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Salazar v. RSP HTC Corp.

United States District Court, E.D. Texas, Marshall Division

May 1, 2018

JOE ANDREW SALAZAR, Plaintiff,
v.
RSP HTC CORPORATION, Defendant.

          MEMORANDUM OPINION

          ROY S. PAYNE UNITED STATES MAGISTRATE JUDGE

         In this patent case, the Court now considers Plaintiff Joe Salazar's Motion for Partial Summary Judgment on Compliance With Marking Requirements [Dkt. # 238]. After further consideration of the parties' arguments during the pretrial conference, controlling case law, and the procedural history of this case, the Court will VA C AT E its earlier decision to grant Salazar leave to file the motion and DENY the motion as untimely.

         I. BACKGROUND

         Salazar accuses HTC Corporation of infringing U.S. Patent 5, 802, 467 by making and selling various models of smartphones. Second Am. Compl. [Dkt. # 44] ¶ 7. The '467 Patent relates to a system for two-way communication with appliances, such as intercoms, televisions, sound systems, and the like. See, e.g., '467 Patent fig.1b. According to the patent, prior-art devices communicated with such appliances only using one-way communication, and usually with only one of an infrared (IR) signal or a radio frequency (RF) signal. Id. at 1:18-50. Relative to the prior art, the '467 Patent considered full two-way communication directly with an appliance using IR or RF links to be significantly advantageous. Id. at 1:51-2:11.

         Salazar's operative pleading, filed June 15, 2017, alleges

[a]fter the ‘467 Patent issued in 1998, beginning in 1999, Salazar manufactured and sold products that embody the inventions disclosed and claimed in the ‘467 Patent. These products were marked with U.S. Patent No. 5, 802, 467 in accordance with and in compliance with the Marking Statute, 35 U.S.C. § 287.

Pl.'s Second Am. Compl. [Dkt. # 44] ¶ 13; see also Pl.'s First Am. Compl. [Dkt. # 17] ¶ 11 (same language). During discovery, Salazar identified the products at issue in a verified interrogatory response: the Model Hughes Remote Phone, the 650D My One Remote, and the My1Remote (collectively, “the I3 devices”[1]). Pl.'s Second Am. Resps. to Def.'s First Set of Interrogs. [Dkt. # 242-3] at 11.

         The deadline for dispositive motions ran on February 12, 2018. Sixth Am. Docket Control Order [Dkt. # 145] at 2. On March 7, 2018, Defendant answered Salazar's Second Amended Complaint and alleged, under the heading “Affirmative and Other Defenses”:

Salazar's claim for damages is statutorily limited by 35 U.S.C. §§ 286 and/or 287. Salazar alleges that the Model Hughes Remote Phone, the 650D My One Remote, and the My1Remote devices practiced the asserted claims of the '467 patent. Because I3 failed to consistently and continuously mark substantially all of the Model Hughes Remote Phone devices with the '467 patent number from 1999 to 2001, Salazar is precluded from recovering pre- suit damages. Because I3 also failed to consistently and continuously mark substantially all of the 650D My One Remote devices with the '467 patent number from 2001 to 2003, Salazar is precluded from recovering pre-suit damages. Because I3 also failed to consistently and continuously mark substantially all of the My1Remote devices with the '467 patent number from 2003 to 2005, Salazar is precluded from recovering pre-suit damages.

Def.'s Am. Answer & Counterclaims [Dkt. # 180] ¶ 31. Salazar then “answered” this “defense” by changing his position and alleging the I3 devices do not, in fact, meet all of the limitations of the asserted claims. Pl.'s Answer & Reply to Def.'s Am. Answer & Counterclaims [Dkt. # 200] at 23. Alternatively, Salazar claims the I3 devices “were consistently and continuously (although mistakenly) marked with the ‘467 patent number.” Id.

         At an April 16, 2018 pretrial conference, the parties disputed whether this marking issue should go the jury. Salazar explained the I3 devices were mistakenly marked, and only recently did he dissect the I3 devices and conclude they didn't embody any asserted claims. Salazar contended (1) the I3 devices “unequivocally” do not meet the IR limitation of the asserted claims, (2) this issue would only confuse the jury, (3) Defendant raised the issue after the deadline for dispositive motions, and (4) Defendant never identified the products as required under Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 876 F.3d 1350 (Fed. Cir. 2017). See H'rg Tr. (Apr. 16, 2018) [Dkt. # 235] at 7:21-12:8.

         In response, Defendant's counsel indicated the marking issue had not been thoroughly explored. In fact, he had not even seen the I3 products or had an opportunity to inspect Salazar's marking evidence. Defendant simply asked an interrogatory about all products that practiced the invention and based his “defense” on Salazar's verified response. See Id. at 12:12-14:20.

         In deciding whether to allow an expedited motion for summary judgment on this issue, the Court noted

I know that it's late, but on the other hand, it sounds like this defense was injected late, and I'm -- if you had something that you were going to present, I'd consider it now on the question of whether or not to allow the motion. But what I'm hearing is that at this point, you don't have anything ...

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