Case Cite

Icon Outdoors, LLC v. Core Resources, Inc., Civil Action No. RDB-11-2967, 2013 WL 2476392 (D. Md. June 7, 2013).

IPDQ Commentary

Icon Outdoors provides insights into two little-discussed issues: (1) “publication damages” under 35 U.S.C. § 154(d)(1); and (2) the extent to which notice must accuse a specific product in order to meet requirements of 35 U.S.C. § 287(a). The court denied “publication damages” because the published application differed substantively from the patent, then found fact issues existed regarding the notice.

Case Summary

Plaintiff sued Defendant for patent infringement. Defendant moved for summary judgment on (1) pre-issuance damages, (2) damages prior to marking, and (3) lost profits damages. Id., slip op. at *1, *13.

Pre-Issuance Damages

The court granted the motion and denied Plaintiff “publication damages” under 35 U.S.C. § 154(d) (1) (Id. at *15), finding:

  • While a patent generally has no retroactive effect and damages are available only for infringement during the term of the patent, a patent owner may be entitled to a reasonable royalty for infringement “during the period beginning on the date of the publication of the patent” under 35 U.S.C. § 154(d)(1). Id. at *13. These “publication damages” are available only if (1) the alleged infringer has actual notice of the patent, and (2) the invention claimed in the patent is “substantially identical” to the invention claimed in the published application. Id. at *13.
  • The “substantially identical” standard under 35 U.S.C. § 154(d)(1) is the same as 35 U.S.C. § 252. Id. at *14.
  • In this case, the published application provided the patented garment could be either “waterproof or windproof” while the issued patent provided the garment must be “waterproof and windproof.” Id.
  • Amendments to the patent subsequent to publication limited the claim and resulted in a substantive change. Therefore the published application and issued patent were not “substantially identical” and Plaintiff was not entitled to “publication damages.” Id. at *15.

Damages Prior to Marking

The court denied the motion seeking to preclude damages based on Plaintiff’s failure to mark under 35 U.S.C. § 287(a) (Id. at *18), finding there were disputed issues of material fact:

  • Although Plaintiff did not mark its products, it did send a notice letter to Defendant advising its product infringed the patent. Id. at *15. Defendant, however, halted production and redesigned the accused product to avoid infringement. Plaintiff ultimately sued, alleging the redesigned product infringed. Id.
  • The issue is whether the actual notice requirement under 35 U.S.C. § 287(a) was met. Specifically, was the notice letter sufficiently specific to put Defendant on notice that its redesigned product would also constitute activity the Plaintiff believed was infringement? Id. at *16.
  • Whether the patentee provided adequate notice under § 287(a) is a question of fact. Id.
  • Relying on Coca-Cola Co. v. Pepsico, Inc., No. 102-CV-2887-RWS, 2004 WL 4910334 (N.D. Ga. Sept. 29, 2004), the court concluded there was a question of fact as to whether the redesign constituted a “substantial difference” between the original product and the redesigned product, and, thus, denied summary judgment. Id. at *18.

Lost Profits Damages

The court denied the motion seeking to preclude lost profit damages under the Panduit test (Id. at *19), finding the argument was premature:

  • Defendant sought to preclude an award of lost-profits damages under the Panduit test based on the presence of alternative non-infringing products. Id. at *18.
  • Defendant relied on two of its own products as acceptable non-infringing substitutes. Id. at *19.
  • The court, however, denied Defendant’s request to determine that those products did not infringe at this stage of the proceeding. Id.
  • Thus, the motion for summary judgment was denied. Id.