Aoki v . FMT Corp. CV-96-42-JD 04/24/00
UNITED STATES DISTRICT COURT FOR THE
DISTRICT OF NEW HAMPSHIRE
Aoki Technical
Laboratory, Inc.
v. Civil N o . 96-42-JD
Opinion N o . 2000 DNH 099
FMT Corporation, Inc.
O R D E R
Aoki moves for partial summary judgment seeking, pursuant to
35 U.S.C.A. § 287(a), a judgment limiting FMT’s potential damages
to allegedly infringing sales that occurred after Aoki received
notice from FMT of its patents and infringement claim in January
of 1996. In response, FMT contends that § 287(a) does not apply
and that it provided actual notice to Aoki in June of 1991.1 FMT
also moves to strike the declaration of Michael Hoffman submitted
by Aoki in support of its motion, and Aoki objects.
Standard of Review
“Summary judgment is appropriate when there are no genuine
issues of material fact and the moving party is entitled to
1
FMT also requests partial summary judgment in its favor as
part of its objection to Aoki’s motion. FMT’s request, however,
is not included in the title of the motion and will not be
considered as a cross-motion for summary judgment. See LR
7.1(a).
judgment as a matter of law.” Atmel Corp. v . Information Storage
Devices, Inc., 198 F.3d 1374, 1378 (Fed. Cir. 1999) (citing Fed.
R. Civ. P. 56(c)). The evidence is viewed in the light most
favorable to the nonmoving party, and all reasonable inferences
are drawn in its favor. See Optical Disc Corp. v . Del Mar
Avionics, ___ F.3d ___,
2000 WL 354753 at *7 (Fed. Cir. Apr. 7 ,
2000). Summary judgment will not be granted as long as a
reasonable jury could return a verdict in favor of the nonmoving
party. See Anderson v . Liberty Lobby, Inc.,
477 U.S. 242, 248
(1986).
Summary judgment motions are considered in light of the
parties’ substantive evidentiary burdens at trial. See id. at
254. The patentee, FMT in this case, has the burden of proving
compliance with the marking statute, § 287(a). See Maxwell v . J.
Baker, Inc.,
86 F.3d 1098, 1111 (Fed. Cir. 1996). If the moving
party, without the burden of proof on the issue for summary
judgment, shows with record support that there is no material
factual issue and that it is entitled to summary judgment, then
the nonmoving party must show either that the moving party is not
entitled to judgment as a matter or law or that material facts
are in dispute. Vivid Tech., Inc. v . American Science,
200 F.3d
795, 806-07 (Fed. Cir. 1999).
2
Discussion
Aoki contends that FMT’s infringement damages, if any, must
be limited because it was not given notice of infringement until
January of 1996. The marking statute, § 287(a), 2 encourages
patentees to notify the public of their patents by tying the
accrual of damages for infringement to notice requirements. See
Maxwell, 86 F.3d at 1112. Notice under the statute may be
provided constructively, by marking the product with the patent
number, or by actual notice to the infringer. See SRI Int’l,
Inc. v . Advanced Tech. Labs., Inc.,
127 F.3d 1462, 1469 (Fed.
2
35 U.S.C.A. § 287(a) provides as follows:
Patentees, and persons making, offering for sale, or
selling within the United States any patented article
for or under them, or importing any patented article
into the United States, may give notice to the public
that the same is patented, either by fixing thereon the
word “patent” or the abbreviation “pat.,” together with
the number of the patent, or when, from the character
of the article, this can not be done, by fixing to i t ,
or to the package wherein one or more of them is
contained, a label containing a like notice. In the
event of failure so to mark, no damages shall be
recovered by the patentee in any action for
infringement, except on proof that the infringer was
notified of the infringement and continued to infringe
thereafter, in which event damages may be recovered
only for infringement occurring after such notice.
Filing of an action for infringement shall constitute
such notice.
3
Cir. 1997). FMT does not dispute that the products made by its
licensee, Constar, were not marked with the patent numbers.3
Instead, FMT contends that it gave actual notice and that the
marking statute does not require marking because of the nature of
the patents and the products made.
“Actual notice requires the affirmative communication of a
specific charge of infringement by a specific accused product or
device.” Amsted, 24 F.3d at 187. “Although there are numerous
possible variations in form and content, the 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, 127 F.3d
at 1470. While an informational letter providing notice of a
patent to an entire industry is insufficient, see Amsted, 24 F.3d
at 187, it is not necessary that “the patentee threatens suit,
demands cessation of infringement, or offers a license under the
patent,” SRI,
127 F.3d at 1470.
FMT asserts that Aoki was given actual notice of infringe-
ment when Frederick Feddersen, president of FMT, saw an Aoki
machine at the National Plastics Exposition in June of 1991 and
3
Claim one in each of three patents, U.S. Patent N o .
4,432,530 (“‘530 patent”), U.S. Patent N o . 4,521,369 (“‘369
patent”), and U.S. Patent N o . 4,588,620 (“‘620 patent”), is at
issue in this case.
4
talked with an Aoki representative, Mr. Tsugami. Feddersen says
that he noticed that mechanics were taking preforms out of the
machine and they looked like they had flat bottoms. He asked Mr.
Tsugami if he could have a preform, and Tsugami said no because
they were confidential. Feddersen then asked Tsugami if the
bottom of the preforms were thinner than the side walls.
Feddersen says that Tsugami smiled and asked him if he was from
FMT, which Feddersen admitted. Tsugami said he had heard of FMT
from the Nissei case, and Feddersen responded that that was one
of the reasons he wanted to see the configuration of the bottom
of the preform. Feddersen then offered Aoki a license and said
that if Aoki did not negotiate a license with FMT and FMT were
successful in the Nissei case, FMT would then file a suit against
Aoki. In his deposition, Tsugami said he did not recall the
conversation with Feddersen, but he did not deny that it might
have occurred.
Aoki does not address the Feddersen notice, at all.
Instead, Aoki says, “Prior to January 1 1 , 1996, there is no
dispute that there is absolutely no evidence that FMT ever
communicated ‘a specific charge of infringement by a specific
accused product’ to Aoki.” Contrary to Aoki’s assertion, the
Feddersen and Tsugami discussion is at least some evidence of
actual notice. Feddersen says that he offered Aoki a license,
5
and in the context of the conversation a reasonable inference
that could be draw is that the license would permit Aoki to use
FMT’s patent covering flat bottomed preforms with thicker side
walls than bottoms. An offer of a license is actual notice. See
Ralston Purina C o . v . Far-Mar-Co., Inc., 772 F.2d 1570, 1577
(Fed. Cir. 1985). In addition, Feddersen threatened suit, which,
under the circumstances, also could reasonably be interpreted to
mean an infringement suit under the same patents at issue in the
Nissei case. See SRI,
127 F.3d at 1470.
Based on the present state of the record, the discussion,
supported by Feddersen’s affidavit and deposition testimony, at
least presents a triable issue as to whether actual notice
occurred at that time. Therefore, FMT has shown that Aoki did
not establish that it is entitled to partial summary judgment
with respect to limiting FMT’s damages under § 287(a). See Vivid
Tech., 200 F.3d at 806-07.
Given the triable question as to actual notice, which would
predate the Constar license, Aoki is not entitled to partial
summary judgment based on the alternative issue of the marking
requirement under § 287(a). Therefore, the remaining issues as
to whether the marking statute applies to the patented preform or
the patented mold-core rod combination made by Constar under
license from FMT will not be addressed in the context of this
6
motion. In addition, since the declaration of Michael Hoffman,
submitted by Aoki in support of its motion for partial summary
judgment, was not necessary to resolve the motion and was not
considered by the court, it is also not necessary to consider
FMT’s motion to strike the declaration.
Conclusion
For the foregoing reasons, the plaintiff’s motion for
partial summary judgment (document n o . 299) is denied. The
defendant’s motion to strike (document n o . 322) is denied.
SO ORDERED.
Joseph A . DiClerico, Jr.
District Judge
April 2 4 , 2000
cc: David B . Abel Jr,. Esquire
Irvin D. Gordon, Esquire
Garry R. Lane, Esquire
Theodore A . Breiner, Esquire
Jerry B . Blackstock, Esquire
7
