Transfer of “Flash Title” to Domestic Parent Does Not Excuse Plaintiff’s Failure to Mark Imported Products

The court denied plaintiff's motion to reconsider an earlier order granting defendant's motion for summary judgment to limit damages because plaintiff failed to mark its products. "[Plaintiff] takes title to a product when it leaves the manufacturer and retains it until it reaches the end customer. Immediately before title transfers to the customer, [plaintiff's] American parent takes 'flash title,' temporary legal ownership that lasts only a split second. [Plaintiff] now argues that, under these facts, it is the American parent, and not the plaintiff and patentee, that imports DAS products practicing the [patent-in-suit]. . . . [T]here is very little case law addressing what factors determine whether an entity has imported or sold a product here for the purposes of Section 287(a). But the Federal Circuit has provided substantial guidance on the interpretation of the corresponding terms in 35 U.S.C. § 271(a). . . . [T]he court must look to the precedent on Section 271(a) as instructive on the issue of how to interpret Section 287(a). . . . For at least a substantial percentage of its transactions, the plaintiff patentee holds legal title to its DAS products until a split second before they reach their end customers in the United States. Nothing [plaintiff] properly submits suggests otherwise. . . . It is undisputed that [plaintiff] ships products into the United States, and in fact ships them directly to the end customers who ordered them from [plaintiff's] American parent. [Plaintiff] therefore imports these products into the United States, and it was required to mark them under Section 287(a)."

Corning Optical Communications Wireless Ltd. v. Solid, Inc. et al, 5-14-cv-03750 (CAND September 28, 2015, Order) (Grewal, M.J.)