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.