Updates in U.S. Patent Law, April 2017

Daniel Ehrlich

Federal Circuit Rules that Patent Holder Cannot Evade Patent Marking Statute with Retroactive Statutory Disclaimer

In Rembrandt Wireless Technologies, LP v. Samsung Electronics Co., Ltd., No. 16-1729 (Fed. Cir. 2017), the Federal Circuit determined that a patent holder could not use a retroactive statutory disclaimer to avoid having to fully comply with the patent marking statute.
The relevant statute, 35 U.S.C. § 287, states that “[p]atentees, and persons making, offering for sale, or selling within the United States any patented article for or under them, or importing any patented article into the United States, may give notice to the public that the same is patented” by appropriately marking the patented article. The statute further provides that, “[i]n the event of failure so to mark, no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice.”
Rembrandt had sued Samsung for infringement of a number of claims of two of its patents, US Patent Nos. 8,023,580 and 8,457,228. During the time period in which Samsung was allegedly infringing, Rembrandt had licensed the ‘580 patent to Zhone Technologies, which manufactured products embodying claim 40 of the patent, which was one of the claims Rembrandt had asserted in litigation. Zhone did not mark these products with the patent number.
Before trial, Samsung moved to limit Rembrandt’s damages on the grounds that Rembrandt did not comply with the marking statute (because the product manufactured by Zhone was not marked) and that Rembrandt was therefore not entitled to damages for infringement of any of the claims of the ‘580 patent for any time period before Samsung was notified of the infringement by the filing of the complaint. In response, Rembrandt withdrew claim 40 from its infringement allegations and filed a statutory disclaimer in the US Patent and Trademark Office to disclaim claim 40.
The District Court accepted Rembrandt’s argument that this statutory disclaimer removed its obligation to mark claim 40, for the reason that “a disclaimed patent claim is treated as if it never existed.” The Federal Circuit disagreed, stating that such an interpretation defeated the purpose of the patent marking statute, because allowing Rembrandt to use a disclaimer to avoid the consequences of its failure undermined the public notice function of the marking statute.
However, the Federal Circuit noted that it has not been resolved whether the marking statute applies on a patent-by-patent basis or on a claim-by-claim basis, and the failure to mark claim 40 may limit only the award of damages based on claim 40. The Federal Circuit elected to remand the case for determination of this issue.

USPTO Design Day 2017

On April 25, 2017, the USPTO held its annual Design Day, a seminar featuring Examiners, Practitioners, and Industrial Designers, to discuss the latest developments in design patents.
Design Day 2017 opened with an introduction of Karen Young, the newly named Director of the Tech Center 2900, which is responsible for all design examination. Director Young shared several key statistics showing increasing interest in design patents. In fiscal year 2016, 40,406 design applications were filed, up from 36,889 in FY 2015. 20,361 applications have already been filed in FY 2017. The current backlog of unexamined applications is 44,578, resulting in a 12.9 month average pendency to first action and a 19.1 month average overall pendency for design applications. To keep up with the increased filings and work toward lowering the current backlog, 29 new design examiners were hired in June 2016, increasing the total number of design examiners to 187. However, over 100 of these examiners are still junior examiners without signatory power.  As a result, clear and consistent communication is critical for effect prosecution.
The day also included updates from speakers on international treaties, best prosecution practices, perspectives from in-house counsel and an industrial designer, case law updates, a discussion of design patents in the fashion industry, and a mock argument demonstrating the implications of prosecution history on the enforceability of design patents after issuance.
Please contact us if you are interested in additional information on particular topics covered at Design Day 2017 or if you have general inquiries regarding design filings in the U.S.