United States District Court, E.D. Texas, Tyler Division
SEALED MEMORANDUM OPINION AND ORDER
D. LOVE, UNITED STATES MAGISTRATE JUDGE
the Court is Defendant Riverbed Technology, Inc.'s
(“Riverbed”) Sealed Motion for Partial Summary
Judgement Barring Pre-Suit Damages. (Doc. No. 438.) Plaintiff
Realtime Data, LLC (“Realtime”) has filed a
Sealed Response (Doc. No. 453), Riverbed has filed a Reply
(Doc. No. 465), and Realtime has filed a Sealed Sur-Reply
(Doc. No. 475).
reasons stated herein, the Court DENIES Riverbed's
Motion. (Doc. No. 438.)
alleges that Riverbed infringes certain claims of U.S. Patent
No. 7, 415, 530 (“the '530 Patent”), U.S.
Patent No. 9, 116, 908 (“the '908 Patent”),
and U.S. Patent No. 8, 643, 513 (“the '513
Patent”). The Asserted Patents generally relate to
different systems and methods of data compression.
Specifically, Realtime alleges that certain SteelHead WAN
optimization products infringe the Asserted Claims of the
following facts are undisputed: In previous lawsuits,
Realtime alleged that products owned by F5 Networks, Inc.
(“F5”) and Blue Coat Systems, Inc. (“Blue
Coat”) infringed certain other Realtime patents not
asserted in the above-captioned litigation. Realtime settled
its claims against F5 and Blue Coat by entering into
settlement agreements whereby F5 and Blue Coat would pay
license fees in exchange for licensing most of Realtime's
patent portfolio, including the '530 and '513
Patents. (Doc. No. 444-3, Appx. No. 21, 695-707 (“F5
Agreement”), at 2; Doc. No. 444-3, Appx. No. 22,
709-724 (“Blue Coat Agreement”), at 2.) Both the
F5 and Blue Coat Agreements state that “the issues in
the Action are disputed.” (F5 Agreement, at 2; Blue
Coat Agreement, at 2.) Neither Agreement includes any
explicit statements indicating that an F5 or Blue Coat
product practices any specific claim of the licensed patents.
(See generally F5 Agreement, Blue Coat Agreement.)
F5 has continuously sold its WANJet and BIG-IP products and
Blue Coat has continuously sold its ProxySG product since the
time these parties entered into settlement agreements with
Realtime in October 2009 and January 2010, respectively.
Neither F5 nor Blue Coat have ever marked their products with
Realtime's patent numbers.
filed the above-captioned lawsuit on May 8, 2015. In
preparing its defenses, Riverbed employed Dr. Clifford Reader
to opine regarding whether Realtime's Asserted Patents
are invalid. Dr. Reader has also opined that Realtime failed
to direct its licensees to mark products covered by the
Asserted Patents. (Doc. No. 444-2, Appx. No. 7, 439-520
(“Reader Marking Rep.”).) Specifically, Dr.
Reader asserts that F5 and Blue Coat's products infringe
the claims of the '530 and '513 Patents and should
have been marked with the '530 and '513 Patent
Numbers. (See generally, id.)
judgment is proper “if the movant shows that there is
no genuine dispute as to any material fact and the movant is
entitled to judgment as a matter of law.” Fed.R.Civ.P.
56(a); Celotex Corp. v. Catrett, 477 U.S. 317, 322
(1986). “A genuine issue of material fact exists
‘if the evidence is such that a reasonable jury could
return a verdict for the non-moving party.'”
Crawford v. Formosa Plastics Corp., La., 234 F.3d
899, 902 (5th Cir. 2000) (quoting Anderson v. Liberty
Lobby, Inc., 477 U.S. 242, 248 (1986)). The Court must
consider the evidence in the light most favorable to the
non-moving party. Thorson v. Epps, 701 F.3d 444, 445
(5th Cir. 2012).
35 U.S.C. § 287(a), “[p]atentees, and persons
making, offering for sale, or selling within the United
States any patented article for or under them . . . may give
notice to the public that the same is patented” by
marking each patented article with the appropriate patent
number. A failure to mark precludes a patentee from
collecting damages for infringement prior to the date it gave
the alleged infringer actual notice of infringement.
Federal Circuit has “yet to resolve competing views as
to which party bears the burden of establishing that there
was a product that practiced the patent.” Arctic
Cat Inc. v. Bombardier Recreational Prod., Inc., No.
0:14-cv-62369-BB, 2016 WL 3948052, at *6 (S.D. Fla. May 31,
2016) (“Arctic Cat II”) (citing
Sealant Sys. Int'l, Inc. v. TEK Glob. S.R.L.,
No. 5:11-CV-00774-PSG, 2014 WL 1008183, at *31 (N.D. Cal.
Mar. 7, 2014), rev'd in part on other grounds,
616 F. App'x 987 (Fed. Cir. 2015)); see also Arctic
Cat Inc. v. Bombardier Recreational Prod., Inc., No.
0:14-cv-62369-BB, Doc. No. 119, at *58-59 (S.D. Fla. May 2,
2016) (“Arctic Cat I”) (denying
defendant's motion for summary judgment seeking to bar
recovery of pre-suit damages for failure to mark);
Blitzsafe Texas, LLC v. Honda Motor Co., Ltd., No.
2:15-cv-01274-JRG-RSP, Doc. No. 403, at *3 (E.D. Tex. Jan.
26, 2017) (same). Although other courts in this district have
stated that “[t]he patentee bears the burden of
compliance with the marking statute, ” those courts did
not specifically address the question of whether a particular
product is a “patented article.” See PACT XPP
Tech., AG v. Xilinx, Inc., No. 2:07-cv-563-RSP, 2012 WL
1029064, *2 (E.D. Tex. March 26, 2012) (denying
patentee's motion for summary judgment on defendants'
affirmative defense of failure to mark because question of
fact existed as to whether any of patentee's activities
involved offers for sale of patented products); Soverain
Software LLC v. Amazon.com, Inc., 383 F.Supp.2d 904, 908
(E.D. Tex. 2005) (no dispute as to whether software sold by
licensees constituted a patented product); see also
Maxwell v. J. Baker, Inc., 86 F.3d 1098, 1112-13 (Fed.
Cir. 1996); Nike, Inc. v. Wal-Mart Stores, Inc., 138
F.3d 1437, 1446 (Fed. Cir. 1998). Having reviewed the case
law, the Court concludes that “defendant bears the
threshold burden of showing that an unmarked patented product
exists.” Blitzsafe, No. 2:15-cv-01274-JRG-RSP,
Doc. No. 403, at *3; see also Oracle Am., Inc. v. Google
Inc., No. 3:10-cv-03561-WHA, 2011 WL 5576228, at *2
(N.D. Cal. Nov. 15, 2011); Sealant Sys., 2014 WL
1008183, at *31; Arctic Cat I, No. 0:14-cv-62369-BB,
Doc. No. 119, at *58-59; accord Fortinet, Inc. v. Sophos,
Inc., No. 13-cv-05831-EMC, 2015 WL 5971585, at *4-5
(N.D. Cal. Oct. 14, 2015); MobileMedia Ideas, LLC v.
Apple Inc., No. 10-258-SLR, 2016 WL 3958723, at *5 (D.
Del. July 21, 2016; but see Adrea, LLC v. Barnes &
Noble, Inc., No. 13-cv-4137 (JSR), 2015 WL 4610465, at
*2 (S.D.N.Y. July 24, 2015); DR Sys., Inc. v. Eastman
Kodak Co., No. 08-cv-0669 H(BLM), 2009 WL 2632685, *4
(S.D. Cal. August 24, 2009). Consistent with the usual burden
of proof for affirmative defenses, see Dixon v.
U.S., 548 U.S. 1, 8 (2006), it is the defendant's
responsibility to affirmatively identify and prove that a
product is a patented article, particularly when the product
is manufactured by a third party under a settlement license
agreement rather than a product manufactured by the
plaintiff. “[O]therwise, a defendant's general
allegations could easily instigate a fishing expedition for
the patentee in order to stave off pursuit of damages for
infringement.” Arctic Cat I, No.
0:14-cv-62369-BB, Doc. No. 119, at *59.
argues that “[r]egardless of the burden of proof,
Riverbed has put forward evidence demonstrating that F5 and
Blue Coat have made and sold licensed, unmarked products that
practice the '530 and '513 Patents.” (Doc. No.
438, at 11.) Riverbed specifically argues that Dr.
Reader's Marking Expert Report demonstrates how, under
Realtime's infringement theories in this case, F5 and
Blue Coat products meet the limitations of the asserted
system and device claims. (Id. at 10-11.) Realtime
argues that Riverbed bears the burden of proving that the F5
and Blue Coat products are “patented articles”
and Riverbed cannot meet this burden by reliance on the F5
and Blue Coat Agreements. (Doc. No. 453, at 6-7.) Realtime
further argues that Dr. Reader's analysis leaves open
fact questions as to whether the F5 and Blue Coat products
are patented articles. (Id. at 3.) For example,
Realtime argues that Dr. Reader fails to identify whether any
of the products specifically includes a
“descriptor” as required by the claims.
though Riverbed has met its initial burden by identifying
products that allegedly practice the Asserted Patents, the
disputed record makes summary judgment unwarranted. See
Golden Bridge Tech. Inc v. Apple, Inc., No.
5:12-CV-04882-PSG, 2014 WL 1928977, at *12 (N.D. Cal. May 14,
2014); Blitzsafe, No. 2:15-cv-01274-JRG-RSP, Doc.
No. 403, at *3. Realtime's prior lawsuits against F5 and
Blue Coat involved different patents; Realtime has never
alleged that F5 or Blue Coat infringe the '530 or
'513 Patents. Even with respect to the patents Realtime
asserted against F5 and Blue Coat, the Court never issued
findings that F5 or Blue Coat products practiced those