On February 5, 2015, in Rembrandt Wireless v. Samsung, Case No. 2:13CV213-JRG-RSP, Judge Payne entered a Magistrate’s Recommendation recommending that Samsung’s motion for summary judgment be denied. Samsung argued that Rembrandt should be barred from receiving any pre-notice damages, because Rembrandt had allegedly not complied with the marking statute. Specifically, Samsung alleged that while Rembrandt itself had no products to mark, one of its licensees – Zhone – had sold products embodying claim 40 of the asserted ‘580 patent but had not marked them. 

Rembrandt conceded that while Zhone had sold unmarked products that related to claim 40, this was irrelevant since Rembrandt had “disclaimed” claim 40 of the ’580 patent, making it as though that claim had never existed. Samsung countered that disclaimer could not vitiate the marking requirement. The parties also disputed whether marking was pertinent on a claim-by-claim basis, or a patent-by-patent basis. The Court found that disclaimer of a claim rendered the claim as though it never existed, citing Genetics Inst., LLC v. Novartis Vaccines and Diagnostics, Inc., 655 F.3d 1291, 1299 (Fed. Cir. 2011), and thus Zhone’s failure to mark was not a basis to grant summary judgment. Because of the disclaimer argument, the Court did not reach the claim-by-claim versus the patent-by-patent marking issue, and took no position on the issue, but did cite Toro v. McCulloch Corp., 898 F.Supp. 679, 685 (D. Minn. 1995) as one case indicating a claim-by-claim approach is acceptable.

Once claim 40 was accounted for, the Court moved on to the remaining claims, and found that Samsung had provided insufficient evidence that Zhone’s products practiced those claims. Oddly, Rembrandt was in the position of arguing that the claims did not relate to 802.11g, and Samsung was in the position of arguing that the claims did relate to 802.11g. Perhaps because of this, neither party but forth much evidence on this point, and the Court found a genuine issue of material fact remained.