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District Court Denies Motion to Reconsider Summary Judgment Eliminating Pre-Suit Damages for Failure to Mark Imported Products

The district court had previously held that no reasonable jury could find that the plaintiff Corning Optical Communications Wireless LTD (“Corning”) marked its products or otherwise complied with the marking requirements Section 287(a) of the Patent Act. Corning requested that the district court reconsider its ruling.

The district court noted that defendants had produced unrebutted evidence in support of their motion for summary judgment that “[a] sale of an accused distributed antenna system to an American end customer starts with the customer issuing a purchase order to Corning’s American parent. The parent company then issues a purchase order to Corning, and Corning in turn issues another purchase order to a third-party manufacturer. The manufacturer ships the product directly to the end customer in the United States. Corning takes title to a product when it leaves the manufacturer and retains it until it reaches the end customer. Immediately before title transfers to the customer, Corning’s American parent takes ‘flash title,’ temporary legal ownership that lasts only a split second.”

In its motion to reconsider, Corning argued that under these facts it is the American parent, and not the plaintiff and patentee, that imports the products practicing the patent-in-suit. Corning also argued that the district court erred in finding that this evidence indisputably showed that Corning, and not its parent, made these sales in the United States. Finally, Corning stated that the defendants did not satisfy their burden of proving that no reasonable juror could find that Corning imported products into the United States.

The district court began its analysis nothing that “there is very little case law addressing what factors determine whether an entity has imported or sold a product here for the purposes of Section 287(a). But the Federal Circuit has provided substantial guidance on the interpretation of the corresponding terms in 35 U.S.C. ยง 271(a). Unless there is reason to believe otherwise, courts generally presume that words carry the same meaning when they appear in different sections of the same statute.”

Based on this analysis, the district court concluded that “[f]or at least a substantial percentage of its transactions, the plaintiff patentee holds legal title to its DAS products until a split second before they reach their end customers in the United States. Nothing Corning properly submits suggests otherwise. In Nuance Communications, a foreign company sent software products accused of infringing a patent to a related American company for distribution in the United States. The foreign company retained ownership of the products even after they entered the United States. Under these facts, the Federal Circuit held that the foreign company imported these products under Section 271(a).”

Accordingly, the district court concluded that “[i]t is undisputed that Corning ships products into the United States, and in fact ships them directly to the end customers who ordered them from Corning’s American parent. Corning therefore imports these products into the United States, and it was required to mark them under Section 287(a).”

Corning Optical Communications Wireless LTD v. Solid, Inc., Case No. 5:14-cv-03750-PSG (N.D. Cal. Sept. 28, 2015)

The authors of are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Stan Gibson at 310.201.3548 or