Case 2:15-cv-01274-JRG-RSP Document 403 Filed 01/26/17 Page 1 of 4 PageID #: 29571
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`REPORT AND RECOMMENDATION
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`Case No. 2:15-cv-1274-JRG-RSP
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`Blitzsafe Texas, LLC,
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`Plaintiff,
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`Honda Motor Co., Ltd., et al.,
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`v.
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`Defendants.
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`Before the Court is Defendants’ Motion for Partial Summary Judgment on Plaintiff’s
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`Failure to Mark (Dkt. No. 201) (the “Motion”). The Court held a hearing on the Motion on January
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`11, 2017. (See Dkt. No. 391.) Having considered the Motion and the argument presented at the
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`hearing, the Court is of the opinion that the Motion should be DENIED.
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`I.
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`Facts
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`On July 10, 2015, Marlowe Patent Holdings LLC (“MPH”) transferred ownership of U.S.
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`Patent Nos. 7,489,786 and 8,155,342 (“the ’786 patent,” “the ’342 patent,” and collectively the
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`“patents-in-suit”) to Plaintiff. Ira Marlowe was the sole owner and a corporate representative of
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`MPH and is the sole owner and corporate representative of Plaintiff.
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`This is not the first time the ’786 patent has been asserted in litigation. In 2010, MPH
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`accused AAMP of Florida, Inc. (“AAMP”) of infringing the ’786 patent in the case Marlowe
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`Patent Holdings LLC v. Dice Electronics, LLC et al., Civ. No. 3:10-cv-01199-PGS-ES (D.N.J.).
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`That case ended with a settlement agreement (“the AAMP Agreement”). The AAMP Agreement
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`included a license to the ’786 patent and patents related to the ’786 patent (including the ’342
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`patent). The AAMP Agreement contains no marking requirement.
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`Case 2:15-cv-01274-JRG-RSP Document 403 Filed 01/26/17 Page 2 of 4 PageID #: 29572
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`MPH also accused Ford Motor Co. (“Ford”) of infringing the ’786 patent in the case
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`Marlowe Patent Holdings LLC v. Ford Motor Co., Civ. No. 3:11-cv-07044-PGS-DEA (D.N.J.)
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`in 2011. That case also ended with a settlement agreement (“the Ford Agreement”). The Ford
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`Agreement included a covenant-not-to-sue for infringement of the ’786 patent and related patents
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`(including the ’342 patent). The Ford Agreement contains no marking requirement.
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`II.
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`Legal Standard
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`Section 287(a) of the Patent Act provides that no damages shall be recovered by the
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`patentee in any action for infringement, “except on proof that the infringer was notified of the
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`infringement and continued to infringe thereafter, in which event damages may be recovered only
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`for infringement occurring after such notice.” 35 U.S.C. § 287(a). Notice can be actual or
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`constructive. Actual notice is given to a defendant when a patentee explicitly communicates to an
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`accused infringer a claim of infringement of a specific patent with respect to a specific accused
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`product or device. See Gart v. Logitech, Inc., 254 F.3d 1334, 1345 (Fed. Cir. 2001). Constructive
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`notice is given when a patentee marks its own patented products and causes its licensees to mark
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`their patented products. See id.
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`The Court only grants summary judgment on an issue if there is no genuine issue of
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`material fact and the moving party demonstrates it is entitled to judgment as a matter of law.
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`Celotex Corp. v. Catrett, 477 U.S. 317, 323-25 (1986). Compliance with the marking statute is a
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`question of fact. Gart, 254 F.3d at 1339. A fact is “material” if it might affect the outcome of the
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`lawsuit under the governing law. Merritt-Campbell, Inc. v. RxP Prods., Inc., 164 F.3d 957, 961
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`(5th Cir. 1999). An issue of material fact is “genuine” if the evidence could lead a reasonable jury
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`to find for the non-moving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). If
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`the non-movant bears the burden on the issue, and the movant makes a showing that there is no
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`evidence to support the non-movant’s case, then the burden shifts to the non-movant to identify
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`specific evidence in the record and articulate the manner in which that evidence supports its claim.
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`Ragas v. Tennessee Gas Pipeline Co., 136 F.3d 455, 458 (5th Cir. 1998). Unsubstantiated
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`assertions or allegations are not competent summary judgment evidence. Id. at 458.
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`III. Analysis
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`The parties dispute which party bears the threshold burden of showing that a “patented
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`article” exists. While it is well-established that the burden of proving compliance with the marking
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`statute lies with the plaintiff, see Nike, Inc. v. Wal-Mart Stores, Inc., 138 F.3d 1437, 1446 (Fed.
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`Cir. 2008), the Federal Circuit has “yet to resolve competing views as to which party bears the
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`burden of establishing that there was a product that practiced the patent.” Arctic Cat Inc. v.
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`Bombardier Recreational Prod., Inc., 2016 WL 3948052, at *6 (S.D. Fla. May 31, 2016) (citing
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`Sealant Sys. In’l, Inc. v. TEK Glob. S.R.L., 2014 WL 1008183, at *30 (N.D. Cal. Mar. 7, 2014)).
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`Having reviewed the case law, the Court finds that the view espoused by the Northern District of
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`California in Oracle Am., Inc. v. Google Inc., 2011 WL 5576228, (N.D. Cal. Nov. 15, 2011) and
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`in Sealant Systems—that defendants bear the threshold burden of showing that an unmarked
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`patented product exists—is the better view. See Arctic Cat Inc. v. Bombardier Recreational Prod.,
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`Inc., 14-cv-62369-BB, Dkt. No. 119 at 58–59 (S.D. Fla. May 3, 2016) (adopting and quoting
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`reasoning in Sealant Systems). Accord Fortinet, Inc. v. Sophos, Inc., 2015 WL 5971585, at *4
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`(N.D. Cal. Oct. 14, 2015); MobileMedia Ideas, LLC v. Apple Inc., 2016 WL 3958723, at *5 (D.
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`Del. July 21, 2016). But see, e.g., Adrea, LLC v. Barnes & Noble, Inc., 2015 WL 4610465, at *2
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`(S.D.N.Y. July 24, 2015). Therefore, Defendants have the initial burden of showing that there was
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`a product that practiced the patents-in-suit.
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`Here, there is a genuine issue of material fact concerning whether any AAMP or Ford
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`product practices the patents-in-suit. While it is true that in prior lawsuits MPH previously alleged
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`that AAMP and Ford products practiced the ’786 patent, those allegations alone fall short of
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`conclusively establishing the existence of an unmarked patented product, at least because both
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`AAMP and Ford specifically denied MPH’s infringement allegations. (See Dkt. No. 248-2
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`(AAMP’s Answer); Dkt. No. 248-4 (Ford’s non-infringement contentions)). In addition, in
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`neither of those cases did the court issue any finding that the products practiced either of the
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`patents-in-suit. Nor do the licenses that ended those lawsuits lend credence to the existence of an
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`unmarked patented product. The Ford Agreement denied liability. See Dkt. 201-7 at 2. The
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`AAMP license is silent as to which products it covers and it also does not contain any
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`acknowledgment that any AAMP product practices the ’786 patent. See Dkt. No. 201-2.
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`Defendants do not point to any other evidence (for example expert testimony) sufficient to show
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`that there is no genuine dispute of material fact as to whether any Ford or AAMP products practice
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`the patents-in-suit.
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`Therefore, on this record, the Court finds that there is a genuine dispute of material fact
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`over whether unmarked patented products exist so as to trigger the marking statute. This precludes
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`summary judgment.
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`IV. Conclusion
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`For the reasons stated above, the Motion (Dkt. No. 201) should be DENIED. A party’s
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`failure to file written objections to the findings, conclusions, and recommendations contained in
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`this report within seven days from the entry of this Order shall bar that party from de novo
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`review by the district judge of those findings, conclusions, and recommendations and, except on
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`grounds of plain error, from appellate review of unobjected-to factual findings and legal
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`conclusions accepted and adopted by the district court. Fed. R. Civ. P. 72(b)(2); see Douglass v.
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`United Servs. Auto. Ass’n, 79 F.3d 1415, 1430 (5th Cir. 1996) (en banc).
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