Thursday, May 5, 2016

Burden of Proving Compliance With Marking Statute Does Not Shift to Plaintiff on Summary Judgment

The court denied defendant's motion for summary judgment that plaintiff could not recover pre-filing damages because of its licensee's failure to mark and found that the burden did not shift to plaintiff to establish compliance at summary judgment. "Because [plaintiff] stopped manufacturing and selling [personal watercraft] before any asserted patent issued, the only point of noncompliance with the statue could arise from sales made by . . . its sole licensee. But [the licensee's] sales are inconsequential unless [the licensee's products] are 'patented articles' within the scope of the claims of the [patents-in-suit]. . . . Courts are split as to which party properly bears the burden of proving, by a preponderance of the evidence, compliance with the marking statute. Indeed, the Federal Circuit has yet to resolve competing views. . . . The Court, therefore, adopts 'the better view' that the burden of production does not shift to a plaintiff to show compliance with a marking statute. . . . [W]ithout analysis in the record as to the ways in which the [licensee's products] did or did not implicate the various elements of the patents, the Court finds that a reasonable jury clearly could find to the contrary."

Arctic Cat Inc. v. Bombardier Recreational Products Inc. et al, 0-14-cv-62369 (FLSD May 3, 2016, Order) (Bloom, J.)

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