Weekly IP Takeaways

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.

1. In a recent opinion from the Federal Circuit, the Court reversed significant portions of a decision in a messy patent case from the Central District of California. The patented technology was directed to a diaper pail system to collect soiled diapers. The district court made some errors in claim construction that warranted reversal of a finding of literal infringement as to one patent. As to a second patent, the Court did not err in its claim construction, but erred in analyzing infringement under the doctrine of equivalents in finding that a claim element was “vitiated” in the plaintiff’s infringement analysis. The Federal Circuit found that plaintiff’s expert performed a proper function-way-result analysis of infringement under the doctrine of equivalents, and reversed the vitiation determination for further proceedings below. The takeaway here is that the doctrine of equivalents is still alive, and patent plaintiffs need to make sure they do a clear, detailed function-way-result analysis that does not eliminate or “fudge” any claim limitations.

2. In a recent decision from the Ninth Circuit Court of Appeals, the Court reversed a monster $1.8 billion dollar damages award in a trademark case litigated in the Central District of California (in which the damages award was made by the district judge). The award was a disgorgement of profits, and the plaintiff’s evidence of the defendant’s gross sales was the value of construction contracts as set forth in press releases. The defendant did not dispute the press releases, and thus, the Court determined that the gross revenues from the constructions of $1.8 billion was undisputed. The Ninth Circuit reversed because press releases noting the existence of the contracts did not mean that the contracts were actually performed and money received by the defendant. The takeaway here is not to skimp on evidence of damages, but to seek clear, direct evidence of damages in discovery for use later in the case.

3. A recent decision by Judge Selna in the Central District of California ruled that a plaintiff’s failure to place a patent marking on the product itself constituted, in this particular situation, a failure to mark under 35 U.S.C. 287(a). Zadro Prods, Inc. v. Feit Electric Co., Inc., Case No. SACV-20-101-JVS (C.D. Cal. Jan. 6, 2021). A key fact in the case was that the plaintiff marked its product with a “patent pending” designation, but never changed the product marking to have the patent number thereon. Thus, proper patent marking, which is intended to provide constructive notice for purposes of starting a damages clock, among other reasons, was absent. The plaintiff argued that its product packaging was properly marked with the patent number, but the Court rejected that argument based on the statute, which requires the product to be marked unless circumstances make marking the product impractical or the like. Thus, the patent owner in this case, even if infringement is proven, may lose out on significant damages. The takeaway here is that patent owners should mark their products with any patent numbers that cover the product so marked.