`Case 3:17-cv-05659-WHA Document 129-37 Filed 06/28/18 Page 1 of 4
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`EXHIBIT 35
`EXHIBIT 35
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`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
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`infringement. The correct approach to determining notice under section 287 must focus on the
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`action of the patentee, not the knowledge or understanding of the infringer.” Id.
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`B. Arthrex’s Compliance with § 287(a)
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`The parties dispute whether Arthrex could have provided Defendants with actual notice
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`of infringement of the ’541 patent as a result of the Standstill Agreement, which refers to
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`continuations of the ’186 and ’052 patents such as the ’541 patent. Defendants argue that the
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`Standstill Agreement could not have provided actual notice of the ’541 patent because the
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`Standstill Agreement was entered into on August 12, 2014, and the ’541 patent did not issue until
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`September 2, 2014. Arthrex contends that the Standstill Agreement could have put Defendants
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`on notice of future infringement of the ’541 patent because the Agreement grants the parties
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`rights and obligations with respect to later-arising continuation patents. Accordingly, the
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`principal dispute is a legal one—whether § 287(a) requires a patentee to provide actual notice of
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`infringement of a specific patent after that patent has issued. If § 287(a) requires such an
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`affirmative act after a patent’s issuance date, then Arthrex cannot as a matter of law collect
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`damages for Defendants’ infringement of the ’541 patent until January 20, 2015, when the
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`parties agree actual notice was provided.
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`Under the circumstances, the Court holds that § 287(a) did not require Arthrex to have
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`provided affirmative notice of the ’541 patent after the ’541 patent issued. Defendants have not
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`disputed that the Standstill Agreement could satisfy § 287(a)’s actual notice requirement with
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`respect to the ’186 and ’052 patents. The Standstill Agreement was limited in duration, but the
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`notice that may have been provided by the Agreement is similar to the actual notice that can be
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`provided by a license offer. See Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1577
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`(Fed. Cir. 1985) (“The offering of a license is actual notice.”). While the Standstill Agreement
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`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
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`only explicitly refers to the ’186 and ’052 patents, the scope of a patentee’s actual notice may
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`expand based on subsequent events—at least when the parties are entangled in an ongoing and
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`complex patent dispute. See Funai Elec. Co. v. Daewoo Elecs. Corp., 616 F.3d 1357, 1373 (Fed.
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`Cir. 2010). When the threshold specificity required by § 287(a) is met with respect to one
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`product of infringement, for example, “ensuing discovery of other models and related products
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`may bring those products within the scope of the notice.” Id. If notice of specific products can
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`expand to include later-discovered products, notice of infringement of a parent patent can expand
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`to include notice of infringement a continuation patent. The Federal Circuit has acknowledged
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`that an accused infringer’s actual notice of a parent patent is relevant to the § 287(a) inquiry. See
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`K-TEC, Inc. v. Vita-Mix Corp., 696 F.3d 1364, 1379 (Fed. Cir. 2012) (noting that patentee
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`“provided notice that the MP container infringed various claims of the ’117 patent’s parent”).
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`The policy of § 287(a) supports the Court’s conclusion. “[T]he purpose of the actual
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`notice requirement is met when the recipient is notified, with sufficient specificity, that
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`the patent holder believes that the recipient of the notice may be an infringer.” SRI Int’l, Inc.
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`v. Advanced Tech. Labs., Inc., 127 F.3d 1462, 1470 (Fed. Cir. 1997). “Besides alerting the
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`alleged infringer to avoid further infringement, the notice requirement also permits the alleged
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`infringer to contact the patentee about an amicable and early resolution of the potential
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`dispute.” Lans v. Digital Equip. Corp., 252 F.3d 1320, 1327 (Fed. Cir. 2001). “[K]nowledge
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`of the patentee’s identity facilitates avoidance of infringement with design changes,
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`negotiations for licenses, and even early resolution of rights in a declaratory judgment
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`proceeding.” Id. Defendants cannot argue that Arthrex’s allegations concerning infringement
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`of the ’541 patent caught Defendants by surprise given the parties' ongoing patent dispute and
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`the Standstill Agreement.
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`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
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`Under the correct legal standard, the Court cannot hold as a matter of law that any notice
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`provided by the Standstill Agreement is insufficient to provide actual notice of Defendants’
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`infringement of the ’541 patent. Compliance with the marking statute is an issue of fact, Gart v.
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`Logitech, Inc., 254 F.3d 1334, 1339 (Fed. Cir. 2001), and the Standstill Agreement raises a
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`triable issue concerning actual notice. The Standstill Agreement covers products accused under
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`the ’186 and ’052 patents that are now accused of infringing the ’541 patent, and the Agreement
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`grants rights and obligations with respect to the ’541 patent because the ’541 patent is a child of
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`the ’186 and ’052 patents. Such rights and obligations came into being when the ’541 patent
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`issued after the parties entered the Standstill Agreement. A reasonable juror could conclude that
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`the scope of notice provided by the Standstill Agreement expanded to include notice of
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`infringement of the ’541 patent after the ’541 patent issued. Accordingly, summary judgment
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`cannot be granted.
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`III. CONCLUSION
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`For the foregoing reasons, Defendants’ motion for partial summary judgment (Dkt. 181)
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`is DENIED.
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