On April 17, 2017, the Federal Circuit held that the patentee cannot use disclaimer to avoid the patent marking statute and its public notice function. Rembrandt Wireless Tech., LP v. Samsung Elect. Co., No. 16-1729 (Fed. Cir. Apr. 17, 2017) For a patent owner to receive damages for the time period prior to filing of the complaint or actual notice of infringement, a licensee selling the patented product must mark the patent number on the product. Here, Rembrandt sued Samsung alleging infringement of two patents involving Bluetooth technology. Prior to trial, Samsung sought to limit damages to infringement that occurred after filing of complaint arguing that Rembrandt's licensee failed to mark the products embodying asserted claim 40 of an asserted patent. Thereafter, Rembrandt filed a statutory disclaimer with the USPTO disclaiming claim 40. The Eastern District of Texas court denied Samsung's motion to bar recovery of pre-notice damages based on the disclaimer of claim 40. On appeal, the Federal Circuit vacated the decision reasoning that a disclaimer surrenders any rights the patent owner may have but does not relinquish the rights of the public. Rembrandt's position adopted by the district court effectively provides an end-run around marking statute contrary to the statute's purpose. The court held that using disclaimer after the fact will not remedy a failure to mark products.
Full text of the opinion is available here.
Full text of the opinion is available here.
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