Last week, Magistrate Judge Grewal in N.D. Cal. denied Apple’s motion for summary judgment that patent owner Golden Bridge Technology was precluded from seeking pre-suit damages due to its alleged failure to comply with the marking statute.  Apple’s summary judgment argument was premised on Golden Bridge’s failure to mark the alleged SEP’s patent number on products complying with the High-Speed Uplink Packet Access (“HSUPA”) upgrade to the UMTS 3G standard, but Apple alternatively argued on summary judgment that the patent was not infringed because it did not read on that standard.  These conflicting positions precluded summary judgment on the issue.

The court noted a split in authority (with no clear guidance from the Federal Circuit) as to who has the burden to trigger the Section 287 marking requirements, and adopted a prior ruling in N.D. Cal. that the accused infringer must trigger the marking statute by “identify[ing] unmarked products believed to practice the accused claims.”  Although Apple had met that burden by identifying unmarked products, Apple’s non-infringement arguments warranted denying summary judgment at this time, the court stating:

Although Apple met its initial burden — it identified particular phones allegedly triggering Section 287 — the disputed record makes summary judgment unwarranted.  The parties dispute whether those phones practiced the asserted claims prior to the filing of this case.  Much of the parties’ disagreement flows from whether or not the ‘793 patent is essential to the HSUPA standard.  Curiously, while this motion argues summary judgment on marking is warranted because the ‘793 patent is standards essential, Apple’s motion for summary judgment of non-infringement urges the opposite.  Apple’s conflicting arguments confirm that summary judgment precluding pre-suit damages is not warranted.

This illustrates a common litigation issue in pursuing alternative legal theories, as we must do from time to time when disputed factual issues are yet to be decided.  Recall, for example, that one reason the ITC did not find a standard-setting obligation defense in the infamous Samsung v. Apple investigation was Apple’s argument that Samsung’s patent was not essential and not infringed by Apple’s UMTS-standard compliant products (see page 50 of the decision found in our July 9, 2013 post).