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.)