Federal Circuit Summaries

Before Moore, Plager, and Stoll. Appeal from the United States District Court for the Southern District of Florida.

Summary: In challenging compliance with the marking requirement of § 287(a), an accused infringer need only identify the unmarked products sold or licensed by the patentee that it believes are covered by the patents in suit, at which point the burden shifts to the patentee to show that the identified products do not practice the patented invention.

Arctic Cat licensed Honda to manufacture and sell products under certain patents. The license agreement explicitly stated that Honda “shall have no obligation or requirement to mark” the licensed products. Arctic Cat then sued Bombardier for infringement of two of the licensed patents, and Bombardier was found to infringe the patents at a jury trial. Bombardier moved for JMOL to limit damages, arguing that Arctic Cat failed to comply with the marking requirement because Honda had not marked allegedly patented products. The District Court denied the JMOL motion, finding that Bombardier had not proven that the Honda products were covered by any of the patents in suit.

The Federal Circuit disagreed in large part. Resolving a split among district courts, the Federal Circuit first agreed that the accused infringer bears the initial burden of identifying which products it believes to be unmarked patented products. The Federal Circuit described this initial burden as a “low bar,” and explicitly noted that the accused infringer is not obliged to provide claim charts reading the claims of the patents in suit on the licensed products. The Federal Circuit, however, disagreed with the District Court that the accused infringer bears any further burden. Once the accused infringer meets its initial burden of identifying unmarked products, the Federal Circuit held, the burden of proving compliance with the marking rests with the patentee. Thus, the patentee has the burden of proving that the identified products do not practice the patented invention. Because Arctic Cat had not been provided with a meaningful opportunity in the District Court to show why Honda’s products were not covered by the patents, the Federal Circuit vacated the district court’s ruling on this issue and remanded for further proceedings.