In Frolow v. Wilson Sporting Goods Co., the Federal Circuit refused to adopt the doctrine of marking estoppel, but held that evidence that Wilson had marked some accused tennis racket models constituted evidence of infringement sufficient to raise a genuine issue of material fact and prevent summary judgment of non-infringement.
The Patent at Issue
The patent at issue was Frolow's U.S. Patent RE33,372, directed to a tennis racket with specific properties. Wilson had entered into a License Agreement with Frolow, under which Wilson agreed to pay royalties for "Licensed Article(s)," defined as "tennis rackets which are covered by one or more unexpired or otherwise valid claims" of the '372 patent.
Mr. Frolow suspected that "Wilson was not paying royalties on all the Licensed Articles and filed suit alleging that Wilson breached the License Agreement and infringed the '372 patent." As explained by the Federal Circuit, because of an arbitration provision, "the court limited the breach of contract case to determining which Wilson racket models were Licensed Articles."
The District Court Proceedings
Frolow originally challenged 42 Wilson tennis racket models. Wilson submitted an expert report showing that the tennis racket models did not fall within the scope of the '372 patent. Frolow submitted a declaration disputing Wilson's methodology, and cited the fact that "Wilson had marked fourteen of the rackets with the '372 patent number," arguing that "Wilson's marking raised a genuine issue of material fact" regarding those models.
The district court rejected Frolow's marking argument, and "also declined to find that Wilson's marking prevented it from challenging whether the accused racket models were Licensed Articles." The district court therefore granted summary judgment in favor of Wilson.
The Federal Circuit Decision
At the Federal Circuit, Frolow argued that "Wilson's marking of fourteen racket models with the '372 patent number estopped it from arguing that those models are not Licensed Articles," or at least that "Wilson's marking was sufficient to raise a genuine issue of material fact as to whether the fourteen racket models are Licensed Articles."
In response, Wilson argued that the marking was "inadvertent" and that its "expert report proved that the fourteen racket models were not Licensed Articles" because it showed that the rackets' properties did not fall within the '372 patent.
The Federal Circuit rejected the doctrine of "marking estoppel":
On the other hand, the Federal Circuit agreed that Wilson's marking supported Frolow's case:
The court explained:
Thus, the Federal Circuit found that "the district court erred when it held that the defendant's marking was irrelevant."
The Federal Circuit also held that, "in this case," Frolow's position that the tennis racket models fall within the scope of the patent coupled with the evidence of marking made summary judgment in favor of Wilson improper.
The Other Opinions
The Federal Circuit opinion was authored by Judge Moore, and joined by Judge Clevenger and Judge Newman. Nevertheless, Judge Moore and Judge Clevenger each wrote separate opinions expressing "additional views," and Judge Newman wrote a concurring opinion.
Judge Clevenger wrote to explain that, not withstanding the court's opinion, the district court may exclude the evidence of marking under Rule 403 of the Federal Rules of Evidence, which provides that "[t]he court may exclude relevant evidence if its probative value is substantially outweighed by a danger of one or more of the following: unfair prejudice, confusing the issues, [or] misleading the jury...." In particular, Judge Clevenger believes that the marking evidence may be of limited probative value where Wilson had submitted direct evidence that the fourteen tennis racket models do not satisfy the claim limitations, such that "Wilson would be unfairly prejudiced by its admission, or .. the evidence would mislead or confuse the jury."
Judge Moore wrote to respond to Judge Clevenger's additional views, and express her disagreement that Wilson had established that the fourteen tennis racket models do not infringe the patent.
In her concurring opinion, Judge Newman emphasized that Wilson should bear the consequences of its marking:
According to Judge Newman:
The majority opinion rejected this burden-shifting, and noted that Frolow, as the plaintiff, bore the burden of proof.
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