Case 3:17-cv-05659-WHA Document 129-37 Filed 06/28/18 Page 1 of 4
`Case 3:17-cv-05659-WHA Document 129-37 Filed 06/28/18 Page 1 of 4
`
`EXHIBIT 35
`EXHIBIT 35
`
`
`
`

`

`Case 3:17-cv-05659-WHA Document 129-37 Filed 06/28/18 Page 2 of 4
`Case 2:15-cv-01047-RSP Document 275 Filed 11/29/16 Page 4 of 6 PageID #: 23884
`
`infringement. The correct approach to determining notice under section 287 must focus on the
`
`action of the patentee, not the knowledge or understanding of the infringer.” Id.
`
`B. Arthrex’s Compliance with § 287(a)
`
`The parties dispute whether Arthrex could have provided Defendants with actual notice
`
`of infringement of the ’541 patent as a result of the Standstill Agreement, which refers to
`
`continuations of the ’186 and ’052 patents such as the ’541 patent. Defendants argue that the
`
`Standstill Agreement could not have provided actual notice of the ’541 patent because the
`
`Standstill Agreement was entered into on August 12, 2014, and the ’541 patent did not issue until
`
`September 2, 2014. Arthrex contends that the Standstill Agreement could have put Defendants
`
`on notice of future infringement of the ’541 patent because the Agreement grants the parties
`
`rights and obligations with respect to later-arising continuation patents. Accordingly, the
`
`principal dispute is a legal one—whether § 287(a) requires a patentee to provide actual notice of
`
`infringement of a specific patent after that patent has issued. If § 287(a) requires such an
`
`affirmative act after a patent’s issuance date, then Arthrex cannot as a matter of law collect
`
`damages for Defendants’ infringement of the ’541 patent until January 20, 2015, when the
`
`parties agree actual notice was provided.
`
`Under the circumstances, the Court holds that § 287(a) did not require Arthrex to have
`
`provided affirmative notice of the ’541 patent after the ’541 patent issued. Defendants have not
`
`disputed that the Standstill Agreement could satisfy § 287(a)’s actual notice requirement with
`
`respect to the ’186 and ’052 patents. The Standstill Agreement was limited in duration, but the
`
`notice that may have been provided by the Agreement is similar to the actual notice that can be
`
`provided by a license offer. See Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1577
`
`(Fed. Cir. 1985) (“The offering of a license is actual notice.”). While the Standstill Agreement
`
`
`
`4
`
`

`

`Case 3:17-cv-05659-WHA Document 129-37 Filed 06/28/18 Page 3 of 4
`Case 2:15-cv-01047-RSP Document 275 Filed 11/29/16 Page 5 of 6 PageID #: 23885
`
`only explicitly refers to the ’186 and ’052 patents, the scope of a patentee’s actual notice may
`
`expand based on subsequent events—at least when the parties are entangled in an ongoing and
`
`complex patent dispute. See Funai Elec. Co. v. Daewoo Elecs. Corp., 616 F.3d 1357, 1373 (Fed.
`
`Cir. 2010). When the threshold specificity required by § 287(a) is met with respect to one
`
`product of infringement, for example, “ensuing discovery of other models and related products
`
`may bring those products within the scope of the notice.” Id. If notice of specific products can
`
`expand to include later-discovered products, notice of infringement of a parent patent can expand
`
`to include notice of infringement a continuation patent. The Federal Circuit has acknowledged
`
`that an accused infringer’s actual notice of a parent patent is relevant to the § 287(a) inquiry. See
`
`K-TEC, Inc. v. Vita-Mix Corp., 696 F.3d 1364, 1379 (Fed. Cir. 2012) (noting that patentee
`
`“provided notice that the MP container infringed various claims of the ’117 patent’s parent”).
`
`The policy of § 287(a) supports the Court’s conclusion. “[T]he purpose of the actual
`
`notice requirement is met when the recipient is notified, with sufficient specificity, that
`
`the patent holder believes that the recipient of the notice may be an infringer.” SRI Int’l, Inc.
`
`v. Advanced Tech. Labs., Inc., 127 F.3d 1462, 1470 (Fed. Cir. 1997). “Besides alerting the
`
`alleged infringer to avoid further infringement, the notice requirement also permits the alleged
`
`infringer to contact the patentee about an amicable and early resolution of the potential
`
`dispute.” Lans v. Digital Equip. Corp., 252 F.3d 1320, 1327 (Fed. Cir. 2001). “[K]nowledge
`
`of the patentee’s identity facilitates avoidance of infringement with design changes,
`
`negotiations for licenses, and even early resolution of rights in a declaratory judgment
`
`proceeding.” Id. Defendants cannot argue that Arthrex’s allegations concerning infringement
`
`of the ’541 patent caught Defendants by surprise given the parties' ongoing patent dispute and
`
`the Standstill Agreement.
`
`5
`
`

`

`Case 3:17-cv-05659-WHA Document 129-37 Filed 06/28/18 Page 4 of 4
`Case 2:15-cv-01047-RSP Document 275 Filed 11/29/16 Page 6 of 6 PageID #: 23886
`
`Under the correct legal standard, the Court cannot hold as a matter of law that any notice
`
`provided by the Standstill Agreement is insufficient to provide actual notice of Defendants’
`
`infringement of the ’541 patent. Compliance with the marking statute is an issue of fact, Gart v.
`
`Logitech, Inc., 254 F.3d 1334, 1339 (Fed. Cir. 2001), and the Standstill Agreement raises a
`
`triable issue concerning actual notice. The Standstill Agreement covers products accused under
`
`the ’186 and ’052 patents that are now accused of infringing the ’541 patent, and the Agreement
`
`grants rights and obligations with respect to the ’541 patent because the ’541 patent is a child of
`
`the ’186 and ’052 patents. Such rights and obligations came into being when the ’541 patent
`
`issued after the parties entered the Standstill Agreement. A reasonable juror could conclude that
`
`the scope of notice provided by the Standstill Agreement expanded to include notice of
`
`infringement of the ’541 patent after the ’541 patent issued. Accordingly, summary judgment
`
`cannot be granted.
`
`III. CONCLUSION
`
`For the foregoing reasons, Defendants’ motion for partial summary judgment (Dkt. 181)
`
`is DENIED.
`
`6
`
`