Arctic Cat Inc. v. Bombardier Recreational Products Inc.
876 F.3d 1350 (2017)
Premium Feature
Subscribe to Lexplug to listen to the Case Podcast.
Rule of Law:
An alleged infringer challenging a patentee's compliance with the patent marking statute, 35 U.S.C. § 287, bears an initial burden of production to identify specific unmarked products believed to practice the patent. Once this burden is met, the burden of proof shifts to the patentee to prove that the identified products do not practice the patented invention.
Facts:
- Arctic Cat Inc. developed and patented a thrust steering system for personal watercraft (PWC) that automatically provides thrust when a rider turns the steering system, even with the throttle released.
- This system was designed to address the safety problem of inexperienced PWC riders losing steering capability when they instinctively slow down to avoid obstacles.
- In February 2002, Arctic Cat entered into a license agreement with Honda, allowing Honda to use patents covering the controlled thrust steering system.
- The license agreement expressly stated that Honda 'shall have no obligation or requirement to mark' its licensed PWC products with Arctic Cat's patent numbers.
- Bombardier Recreational Products Inc. (BRP) manufactured and sold Sea-Doo PWC that incorporated a similar feature called 'Off-Throttle Assisted Steering' (OTAS).
- For several years, Honda sold PWCs in the United States that were licensed under the patents-in-suit, and Arctic Cat made no effort to ensure Honda marked those products.
Procedural Posture:
- Arctic Cat Inc. sued Bombardier Recreational Products Inc. (BRP) for patent infringement in the U.S. District Court for the Southern District of Florida.
- BRP moved for summary judgment, arguing Arctic Cat's damages should be limited because its licensee, Honda, failed to mark patented products. The district court denied the motion.
- The case proceeded to a jury trial, where the jury found BRP willfully infringed the patents, found the patents were not invalid, and awarded damages.
- BRP filed a renewed motion for judgment as a matter of law (JMOL) on multiple issues, including invalidity and marking, which the district court denied.
- The district court trebled the damages based on the jury's willfulness finding and granted Arctic Cat's motion for an ongoing royalty.
- BRP, as appellant, appealed the district court's denial of its JMOL motions and other rulings to the U.S. Court of Appeals for the Federal Circuit; Arctic Cat is the appellee.
Premium Content
Subscribe to Lexplug to view the complete brief
You're viewing a preview with Rule of Law, Facts, and Procedural Posture
Issue:
Under 35 U.S.C. § 287, does an alleged infringer bear the initial burden of production to identify specific unmarked products believed to practice the patent before the burden of proof shifts to the patentee to prove compliance with the marking statute?
Opinions:
Majority - Moore, J.
Yes, an alleged infringer bears an initial burden of production to identify specific products it believes are unmarked patented articles subject to § 287. The court established a new burden-shifting framework to resolve a split among district courts regarding the patent marking statute. The alleged infringer's burden is a low bar of production, not persuasion, requiring only that it put the patentee on notice of specific unmarked products. Once that burden is met, the patentee, who has superior knowledge of its own products and licenses, bears the ultimate burden of proof to establish that the identified products do not practice the patented invention. In this case, BRP satisfied its initial burden by identifying fourteen specific Honda PWC models. The district court committed a legal error by placing the burden of proof on BRP to conduct a full claim analysis of the Honda products. Therefore, the court vacated the judgment on marking and remanded for a new trial on that issue, giving Arctic Cat the opportunity to prove the identified Honda products did not fall within the patent claims. The court affirmed the jury's finding of non-obviousness, holding that substantial evidence supported the jury's presumed finding that a skilled artisan would not have been motivated to combine the prior art. The court noted that the same prior art references that suggested the combination also warned of new hazards, which would discourage a person of ordinary skill from pursuing it. The evidence of industry praise and long-felt need further supported the conclusion of non-obviousness.
Analysis:
This case clarifies the procedural framework for the patent marking defense under 35 U.S.C. § 287, resolving a significant split among district courts. By establishing a burden of production for the alleged infringer, the court balances the patentee’s ultimate burden of proof against the potential for gamesmanship and overly broad discovery demands from infringers. This ruling provides a clear, two-step process that brings predictability to litigation, requiring an infringer to do initial homework but keeping the final burden on the patentee, who is in the best position to know if its licensed products practice the patent. The decision also reinforces that in an obviousness analysis, evidence that discourages a combination of prior art—even within a reference that also suggests it—can be sufficient to support a jury finding of no motivation to combine.
