For our weekly SoCal IP Institute meeting on Monday, May 1, 2017, we will discuss the following cases:
Rembrant Wireless Techs., LP v. Samsung Electonics Co. Ltd. et al., Case No 2016-1729 (Fed. Cir. April 17, 2017) (available here). A jury found that Samsung infringed Rembrandt’s asserted patents, which the jury also found not invalid over prior art cited by Samsung. The jury awarded Rembrandt $15.7 million in damages. After trial, Samsung moved for judgment as a matter of law on obviousness and damages, which the district court denied. Samsung appeals the district court’s denial of JMOL, as well as the district court’s claim construction order and an order denying Samsung’s motion to limit Rembrandt’s damages for alleged failure to mark patented articles.
The Federal Circuit, here, agreed with the district court’s challenged claim construction and its denial of Samsung’s JMOL motions. However, the Federal Circuit reversed and remanded the district court’s denial of Samsung’s motion based on the marking statute. In particular, Rembrant had attempted to circumvent the marking rules by amending its infringement contentions and filing a statutory disclaimer of claim 40 which was previously asserted in the case. Then, Rembrant argued that “a disclaimed patent claim is treated as though it never existed.” the asserted patent had previously been licensed, without any marking obligation, to another. Specifically, Rembrant had previously argued that claim 40 was infringed by that licensee. Here, the Federal Circuit found that this disclaimer were ineffectual and did not counteract a prior licensee’s failure to mark. The Federal Circuit also remanded to the district court consideration of whether the marking statute should apply on a claim-by-claim or patent-by-patent basis.
Tannerite Sports, LLC v. Jerent Enterprises, LLC, Case No. 6:15-cv-00180-AA (D. Ore., March 27, 2017) (available here). Tannerite brought suit for patent infringement. Jerent filed a second amended answer and counterclaims and Tannerite sought to dismiss under Fed. R. Civ. P. 12(b)(6) for failure to state a claim upon which relief can be granted.
The thrust of Tannerite’s argument is that Jerent’s counterclaims are not pled with sufficient specificity following the recent changes in pleading requirements following Twombly and Iqbal and the more-recent abrogation of Form 18. One slight oddity in this case is that the case itself was filed before the abrogation, but defendant’s second amended complaint was filed afterwards. Here, the D. Oregon court sided with Tannerite finding that Jerent’s counterclaims and affirmative defenses must be sufficiently pled under Twombly and Iqbal.
For noninfringement, the court here found the pleadings inadequate, but after much discussion, found the invalidity arguments under 102/103 and inequitable conduct (on the same general facts) to present sufficient detail and pose factual disputes for resolution. Those issues were sufficiently-pled to survive.
All are invited to join us on Monday, May 1, 2017, at noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Elisha Manzur by 9 am Monday morning.