Fed. Cir. 1996); Dunlap v. Schofield, 152 U.S. 244, 248 (1894)). Compliance with
§ 287 is a question of fact. Id. (citing Maxwell, 86 F.3d at 1111).
Section 287 is a limitation on damages rather than an affirmative defense. Id. (citing
Motorola, Inc. v. United States, 729 F.2d 765, 770 (Fed. Cir. 1984)). Still, an alleged
infringer must put the patentee on notice about specific unmarked products which the
alleged infringer believes practice the patent and were sold by the patentee or his
4/7
authorized licensees. Id. at 1368. Otherwise, a patentee’s “universe of products for which
it would have to establish compliance would be unbounded.” Id.
III.
DISCUSSION
Arctic Cat held that an accused infringer who challenges a patentee’s compliance
with the marking statute based on unmarked products covered by the claims must identify
those products to invoke § 287. Arctic Cat, 876 F.3d at 1366. In resolving a split among
district courts on the issue, the Court so held because “permitting infringers to allege
failure to mark without identifying any products could lead to a large scale fishing
expedition and gamesmanship.” Id.; see also id. at 1367–1368 (discussing the “split among
the district courts regarding which party must initially identify the products which it
believes the patentee failed to mark”).
Arctic Cat did not, however, concern products that the plaintiff agreed were covered
by the asserted claims. Rather, the defendant claimed the products at issue embodied the
patent, and the plaintiff claimed they did not. See Arctic Cat, 876 F.3d at 1367 (noting it
was undisputed the plaintiff’s licensee did not mark any of its products with the patent
number). In other words, the Arctic Cat parties disputed whether the products were
required to be marked, not whether they were marked. Id.
Here, there was no such dispute—at least not as of the February 2018 dispositivemotions deadline. To the contrary, Salazar had both (1) pled there were properly marked
products embodying the claims, and (2) provided verified interrogatory responses
identifying the products by name. Arctic Cat does not impose an obligation on an alleged
5/7
infringer, such as Defendant, to simply parrot back an identification of products the
patentee claims are properly marked. And because Defendant had no such obligation,
Salazar had the burden of pleading and proving compliance with § 287 as to the I3 devices
at the time of the dispositive-motions deadline, and should have moved for summary
judgment then.2
Lest the parties think the Court has simply taken the easy way out rather than resolve
the motion on the merits, the Court notes the timing of Defendant’s motion raises some
significant issues. For one, Defendant has had no opportunity (to the Court’s knowledge)
to examine Salazar’s expert on his supplemental report, which simply states he looked at
the devices and concluded they don’t satisfy all of the claim limitations. Griffin Supp. Rep.
[Dkt. # 239-1] at 16 (¶ 57). Nor has Defendant had an opportunity (to the Court’s
knowledge) to examine Salazar on his declaration, which states
I have first hand knowledge regarding the marking of my patent number on
all products manufactured and sold by I3 including the Model Hughes
Remote Phone, 650D My One Remote, and My1Remote devices. Each
device sold had a manufacturer sticker affixed to the device itself bearing the
U.S. patent number 5,802,467.
Salazar Decl. (Apr. 18, 2018) [Dkt. # 238-2] ¶ 2. What is the “first hand knowledge”? Who
did the affixing? What procedures were in place to make sure every I3 device had a sticker
2
If anything, Salazar’s position change about the I3 devices after the dispositive-motions
deadline would entitle Defendant to additional time for investigating the I3 devices to
determine if they were, in fact, covered by the asserted claims and to comply with its burden
under Arctic Cat.
6/7
affixed? The Court can understand why Defendant might want to investigate both
declarations further.
In the end, this is a problem created by Salazar—not Defendant. At the very least,
Salazar should have confirmed whether the I3 devices satisfied the claim limitations
earlier. He could have then withdrawn his allegation that the I3 devices embody the
asserted claims and put the burden on Defendant under Arctic Cat to contend otherwise
while discovery was open. Additionally, Salazar could have timely moved for summary
.
judgment on whether the devices were “substantially consistently and continuously
marked,” regardless of whether they embody the claims or not. He did neither.
The Court should not be forced into a rushed decision on this issue on less-thanfully-developed record and without Defendant having had the opportunity to examine
Salazar’s declarants. Thus, based on its closer reading of Arctic Cat and the procedural
history of this case, the Court VACATES its April 16, 2018, bench ruling granting leave
to move for summary judgment and DENIES Salazar’s motion as untimely.
SIGNED this 3rd day of January, 2012.
SIGNED this 1st day of May, 2018.
____________________________________
ROY S. PAYNE
UNITED STATES MAGISTRATE JUDGE
7/7
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?