Rembrandt Wireless Technologies, LP v. Samsung Electronics Co.
853 F.3d 1370
| Fed. Cir. | 2017Background
- Rembrandt sued Samsung for infringement of U.S. Pat. Nos. 8,023,580 and 8,457,228 (related patents covering use of a message header to indicate a modulation method change in master/slave communications); jury found infringement and validity and awarded $15.7M.
- Claim 2 (dependent) recites transmissions using “at least two types of modulation methods” and the district court construed “different type” to mean different families of modulation techniques (e.g., FSK family vs. QAM family).
- Samsung did not appeal the infringement verdict but challenged: (1) claim construction; (2) JMOL on obviousness; (3) damages evidentiary rulings and computation; and (4) denial of Samsung’s motion to limit pre-notice damages under the marking statute based on Rembrandt’s disclaimer of a previously-asserted claim.
- On obviousness, Samsung relied on Boer (patent) plus Upender (article) to show prior art taught the claimed modulation changes and would motivate combination; Rembrandt countered with testimony that the references did not disclose different families and that Upender taught away from replacing CSMA/CA with master/slave.
- Rembrandt’s damages expert used a chip price differential benchmark and settlement/licensing agreements (BlackBerry settlement, Zhone license) to derive a per-unit royalty; district court admitted the testimony and the jury award fell within the expert’s proposed range.
- District court denied Samsung’s motion to bar pre-notice damages after Rembrandt disclaimed claim 40; Federal Circuit held disclaimer does not retroactively excuse failure to mark and vacated the denial, remanding to decide patent-vs-claim-level marking application.
Issues
| Issue | Plaintiff's Argument (Rembrandt) | Defendant's Argument (Samsung) | Held |
|---|---|---|---|
| Proper construction of “different type” of modulation methods | Term should be read as written; prosecution statement used “i.e.” to define different families (FSK vs QAM) | Construction was too narrow; "different types" need only mean incompatible methods (could be same family with different amplitudes) | Affirmed district court: "different families of modulation techniques" (prosecution history definitional statement persuasive) |
| JMOL on obviousness (Boer + Upender) | Asserted references do not teach claim limitations; jury verdict supported | Boer/Upender combination rendered claims obvious | Denial of JMOL affirmed: substantial evidence supports jury finding that Boer did not teach "different families" and no motivation to combine with Upender |
| Admissibility and sufficiency of damages evidence (Weinstein) | Expert used reasonable incremental-value benchmark and relied on settlement/license comparators | Benchmark periods and attribution to EDR functionality flawed; comparators non-representative | District court did not abuse discretion; testimony admissible and jury award supported by substantial evidence |
| Effect of disclaimer on §287 marking liability and pre-notice damages | Disclaimer of claim 40 removed any marking obligation tied to that claim | Disclaimer should not retroactively excuse failure to mark; Rembrandt sought to avoid §287 consequences via disclaimer | Vacated denial of Samsung’s motion: disclaimer cannot erase public’s marking rights; remanded to determine whether marking applies patent-by-patent or claim-by-claim and to adjust damages accordingly |
Key Cases Cited
- Shire Dev., LLC v. Watson Pharm., Inc., 787 F.3d 1359 (Fed. Cir.) (claim construction review de novo on intrinsic record)
- Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015) (role of district court factfinding in claim construction)
- Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir.) (primacy of specification and use of prosecution history)
- Graham v. John Deere Co. of Kan. City, 383 U.S. 1 (1966) (framework for obviousness analysis)
- Ericsson, Inc. v. D-Link Sys., Inc., 773 F.3d 1201 (Fed. Cir.) (reasonable royalty and incremental value guidance)
- Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141 (1989) (marking statute protects public notice function)
- Crown Packaging Tech., Inc. v. Rexam Beverage Can Co., 559 F.3d 1308 (Fed. Cir.) (purpose of marking statute to encourage notice)
- Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034 (Fed. Cir.) (teaching away and motivation-to-combine are distinct obviousness considerations)