On December 7, the Federal Circuit settled a split among the district courts over 35 U.S.C. § 287 — the marking statute — concerning which party bears the burden of production in identifying the universe of “patented articles” that required marking. Arctic Cat Inc. v. Bombardier Recreational Products Inc., BRP U.S. Inc., No. 2017-1475 (Fed. Cir. Dec. 7, 2017). The court held that “an alleged infringer who challenges the patentee’s compliance with § 287 bears an initial burden of production to articulate the products it believes are unmarked ‘patented articles’ subject to § 287.”

Arctic Cat Inc. (Arctic Cat) sued Bombardier Recreational Products Inc. (BRP) for infringement of U.S. Patent Nos. 6,568,969 and 6,793,545. The patents relate to a thrust steering system for personal watercraft propelled by jet stream. The jury found BRP infringed and awarded damages. Post-trial, BRP filed a motion for judgment as a matter of law regarding marking. BRP argued that Honda, a licensee of the patents at issue, sold unmarked products covered by the patents and that Arctic Cat’s recoverable damages, therefore, should be limited to the date it provided actual notice to BRP pursuant to § 287. The motion was denied. On appeal, the Federal Circuit vacated the denial and remanded the case back to the district court for reconsideration of the marking issue.

The Federal Circuit held that the district court erred when it placed the burden of proving whether the products manufactured by Honda practiced the asserted patents. The Federal Circuit explained that the marking statute involved both a burden of production — related to the identification of the patented articles—and a burden of persuasion — related to whether the patented articles met the requirements of the marking statute. The court emphasized that the patentee indisputably bears the burden of persuasion. But, prior to this decision, it was unclear which party bears the burden of production. District courts were divided over the issue with some requiring the patentee to “prove that none of its unmarked goods practice the asserted claims” and others requiring “the alleged infringer to initially identify products it believes practice the asserted patents.” Concern over “fishing expedition[s] and gamesmanship” led the Federal Circuit to place the burden of production with the alleged infringer.

The Federal Circuit further remarked that the burden of production “is a low bar” and is simply meant to put the patentee on notice. Yet the court declined to “determine the minimum showing needed to meet the initial burden of production.” BRP was held — in this case — to have satisfied the burden of production by (1) showing the licensing agreement between Honda and Arctic Cat, (2) identifying fourteen products produced by Honda, and (3) presenting expert testimony that concluded that if BRP’s accused devices practice the patents, then the Honda products practice the patents. And the Federal Circuit specifically noted that “[t]he alleged infringer need not produce claim charts to meet its initial burden of identifying products.” Such analysis, according to the Federal Circuit, belongs to the patentee who must prove that the unmarked products identified by the alleged infringer do not fall within the patent claims.

What This Means For You

Because the Federal Circuit placed the burden of production on the alleged infringer, the need for thorough interrogatories covering products sold by the plaintiff, plaintiff’s licensees, or companies who once owned the asserted patent becomes even more important. For example, in cases where a non-practicing entity has serially litigated a patent, any license with a prior defendant and the accused products in that case may help satisfy the alleged infringer’s burden of production when challenging the plaintiff’s compliance with the marking statute. The “low bar” for the burden of production is likely to benefit alleged infringers who may gain insight into how the plaintiff will interpret its claims as the plaintiff meets its burden of persuasion before the court. Moreover, a plaintiff’s argument that an identified product is not covered by the asserted claims may be useful to an alleged infringer’s positions on non-infringing alternatives.