Case 2:18-cv-00100-JRG-RSP Document 659 Filed 05/27/21 Page 1 of 8 PageID #: 27081
`
`ULTRAVISION TECHNOLOGIES, LLC,
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`)
`)
`)
`)
`)
`)
`)
`
`Plaintiff,
`
`Case No. 2:18-cv-00100-JRG-RSP
`(LEAD CASE)
`
`JURY TRIAL DEMANDED
`
`
`
`v.
`
`GOVISION LLC,
`
`
`SHENZHEN ABSEN OPTOELECTRONIC
`CO., LTD. AND ABSEN, INC.,
`
`Defendants.
`
`
`)
`)
`)
`)
`)
`
`
`SHENZHEN ABSEN OPTOELECTRONIC CO., LTD.’S AND ABSEN, INC.’ S MOTION
`FOR RECONSIDERATION AND OBJECTION TO THE ORDER RECOMMENDING
`DENIAL OF THEIR MOTION FOR PARTIAL SUMMARY JUDGMENT (D.I. 654)
`
`Case No 2:18-cv-00112-JRG-RSP
`(CONSOLIDATED CASE)
`JURY TRIAL DEMANDED
`
`

`

`Case 2:18-cv-00100-JRG-RSP Document 659 Filed 05/27/21 Page 2 of 8 PageID #: 27082
`
`Pursuant to Federal Rule 72 and Local Rule CV-72(b), Defendants Shenzhen Absen
`
`Optoelectronic Co., Ltd. and Absen, Inc (together, “Absen”) object to, and move for
`
`reconsideration of, the Court’s decision recommending denial of their motion for partial summary
`
`judgment that Ultravision’s claim to pre-notice damages is barred for failure to mark under 35
`
`U.S.C. § 287. See D.I. 654 (the “Order”). The Court held that Absen had failed to provide proper
`
`notice—for purposes of summary judgment—of the products it contends practice the patents-in-
`
`suit but are unmarked, because it first identified them in its opening summary judgment brief
`
`(although the Court went on to hold that this constituted sufficient notice under the circumstances
`
`for purposes of trial). Other courts, however, consistently have held or otherwise assumed that it
`
`is sufficient for an accused infringer to first provide notice of unmarked products in its opening
`
`summary judgment brief, or even at trial. Putting the sufficiency of notice aside, Ultravision has
`
`insufficient evidence to carry its burden of proving that it properly marked its products. The Court
`
`therefore should grant summary judgment to Absen as to pre-suit damages.
`
`BACKGROUND
`
`Ultravision sued Absen on March 27, 2018, asserting infringement of U.S. Patent No.
`
`9,916,782 (the “’782 Patent”). Ultravision Techs., LLC v. Shenzhen Absen Optoelectronic Co.,
`
`Ltd. et al., Case No. 2:18-cv-00112-JRG-RSP. Ultravision then filed a First Amended Complaint
`
`on June 6, 2019, which asserted several more patents including U.S. Patent Nos. 9,207,904 (“’904
`
`Patent”); 9,916,782 (“’782 patent”); 9,978,294 (“’294 Patent”); and 9,990,869 (“’869 Patent”)
`
`(collectively, the “asserted patents”). Ultravision Techs., LLC v. Shenzhen Absen Optoelectronic
`
`Co., Ltd., No. 2:18-cv-112-JRG-RSP, D.I. 73 (E.D. Tex. June 6, 2019).
`
`
`
`Absen promptly asserted lack of marking under 35 U.S.C. § 287 as a limitation of damages
`
`in its Answer to Ultravision’s First Amended Complaint. D.I. 217 at 18. Absen later identified
`
`

`

`Case 2:18-cv-00100-JRG-RSP Document 659 Filed 05/27/21 Page 3 of 8 PageID #: 27083
`
`the Master Plus Series and the Brilliant Series as unmarked products that practice the asserted
`
`patents in its Motion for Partial Summary Judgment. D.I. 436 at 3.
`
`Ultravision itself contends that its Master Plus Series and Brilliant Series products practice
`
`the asserted patents. D.I. 436, Ex. 1 [UV Infringement Contentions v. Ledman] at 11. Ultravision
`
`also asserts that the Brilliant Series “was first sold in 2018” and “replaced the Master Series,”
`
`whose “last sale was in December 2017.” D.I. 436, Ex. 4 [UV Resp. to Ledman Rogs 1–8] at 12.
`
`It is undisputed, moreover, that neither the Master Plus Series nor the Brilliant Series products are
`
`physically marked with the patent numbers of any asserted patents. Ultravision has argued that it
`
`virtually marks the products on its website, and points to a product label directing consumers to
`
`http://www.ultravisioninternational.com/patents. D.I. 436, Ex. 4 [UV Resp. to Ledman Rogs 1–
`
`8] at 10–12. Ultravision, however, did not produce any evidence as to whether or when this label
`
`was applied to products. The only marking webpage Ultravision produced, a June 28, 2018
`
`screencapture (D.I. 436, Ex. 7), does not adequately mark the Master Plus Series and the Brilliant
`
`Series with each of the asserted patents—indeed, the Brilliant Series does not even appear in that
`
`screencapture. See id. Further, the screencapture shows that several of the asserted patents do not
`
`even appear at all, namely the ’294 patent and the ’869 patent. Id.
`
`Based on these undisputed facts, Absen moved for summary judgment of no pre-suit
`
`damages. The Court, in relevant part, recommended denying Absen’s summary judgment motion
`
`on procedural grounds (while leaving it open to Absen to prove Ultravision’s failure to comply
`
`with § 287 at trial). See D.I. 654. The Court’s sole basis for its recommendation was:
`
`the fact that Absen did not identify the products before filing its
`motion. Absen has not shown that it has identified ‘specific
`unmarked products which the alleged infringer believes practice
`the patent’ but rather merely identified its intent to assert a
`marking defense in its Answer. See Arctic Cat, 876 F.3d at 1368.
`
`2
`
`

`

`Case 2:18-cv-00100-JRG-RSP Document 659 Filed 05/27/21 Page 4 of 8 PageID #: 27084
`
`Since Absen has not met its burden under Arctic Cat, the Absen’s
`Motion must be denied.
`
`D.I. 654 at 6.
`
`ARGUMENT
`
`
`
`To challenge a patentee’s compliance with § 287, an alleged infringer “bears an initial
`
`burden of production to articulate the products it believes are unmarked ‘patented articles.’” Arctic
`
`Cat Inc. v. Bombardier Recreational Products, Inc., 876 F.3d. 1350, 1368 (Fed. Cir. 2017). The
`
`Federal Circuit held in Arctic Cat that this initial burden is a “low bar,” as “the alleged infringer
`
`need only put the patentee on notice that he or his authorized licensees sold specific unmarked
`
`products which the alleged infringer believes practice the patent.” Id. at 1368. “Once the alleged
`
`infringer meets its burden of production, however, the patentee bears the burden to prove the
`
`products identified do not practice the patented invention.” Id.
`
`The Court recommended denying Absen’s motion for partial summary judgment on the
`
`basis that Absen did not identify specific unmarked products before its opening brief on summary
`
`judgment motion. D.I. 654 at 6. The court in Arctic Cat, however, did not set forth any
`
`requirement as to when an alleged infringer must identify the allegedly unmarked products.
`
`Indeed, the court in Arctic Cat specifically held that the alleged infringer in that case had satisfied
`
`its “initial burden” by identifying the allegedly unmarked products at trial. As the Federal Circuit
`
`explained:
`
`We do not here determine the minimum showing needed to meet the
`initial burden of production, but we hold in this case it was satisfied
`by BRP. At trial BRP introduced the licensing agreement between
`Honda and Arctic Cat showing Honda's license to practice “Arctic
`Cat patents that patently cover Arctic Cat’s Controlled Thrust
`Steering methods, systems and developments.” J.A. 7830 § 1.01.
`BRP identified fourteen Honda PWCs from three versions of its
`Aquatrax series sold between 2002 and 2009. J.A. 3540–41 ¶ II.
`BRP’s expert testified that he “review[ed] information regarding
`those models” and believed if BRP's OTAS system practiced the
`
`3
`
`

`

`Case 2:18-cv-00100-JRG-RSP Document 659 Filed 05/27/21 Page 5 of 8 PageID #: 27085
`
`patents, so did Honda's throttle reapplication system in the Aquatrax
`PWCs. J.A. 2447–49; J.A. 2482. This was sufficient to satisfy
`BRP’s initial burden of production.
`
`Arctic Cat, 876 F.3d at 1368 (emphases added); see also Infernal Tech., LLC v. Epic Games, Inc.,
`
`335 F.R.D. 94, 97 (E.D.N.C. 2020) (“Arctic Cat focused on the burden parties bear at trial for a
`
`§ 287 defense.”).1
`
`Nothing in Arctic Cat requires an accused infringer to satisfy its initial burden of
`
`production sometime prior to summary judgment, in order for the defense to be considered at
`
`summary judgment. Recent cases applying Arctic Cat have held or otherwise assumed that
`
`accused infringers can meet their initial burden by identifying products in their opening summary
`
`judgment brief, which is the latest point Absen did so in this case. That is reasonable, because the
`
`facts concerning marking and the characteristics of a patentholder’s products (its own products or
`
`licensed products) should be in the hands of the patentholder, who can readily either marshal them
`
`in its opposition brief, or request additional discovery under Rule 56(d). For example, in Finjan,
`
`Inc. v. Juniper Networks, Inc., 387 F.Supp.3d 1004 (N.D. Cal. 2019), the parties cross-moved for
`
`summary judgment, including a motion for summary judgment of no pre-suit damages by
`
`defendant Juniper. Finjan challenged whether Juniper “gave adequate Arctic Cat notice,” but the
`
`district court held that Juniper had, pointing specifically to Juniper’s opening brief on summary
`
`judgment: “This order finds that Juniper met its burden of production when it notified Finjan of
`
`the following products it believed practiced the ’780 patent (Dkt. No. 371-11 at 3).” Id. at 1016;
`
`see also id. at 1006 (identifying Dkt. No. 371 as Juniper’s summary judgment motion). See also
`
`Biedermann Tech. GmbH & Co. v. K2M, Inc., 2021 WL 1143767, *10 (E.D. Va. Mar. 25, 2021)
`
`
`1 Indeed, in Arctic Cat the Defendant first asserted lack of marking as a limitation on damages in its Answer (Arctic
`Cat v. Bombardier Recreational Products Inc., No. 14-cv-62369, Doc. 11 at 7-8 (S.D. Fla. Jan. 9, 2015), and then
`later identified the specific products it contended were unmarked during summary judgment briefing. Arctic Cat,
`No. 14-cv-62369, Doc. 119 at 59-60 (S.D. Fla. May 2, 2016).
`
`4
`
`

`

`Case 2:18-cv-00100-JRG-RSP Document 659 Filed 05/27/21 Page 6 of 8 PageID #: 27086
`
`(on cross motions for summary judgment, suggesting that an “opening summary judgment brief”
`
`could be sufficient to satisfy the Arctic Cat notice requirement, before concluding that defendant’s
`
`summary judgment papers were “not sufficiently clear” concerning the actual sale of unmarked
`
`products in the United States).
`
`Consistent with this precedent, Absen met its initial burden of production by identifying
`
`the Master Plus Series and Brilliant Series as unmarked products that practice the asserted patents
`
`in its Motion for Partial Summary Judgment. See D.I. 436 at 3. By identifying the unmarked
`
`products in its summary judgment brief, Absen put Ultravision on proper notice of the unmarked
`
`products at issue, providing Ultravision time to develop its arguments in opposition during
`
`summary judgment briefing. Again, if Ultravision needed more time, it could have sought it under
`
`Rule 56(d).
`
`Ultravision, in contrast, has not met its burden of proof. As described above, Ultravision
`
`has no evidence regarding whether or when its label directing consumers to its website was applied
`
`to any products. And its June 28, 2018 screencapture falls short. The Brilliant Series does not
`
`even appear in the screencatpure, even though Ultravision contends the Brilliant Series replaced
`
`the Master Series in 2018. See D.I. 436, Ex. 7. Several of the asserted patents do not even appear
`
`in the screencapture at all, including the ’294 patent and the ’869 patent. See id. Because
`
`Ultravision has failed to produce sufficient evidence of marking of substantially all of its products
`
`that practice the asserted patents, Ultravision is unable to carry its burden of proof and Absen is
`
`entitled to summary judgment of no pre-suit damages.
`
`CONCLUSION
`
`The Court should grant Absen’s motion for reconsideration and/or objection.
`
`
`
`
`
`5
`
`

`

`Case 2:18-cv-00100-JRG-RSP Document 659 Filed 05/27/21 Page 7 of 8 PageID #: 27087
`
`Dated: May 27, 2021
`
`Respectfully submitted,
`
`
`
`/s/ Patrick J. McCarthy________________
`
`Patrick J. McCarthy (DC Bar No. 990490)
`Madeline DiLascia (DC Bar No. 1618650)
`Ce Li (MD Bar No. 0706110149)
`GOODWIN PROCTER LLP
`1900 N Street, N.W.
`Washington, D.C. 20036
`Telephone: (202) 346-4000
`Facsimile: (202) 346-4444
`DG-AbsenDCt@goodwinlaw.com
`
`Srikanth K. Reddy (MA Bar No. 669264)
`Kevin P. Martin (MA Bar No. 655222)
`Molly R. Grammel (MA Bar No. 688439)
`Louis L. Lobel (MA Bar No. 693292)
`GOODWIN PROCTER LLP
`100 Northern Avenue
`Boston, MA 02210
`Telephone: (617) 570-1465
`Facsimile: (617) 523-1231
`DG-AbsenDCt@goodwinlaw.com
`
`Naomi Birbach (NY Bar No. 5201199)
`GOODWIN PROCTER LLP
`620 Eighth Avenue
`New York, NY 10018-1405
`Telephone: (212) 459-7374
`Facsimile: (212) 355-3333
`DG-AbsenDCt@goodwinlaw.com
`
`Melissa R. Smith (TX Bar No. 24001351)
`Harry L. Gillam, Jr. (TX Bar No. 07921800)
`GILLAM & SMITH LLP
`303 South Washington Avenue
`Marshall, TX 75670
`Telephone: (903) 934-8450
`Facsimile: (903) 934-9257
`melissa@gillamsmithlaw.com
`gil@gillamsmithlaw.com
`
`Counsel for Shenzhen Absen Optoelectronic
`Co., Ltd. and Absen, Inc.
`
`6
`
`

`

`Case 2:18-cv-00100-JRG-RSP Document 659 Filed 05/27/21 Page 8 of 8 PageID #: 27088
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that on this 27th day of May 2021, counsel of record are being
`
`served with a copy of this document via electronic mail.
`
`
`
`
`
`
`
`
`
`/s/ Harry Lee Gillam, Jr.
`Harry Lee Gillam, Jr.
`
`
`
`
`
`7
`
`