Case 2:18-cv-00100-JRG-RSP Document 654 Filed 05/24/21 Page 1 of 7 PageID #: 27045
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`ULTRAVISION TECHNOLOGIES,
`LLC,
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` Plaintiff,
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`v.
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`GOVISION LLC,
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` Defendant.
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`§
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`REPORT AND RECOMMENDATION
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`Case No. 2:18-cv-00100-JRG-RSP
` LEAD CASE
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`Before the Court is the Motion for Partial Summary Judgment that Ultravision’s Claim to
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`Pre-Notice Damages is Barred for Failure to Mark Under 35 U.S.C. § 287 (“Motion”) filed by
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`Defendants Shenzhen Absen Optoelectronic Co., Ltd. and Absen, Inc. (collectively, “Absen”).1
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`Dkt. No. 436. Absen’s Motion seeks summary judgment barring Plaintiff Ultravision
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`Technologies, LLC (“Ultravision”) from claiming pre-suit damages for failure to mark.
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`I.
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`BACKGROUND
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`On March 27, 2018, Ultravision filed its original complaint against Absen asserting several
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`patents including U.S. Patent No. 9,916,782 (the “’782 Patent”). Ultravision Technologies, LLC v.
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`Shenzhen Absen Optoelectronic Co., Ltd. et al, Case No. 2:18-cv-00112-JRG-RSP (“Absen
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`Member Case”), Dkt. No. 1. On April 12, 2019, the Court consolidated the Absen Member Case
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`along with several other member cases under the lead case against GoVision, LLC. Dkt. No. 17.
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`On June 6, 2019, Ultravision filed its First Amended Complaint asserting several more
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`patents including U.S. Patent No. 9,990,869 (the “’869 Patent”), U.S. Patent No. 9,978,294 (the
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`1 Former defendants Ledman Optoelectronic Co., Ltd. and Yaham Optoelectronics Co., Ltd. also
`are named as filing this motion.
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`1
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`Case 2:18-cv-00100-JRG-RSP Document 654 Filed 05/24/21 Page 2 of 7 PageID #: 27046
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`“’294 Patent”), and U.S. Patent No. 9,207,904 (the “’904 Patent”). Following this First Amended
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`Complaint, the case has narrowed significantly. Every defendant in the above-captioned matter
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`has settled except for Absen, and the only remaining patents asserted against Absen are the ’782
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`Patent, the ’869 Patent, the ’294 Patent, and the ’904 Patent (collectively, the “Asserted Patents”).
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`Dkt. No. 615 at 1–3.
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`In Absen’s Answer to Ultravision’s First Amended Complaint, Absen asserts lack of
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`marking under § 287 as a limitation of damages. Dkt. No. 217 at 18. Absen’s Answer does not
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`identify “specific unmarked products which [Absen] believes practice the patent.” See Arctic Cat
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`Inc. v. Bombardier Recreational Prods., Inc., 876 F.3d 1350, 1366 (Fed. Cir. 2017) (citation
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`omitted).
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`Absen, along with former defendants, filed Absen’s Motion on October 22, 2020. Dkt. No.
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`436. Absen’s Motion argues that Ultravision’s Master Plus Series and Brilliant Series products
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`practice each of the Asserted Patents, that neither product is physically marked, that Ultravision
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`has not adequately virtually marked these products, and that due to Ultravision’s failure to mark
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`these products Ultravision should be precluded from damages prior to June 6, 2019. Id. at 5, 8–9,
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`13.
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`II.
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`LEGAL STANDARDS
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`A. Summary Judgment
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`Summary judgment should be granted “if the movant shows that there is no genuine dispute
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`as to any material fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P.
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`56(a). Any evidence must be viewed in the light most favorable to the nonmovant. See Anderson
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`v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986) (citing Adickes v. S.H. Kress & Co., 398 U.S. 144,
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`158–59 (1970)). Summary judgment is proper when there is no genuine dispute of material fact.
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`2
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`Case 2:18-cv-00100-JRG-RSP Document 654 Filed 05/24/21 Page 3 of 7 PageID #: 27047
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`Celotex v. Catrett, 477 U.S. 317, 322 (1986). “By its very terms, this standard provides that the
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`mere existence of some alleged factual dispute between the parties will not defeat an otherwise
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`properly supported motion for summary judgment; the requirement is that there be no genuine
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`[dispute] of material fact.” Anderson, 477 U.S. at 247–48. The substantive law identifies the
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`material facts, and disputes over facts that are irrelevant or unnecessary will not defeat a motion
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`for summary judgment. Id. at 248. A dispute about a material fact is “genuine” when the evidence
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`is “such that a reasonable jury could return a verdict for the nonmoving party.” Id.
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`The moving party must identify the basis for granting summary judgment and evidence
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`demonstrating the absence of a genuine dispute of material fact. Celotex, 477 U.S. at 323. If the
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`movant bears the burden of proof on an issue at trial, then the movant “must establish beyond
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`peradventure all of the essential elements of the claim or defense to warrant [summary] judgment
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`in his favor.” Fontenot v. Upjohn Co., 780 F.2d 1190, 1194 (5th Cir. 1986).
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`B. Marking
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`35 U.S.C. § 287(a) provides:
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`Patentees, 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, either by fixing thereon
`the word “patent” or the abbreviation “pat.”, together with the
`number of the patent, or by fixing thereon the word “patent” or the
`abbreviation “pat.” together with an address of a posting on the
`Internet, accessible to the public without charge for accessing the
`address, that associates the patented article with the number of the
`patent, or when, from the character of the article, this can not be
`done, by fixing to it, or to the package wherein one or more of them
`is contained, a label containing a like notice. In 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. Filing of an action for infringement shall
`constitute such notice.
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`3
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`Case 2:18-cv-00100-JRG-RSP Document 654 Filed 05/24/21 Page 4 of 7 PageID #: 27048
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`35 U.S.C. § 287(a). Marking can be achieved by physically marking “by fixing thereon the word
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`“patent” or the abbreviation “pat.”, together with the number of the patent” or by virtually marking
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`“by fixing thereon the word “patent” or the abbreviation “pat.” together with an address of a
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`posting on the Internet, accessible to the public without charge for accessing the address, that
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`associates the patented article with the number of the patent.” Id.
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`“Compliance with § 287 is a question of fact.” Arctic Cat, 876 F.3d at 1366 (citation
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`omitted). “[A]n alleged infringer who challenges the patentee’s compliance with § 287 bears an
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`initial burden of production to articulate the products it believes are unmarked ‘patented articles’
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`subject to § 287.” Id. at 1368. This is a “low bar” such that “[t]he alleged infringer need only put
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`the patentee on notice that he or his authorized licensees sold specific unmarked products which
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`the alleged infringer believes practice the patent.” Id. “Once the alleged infringer meets its burden
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`of production, however, the patentee bears the burden to prove the products identified do not
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`practice the patented invention.” Id.
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`III. ANALYSIS
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`A. Initial Burden Under Arctic Cat
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`Absen argues Ultravision has produced no evidence showing marking of the Master Plus
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`and Brilliant Series products it contends practice the Asserted Patents. Dkt. No. 436 at 8. Absen
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`notes that Ultravision’s responses to Absen’s marking interrogatories identify a product label
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`directing customers to the webpage http://www.ultravisioninternational.com/patents but has not
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`produced evidence regarding when this label was applied to the products or even images of this
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`webpage. Id. Absen asserts the only production of a page on Ultravision’s website providing
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`product marking
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`is
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`a
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`June 28, 2018
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`screenshot of
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`a different webpage:
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`4
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`Case 2:18-cv-00100-JRG-RSP Document 654 Filed 05/24/21 Page 5 of 7 PageID #: 27049
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`https://www.ultravisioninternational.com/our-company/digital-billboard-manufacturers-
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`ultravision-international-patents/. Id.
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`Absen further argues this produced screenshot does not adequately mark the Master Plus
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`Series and Brilliant Series with the Asserted Patents. Absen asserts “the Brilliant Series practicing
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`all asserted patents does not at all appear on the June 28, 2018 screencapture” although Ultravision
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`admits the Brilliant Series replaced the Master Series in 2018 and that “[f]urther, several asserted
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`patents do not appear at all on the screencapture, namely U.S. Pat Nos. 9,978,294 [and] 9,990,869
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`. . . .” Id. at 8–9.
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`Ultravision argues Absen’s Motion should be denied and Absen should be precluded from
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`raising a marking defense at trial because it failed to meet its initial burden under Arctic Cat to
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`notify Ultravision of allegedly unmarked products. Dkt. No. 496 at 4. Ultravision asserts that
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`Absen did not articulate the products it believes are unmarked “patented articles” subject to 35
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`U.S.C. § 287 at any point prior to the filing of this motion. Id. at 10 (citing Arctic Cat, 876 F.3d at
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`1366). Ultravision continues, “[d]uring the entire 14-month discovery period . . . . Defendants did
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`not articulate any products they believed to be unmarked . . . . Ultravision thus had no opportunity
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`to respond to Defendants’ new allegations . . . at any time prior to this opposition.” Id. at 11.
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`Absen asserts that in its Answer to Ultravision’s First Amended Complaint, Absen
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`provided Ultravision notice that Ultravision’s claimed damages were barred under 35 U.S.C. § 287
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`and Ultravision had not provided Absen notice of the asserted patents prior to the filing of its
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`complaints. Dkt. No. 524 at 4. Absen argues that “[d]espite having notice of Defendants’ defenses
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`for at least a year, Ultravision has not produced sufficient evidence to prove marking of its two
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`products under the marking statute.” Id.
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`5
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`Case 2:18-cv-00100-JRG-RSP Document 654 Filed 05/24/21 Page 6 of 7 PageID #: 27050
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`Absen contends that Absen satisfied its initial burden by alleging in its Answer to
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`Ultravision’s First Amended Complaint that (1) Ultravision’s claims are barred in whole or in part
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`by 35 U.S.C. § 287 and (2) Absen “did not have notice of the asserted patents prior to service of
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`the original and amended Complaint in this action.” Id. at 4–5 (citing Dkt. No. 217 at 18–19; Dkt.
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`No. 131 at 22–23). Absen argues that “Ultravision has only sold two products that it alleges
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`practiced its patents—the Brilliant and Master Plus series—and thus only had two products for
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`which it needed to produce evidence of marking. . . . Ultravision’s central argument in opposition
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`thus elevates form over substance.” Id. at 5. The Court disagrees.
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`Absen’s argument, at its core, is that it does not need to meet its burden to identify “specific
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`unmarked products which the alleged infringer believes practice the patent” because Ultravision
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`has only sold two products it alleges practiced its patents. See Arctic Cat, 876 F.3d at 1368.
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`However, the burden does not shift merely because the burden is low. Absen argues that
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`Ultravision “only had two potential products requiring marking” and so there is “no risk of a ‘large
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`scale fishing expedition,’” but that does not change the fact that Absen did not identify the products
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`before filing its motion. Absen has not shown that it has identified “specific unmarked products
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`which the alleged infringer believes practice the patent” but rather merely identified its intent to
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`assert a marking defense in its Answer. See Arctic Cat, 876 F.3d at 1368. Since Absen has not met
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`its burden under Arctic Cat, the Absen’s Motion must be denied.
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`Ultravision argues that Absen should be precluded from raising a marking defense at trial
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`because it failed to meet its initial burden under Arctic Cat to notify Ultravision of allegedly
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`unmarked products. Dkt. No. 496 at 4. However, Absen has now identified specific unmarked
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`products as of at least October 22, 2020—the date of filing of Absen’s Motion—and clearly stated
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`in its Answer its intent to assert a marking defense. Because all information about the identified
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`6
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`Case 2:18-cv-00100-JRG-RSP Document 654 Filed 05/24/21 Page 7 of 7 PageID #: 27051
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`products is already in Plaintiff’s possession, there is minimal prejudice to Plaintiff from the timing
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`of the disclosure. Accordingly, the Court does not find it proper to preclude Absen from asserting
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`a marking defense at trial.
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`IV. CONCLUSION
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`After due consideration, IT IS RECOMMENDED that Absen’s Motion be DENIED.
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`A party’s failure
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`to file written objections
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`to
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`the findings, conclusions, and
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`recommendations contained in this report by not later than May 31, 2021 bars that party from de
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`novo review by the District Judge of those findings, conclusions, and recommendations and, except
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`on 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). Any objection to this
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`Report and Recommendation must be filed in ECF under the event “Objection to Report and
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`Recommendations [cv, respoth]” or it may not be considered by the District Judge.
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`7
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`____________________________________
`ROY S. PAYNE
`UNITED STATES MAGISTRATE JUDGE
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`SIGNED this 3rd day of January, 2012.
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`SIGNED this 23rd day of May, 2021.
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