[00:00:05] Speaker 00:
We have four cases on the calendar this morning.

[00:00:08] Speaker 00:
Three patent cases, two from district courts, one from the PTAB, and a case from the Armed Services Board of Contract Appeals.

[00:00:20] Speaker 00:
First case is optic cat versus bombardier, or maybe bombardier, bombardierier.

[00:00:33] Speaker 00:
2019-1080.

[00:00:34] Speaker 00:
Mr. Locascio.

[00:00:49] Speaker 03:
May it please the court, Greg Locascio for Arctic Cat.

[00:00:52] Speaker 03:
Arctic Cat presents two issues on appeal.

[00:00:54] Speaker 03:
Our second argument, to recover pre-suit damages based on the actual notice provision of Section 287, would require en banc review.

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overturn this court's Amstead decision.

[00:01:05] Speaker 03:
I'm happy to address questions the panel may have on that.

[00:01:07] Speaker 03:
Given its posture, I'm going to focus on the first issue in our brief.

[00:01:11] Speaker 00:
But look, regarding the first issue, it's the policy of the law that one must mark product if one is selling it, or one doesn't collect damages until notice.

[00:01:27] Speaker 00:
Why isn't that sort of the law of the case here?

[00:01:31] Speaker 00:
Because your licensee was selling a product.

[00:01:36] Speaker 00:
And I think part of the history here, if I recall, is that the marking requirement was eliminated from the license, sort of discouraging compliance with the law.

[00:01:50] Speaker 00:
And so why shouldn't you be bound by the failure to mock and not collect damages?

[00:02:00] Speaker 03:
There's two points on that.

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First of all, we have to start at what the statute says.

[00:02:03] Speaker 03:
Well, let's also look at this court's cases.

[00:02:05] Speaker 03:
And to your point, the court's decision in AMS suggests that's not the test, because the test is during the period of noncompliance with Section 287, damages absent actual notice are unavailable.

[00:02:19] Speaker 03:
The statute itself does not read as a once you make a triggering unmarked sale in perpetuity from there on after, damages are unavailable even if you don't sell.

[00:02:31] Speaker 02:
What if I disagree with that?

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There's a sentence in section 287A.

[00:02:37] Speaker 02:
And it's the last sentence.

[00:02:41] Speaker 02:
Yeah, it's the last sentence.

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In the event of failure to sew mark, no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of infringement and continued to infringe, and so on.

[00:02:56] Speaker 02:
So why isn't that language about no damages shall be recovered by the patentee in any action for infringement?

[00:03:04] Speaker 02:
Why doesn't that prohibit the argument that you're making here today?

[00:03:10] Speaker 03:
First off, I think the failure to sew to mark

[00:03:12] Speaker 03:
has to link back to the beginning of section 287, which says making, offering, or selling, which is written in the present participle.

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It's happening, so during the period of noncompliance.

[00:03:23] Speaker 03:
And it's not just our view here that that must be the way it's read, because under your reading, AMS wouldn't exist, because AMS says it can be cured, essentially.

[00:03:34] Speaker 02:
What if AMS is a judicially created exception that promotes the idea that

[00:03:42] Speaker 02:
in that situation, where somebody has a product that they haven't marked for six months or a year, and then they start marking, you want to continue to promote encouragement of marketing.

[00:03:54] Speaker 02:
Whereas that policy doesn't seem to exist in your factual circumstances.

[00:03:59] Speaker 03:
First off, I'd suggest that I don't think it's a, it certainly wasn't written or described in a manner where it was, we're going to create an exception on a policy basis, disregarding the language of the statute.

[00:04:09] Speaker 03:
But putting that aside, the policy,

[00:04:11] Speaker 03:
description from Nike and all the other cases looking at the policy behind 287 even going back as far as Dunlap speak to avoiding innocent infringement.

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And the statute began as a duty to mark and then evolved into a you can choose to mark.

[00:04:26] Speaker 03:
But in all of that context, and even in AMS, it says, so long as you're putting unmarked products into the marketplace, you are not in compliance.

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And putting unmarked products into the marketplace is the conduct to be discouraged.

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And so if you read AMS, where it sets forth the standard, it says, we construe Section 287 to preclude recovery of damages

[00:04:48] Speaker 03:
only for infringement for any time prior to compliance with the marking or actual notice requirements.

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And the marking requirement is, if you're making, using, or offering or selling, and you want damages pre-notice, you must mark.

[00:05:03] Speaker 03:
And if we step back beyond that to Wine Railway from the United States Supreme Court and this court in Texas Digital, if you don't make a product, there's nothing to mark.

[00:05:13] Speaker 03:
And Wine Railway speaks to the impossibility of that.

[00:05:15] Speaker 02:
Do you agree, though, that

[00:05:17] Speaker 02:
AMS's second reason for its holding was to encourage parties that haven't, you know, after the patents issue and they haven't yet complied with the marketing statute, to encourage them to later comply with the marketing statute, even if it's a year later, right?

[00:05:33] Speaker 02:
That's the policy that was announced in AMS, right?

[00:05:39] Speaker 02:
That is a simple question.

[00:05:41] Speaker 02:
Do you agree that that's the policy or not?

[00:05:43] Speaker 03:
I agree that's one of the considerations in AMS.

[00:05:45] Speaker 02:
I mean, it's an expressly stated policy in that opinion.

[00:05:50] Speaker 02:
Correct.

[00:05:50] Speaker 02:
How is that policy furthered in your case, where what happened was you had a licensee with a license agreement where your client agreed the licensee didn't have to mark.

[00:06:00] Speaker 02:
And then two years later, with what I think was no action by your client, the licensee stopped making the product.

[00:06:09] Speaker 02:
So there's no affirmative act complying with the statute, the marking statute.

[00:06:17] Speaker 03:
I'm going to address that in two points.

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I don't disagree with the facts of your scenario that you've laid out.

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But the two points I'll make are, one, Section 287 controls here.

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We're entitled to damages, pre-suit, unless you make, offer, or sell an unmarked product.

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And it's written in the sense of, are you making, offering, or selling?

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And then the second point.

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I'll make on that is from a policy perspective.

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If this is a question of what's the policy that ought to be applied, play out the scenario BRP proposes, which is if you ever put a product out into commerce that's unmarked and then stop selling.

[00:06:56] Speaker 03:
So for instance, a university has a series of patents.

[00:07:00] Speaker 03:
Someone wants to commercialize it.

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They embark on an effort with them.

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They don't mark.

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But then that goes bust shortly thereafter.

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Under the current posture, for that point forward, for the remainder of the term of that patent, there's no pre-suit damages for a knowing willful infringer.

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absent the university, figuring it out, tracking them down, and giving them actual notice.

[00:07:22] Speaker 03:
And I think the policy behind that... I don't understand your hypothetical.

[00:07:26] Speaker 01:
Was your hypothetical, and by the way, usually we're the ones giving the hypotheticals, but in any event, was your hypothetical that the university didn't mark or did mark initially?

[00:07:38] Speaker 03:
It had a licensee who did not mark.

[00:07:39] Speaker 01:
Didn't mark.

[00:07:40] Speaker 01:
Okay, so that's not different from this scenario.

[00:07:44] Speaker 01:
You have a licensee that didn't mark.

[00:07:46] Speaker 01:
So it's not a hypothetical.

[00:07:47] Speaker 01:
You had a license, except for the fact that you're not a university.

[00:07:49] Speaker 01:
You had a licensee that didn't mark, and then they stopped selling the product.

[00:07:53] Speaker 01:
So I don't understand your point.

[00:07:55] Speaker 03:
The point is whether it's, in this case, Arctic Cat or any individual inventor or university was my example.

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And I agree.

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The fact pattern isn't different.

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If there's an unmarked licensee sale that ceases to occur because they go out of business or it's

[00:08:13] Speaker 03:
10 products or 50 products, at that point the life of the patent under this view is encumbered, despite the language of 287.

[00:08:21] Speaker 01:
Well, then we say despite.

[00:08:23] Speaker 01:
I think the language of 287, which is what requires it, because 287 says, in the event of failure so to mark, no damages shall be recovered by the patentee in any action for infringement.

[00:08:36] Speaker 01:
Why would they say in any action for infringement?

[00:08:39] Speaker 01:
I mean, I think that they're saying, Patentee, once you purposefully cause confusion for the world by allowing a product to be sold that isn't marked but is nonetheless covered by the patent,

[00:08:54] Speaker 01:
You have an obligation thereafter to provide notice because you have infused confusion into the marketplace by doing what you've done.

[00:09:03] Speaker 01:
So now we're going to hold you to, you no longer get the benefit of strict liability for infringement.

[00:09:09] Speaker 01:
Now you're going to actually have to provide notice.

[00:09:12] Speaker 01:
What's that's to me, clearly what the statute was intended to do.

[00:09:16] Speaker 01:
So what, what, what I'm failing to understand how you think the language of the statute helps you.

[00:09:23] Speaker 01:
I understand how you think AMS helps you, but I don't understand how you think the language of the statute helps you.

[00:09:28] Speaker 03:
I think the language of the statute, when it's read as failure so to mark, is linked back to someone who is making, selling, or offering.

[00:09:37] Speaker 03:
So that's how I think the language of the statute helps.

[00:09:39] Speaker 03:
It's written not as, if you ever made, if you ever sold, you've triggered this.

[00:09:44] Speaker 02:
The problem is, in any action for infringement, it doesn't have a temporal limitation.

[00:09:50] Speaker 03:
Well, I think if you look at some of the earlier case law on this, the In Any Action for Infringement, there are times where it's a contributory act.

[00:09:56] Speaker 03:
There are times where it was a prior owner.

[00:09:59] Speaker 03:
And so I think you could read it to not be the manner in which Judge Moore read it.

[00:10:04] Speaker 03:
But taking it down to AMS, if that's the reading, then the idea of AMS and other cases that you can somehow cure, other than through actual notice, finds no support in the statutory language, which has to be the

[00:10:19] Speaker 03:
the touchstone of all of this marketing law.

[00:10:21] Speaker 03:
And we look at the genesis of what even AMS says.

[00:10:25] Speaker 03:
It's built off the idea of if you're putting unmarked products into the marketplace, you're misleading consumers.

[00:10:30] Speaker 03:
And if you're doing that, you can't get damages.

[00:10:32] Speaker 02:
Your point is that because AMS has an exception in it in order to promote the policy of encouraging marketing, that we should further that for a situation where a party also

[00:10:48] Speaker 02:
just ceases any selling of product.

[00:10:51] Speaker 03:
I don't agree that AMS creates an exception judicially created to the language of the statute.

[00:10:59] Speaker 03:
I think AMS is consistent with it on a couple points.

[00:11:02] Speaker 03:
The language of it is it looks to compliance with the statute.

[00:11:06] Speaker 03:
And in the description of when that date would be, the date isn't when you start marking under AMS.

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The date isn't even the date you start selling marked products.

[00:11:17] Speaker 03:
AMS repeatedly says,

[00:11:19] Speaker 03:
full compliance with the marking statute is when you stop shipping unmarked products and when it was no longer distributing unmarked products.

[00:11:27] Speaker 03:
So in AMS, when it was applied, AMS, of course, the fact pattern in that case, they were selling.

[00:11:33] Speaker 03:
But AMS says just selling is not even enough.

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You have to stop and no longer be selling unmarked products.

[00:11:39] Speaker 03:
There are two ways one can fall into compliance.

[00:11:43] Speaker 02:
But AMS doesn't say that you fall into compliance by ceasing sales.

[00:11:47] Speaker 02:
It doesn't say that, right?

[00:11:49] Speaker 02:
I mean, that's a different, your facts here are different than the facts in AMS.

[00:11:54] Speaker 02:
You must agree.

[00:11:55] Speaker 03:
I agree the facts are different because in AMS they continued to sell and they began to mark.

[00:11:59] Speaker 02:
Okay, can I ask you something?

[00:12:00] Speaker 02:
Yes.

[00:12:00] Speaker 02:
Your hypothetical that you mentioned where you basically mentioned your facts scenario here, but mentioned it with respect to a university.

[00:12:09] Speaker 02:
Do you think that was more sympathetic

[00:12:11] Speaker 02:
of a fact pattern in this case, because a university might not be looking at what its competitors are doing in the marketplace?

[00:12:19] Speaker 03:
No.

[00:12:20] Speaker 03:
I don't think it's more sympathetic, because we weren't in this marketplace either.

[00:12:23] Speaker 03:
Personal watercraft, Articat had exited that market like Honda ultimately exited that marketplace.

[00:12:29] Speaker 03:
The point is, if you have no ability to manufacture, that's wine railway, which is what Articat never manufactured in this window, any personal watercraft.

[00:12:38] Speaker 02:
But it doesn't matter, because they licensed Honda

[00:12:41] Speaker 02:
to do so.

[00:12:42] Speaker 02:
And moreover, they had a license with Honda that said, it's fine.

[00:12:46] Speaker 02:
You don't have to mark.

[00:12:48] Speaker 03:
And during that period.

[00:12:49] Speaker 02:
So that was an affirmative action to not comply with the statute, right?

[00:12:53] Speaker 03:
It wasn't an affirmative action not to comply.

[00:12:56] Speaker 03:
Honda wasn't required to sell.

[00:12:58] Speaker 03:
It wasn't as if Ardeket was putting out products themselves.

[00:13:02] Speaker 03:
But based to your question, I think if.

[00:13:07] Speaker 01:
But that doesn't matter because Honda was acting

[00:13:11] Speaker 01:
as the agent of Arctic Cat for these purposes.

[00:13:15] Speaker 03:
And the penalty for that, and what Arctic Cat would have suffered for that, absent the second issue in our brief, is the damages window from 2008 or 9 to 2013 is foreclosed because of that effort.

[00:13:30] Speaker 03:
So did they make a choice and enter into a license agreement at the time?

[00:13:34] Speaker 03:
Yes.

[00:13:35] Speaker 03:
And there's a price for that.

[00:13:36] Speaker 03:
And we're not saying there shouldn't be.

[00:13:38] Speaker 00:
Counsel, you're well into your rebuttal time.

[00:13:40] Speaker 00:
You can continue or save it.

[00:13:42] Speaker 03:
I'll save the rest.

[00:13:42] Speaker 03:
Thank you.

[00:13:43] Speaker 00:
Mr. Tompost.

[00:13:53] Speaker 04:
Morning your honor and may it please the court, Louis Tompros along with my colleagues Michelle Sandles and Jennifer John on behalf of Bombardier Recreational Products BRP.

[00:14:02] Speaker 04:
I will likewise just address the cessation of sales argument unless the court would like me to turn to Omstead.

[00:14:09] Speaker 04:
On the cessation of sales the text of the statute very much is dispositive.

[00:14:13] Speaker 04:
The text of the statute describes actions making offering for sale or selling and as a consequence of having taken those actions

[00:14:21] Speaker 04:
a party is out of compliance with the statute.

[00:14:23] Speaker 04:
That is, a party engages in a failure so to mark.

[00:14:27] Speaker 04:
The consequence of that failure is that in any action for infringement, as both Judge Moore and Judge Stoll have identified, and that must mean any subsequent action for infringement, any action for infringement.

[00:14:37] Speaker 00:
In other words, one doesn't snap back into compliance by ceasing to sell.

[00:14:44] Speaker 04:
Correct.

[00:14:45] Speaker 04:
That's exactly right.

[00:14:46] Speaker 01:
Are you in compliance if you've never sold?

[00:14:49] Speaker 04:
I think that the answer is yes.

[00:14:51] Speaker 01:
You are in compliance if you've never sold.

[00:14:53] Speaker 01:
So if you're in compliance if you've never sold and you don't think you snap back into compliance by ceasing to sell, what if you start, like in American medical, marking?

[00:15:04] Speaker 01:
Do you snap back into compliance by marking?

[00:15:06] Speaker 04:
The answer is under the statutory text, no.

[00:15:10] Speaker 04:
But under this court's precedent in American Medical, there is a judicially created curative act.

[00:15:15] Speaker 04:
I would call it an additional curative act rather than an exception.

[00:15:19] Speaker 04:
But I think American Medical very much is policy driven and very much is creating a judicial additional curative act.

[00:15:26] Speaker 04:
And in fact, American Medical says exactly that.

[00:15:29] Speaker 04:
It says, in light of the permissive wording of the present statute,

[00:15:33] Speaker 04:
and the policy of encouraging notice by marking, we construe Section 287A to preclude recovery.

[00:15:40] Speaker 01:
Yes, but they construe it.

[00:15:42] Speaker 01:
They don't say the statute says otherwise, but we're creating exception.

[00:15:47] Speaker 01:
Like, let me give you an example.

[00:15:49] Speaker 01:
In 101, doesn't 101 really cover everything under the sun made by man, right?

[00:15:55] Speaker 01:
Yes.

[00:15:55] Speaker 04:
I would say probably you could construe it that way, Your Honor.

[00:15:57] Speaker 01:
Yes.

[00:15:58] Speaker 01:
And then there are judicially created exceptions to 101.

[00:16:00] Speaker 04:
Correct.

[00:16:01] Speaker 01:
But those don't have any foundation in the statute.

[00:16:03] Speaker 04:
But I think that is why I don't want to take too strong of a position on 101.

[00:16:10] Speaker 04:
I will say that 101 does describe certain categories.

[00:16:13] Speaker 04:
And when you go back to the history of those judicially created exceptions, it certainly cites the statute and those categories and then explains that these categories, as construed, exclude this.

[00:16:23] Speaker 04:
And I think that's very much what American Medical was doing.

[00:16:27] Speaker 01:
So here's the problem.

[00:16:30] Speaker 01:
So I will tell you, I agree with your reading of the statute.

[00:16:35] Speaker 01:
It's my reading of the statute.

[00:16:37] Speaker 01:
The problem is, I'm having trouble reconciling that reading of the statute with the American medical case, because I'm a textualist, right?

[00:16:45] Speaker 01:
So I don't favor judicial exceptions.

[00:16:49] Speaker 01:
But what's worse, American medical seems to suggest that they're construing 287

[00:16:56] Speaker 01:
not that they're creating a judicial exception.

[00:16:59] Speaker 01:
And so that, to me, how do you explain their statement, which you read to us?

[00:17:06] Speaker 01:
We construe Section 287A to preclude recovery of damages only for any time prior to compliance.

[00:17:14] Speaker 01:
You agree you're complying when you're not selling.

[00:17:19] Speaker 01:
If you don't sell, you're complying.

[00:17:20] Speaker 04:
Correct.

[00:17:20] Speaker 04:
If you don't sell, you are not engaging in a failure so to mark.

[00:17:25] Speaker 04:
There is nothing to mark.

[00:17:26] Speaker 01:
If you don't sell, you're in compliance with the marking step.

[00:17:28] Speaker 04:
So if you don't sell, you have not engaged in a failure so to mark.

[00:17:33] Speaker 04:
That doesn't mean that you are in compliance in a later action for infringement.

[00:17:40] Speaker 04:
Once you have failed, once you have taken the action, once the action has happened, once you have failed to mark, there are consequences for that failure to mark.

[00:17:49] Speaker 04:
The consequences for that failure to mark are that in any subsequent action for infringement, there must be actual notice.

[00:17:57] Speaker 04:
The way that I read AMS, and I agree with you, AMS is tricky from a textualist perspective, given the way that they use the word construe.

[00:18:06] Speaker 04:
But I will say that what AMS has done is it has read the act of introducing into the market a new product that is marked.

[00:18:18] Speaker 04:
as an action that is a curative act, just like giving actual notice would be.

[00:18:23] Speaker 04:
And that does make policy sense.

[00:18:25] Speaker 04:
I agree from a purely textualist perspective.

[00:18:28] Speaker 01:
But it doesn't make policy sense.

[00:18:29] Speaker 01:
And the reason it doesn't make policy sense, if you flooded the market with hundreds of thousands of unmarked products,

[00:18:35] Speaker 01:
And under American medical, the day you start marking and selling, and maybe you've only sold five products as of that day, you're entitled to damages from that point forward.

[00:18:44] Speaker 01:
It takes off the table whether any actual infringer was informed.

[00:18:49] Speaker 01:
Maybe many infringers saw the hundreds of thousands of unmarked products and thought that they were, it was fair game to make those products.

[00:18:57] Speaker 01:
And the fact that you suddenly mysteriously on day one start making products and marking them,

[00:19:02] Speaker 01:
and trying to start the process of distributing them doesn't cure the misinformation for any given infringer necessarily.

[00:19:09] Speaker 04:
It doesn't necessarily, but it is a cure in the sense that if a person wanted to make a product and felt that they could do it freely without fear of a patent,

[00:19:21] Speaker 04:
That is, if a competitor wanted to make a product, what the marking statute assumes is they're going to go out and look at something and take a look at the product and say, hey, look, I can copy this.

[00:19:31] Speaker 04:
It looks really like a great invention, and it's totally unmarked.

[00:19:34] Speaker 04:
If, under the American medical line, if they went out and bought the latest version, which you could very well assume they would do as a policy matter, they would see, oh, it is marked.

[00:19:44] Speaker 04:
I can't do this.

[00:19:45] Speaker 04:
So I agree with you that it is an imperfect scene, but it's Congress's special.

[00:19:49] Speaker 01:
So to be clear, according to you,

[00:19:51] Speaker 01:
According to you, the day you're going to launch your product is the day you're going to go and look at the most current product on the market.

[00:20:00] Speaker 01:
I mean, if we're talking reality, wouldn't you acquire a product, look it over, and develop your own competing product, which would take some measure of time?

[00:20:10] Speaker 04:
That's true.

[00:20:11] Speaker 01:
So how would you learn about the, quote, cure?

[00:20:16] Speaker 01:
Wait, now I've put all this time and money into developing a product that I'm about to sell.

[00:20:21] Speaker 01:
And I did so because I bought 1,000 copies of it that were unmarked.

[00:20:26] Speaker 01:
And oh, the day before I launch or the day after I launch.

[00:20:29] Speaker 04:
I mean, I agree with you.

[00:20:31] Speaker 04:
It's imperfect.

[00:20:32] Speaker 04:
It is imperfect.

[00:20:33] Speaker 04:
But it's a policy balancing issue that the court was trying to do to create a more fair resolution than a pure, absolutely one could have sold unmarked product.

[00:20:43] Speaker 01:
Well, the court was trying to do it to incentivize marking, right?

[00:20:46] Speaker 01:
Correct.

[00:20:46] Speaker 01:
That's what they say.

[00:20:46] Speaker 01:
Because otherwise, if a patentee could never

[00:20:51] Speaker 01:
get damages once they fail to mark, they would never bother to mark.

[00:20:55] Speaker 01:
Because in fact, I guess theoretically, confusion would enter to their benefit, right?

[00:20:59] Speaker 01:
More people would invest at that point.

[00:21:01] Speaker 01:
in the products thereafter and start trying to compete with them, and they would have more people to go after.

[00:21:07] Speaker 01:
Absolutely.

[00:21:07] Speaker 04:
And that's very much the reasoning of American Medical as it stands.

[00:21:10] Speaker 04:
And that's precisely why.

[00:21:11] Speaker 04:
And I think that that's why the characterization of American Medical, whether you characterize it as construction, as the case actually did, or whether you characterize it as a judicially created curative act, I think those are reconcilable.

[00:21:23] Speaker 04:
The court was attempting to interpret the statute

[00:21:25] Speaker 04:
in a broader way than a pure, the cold language of the text might otherwise suggest and as a result created this incentivized additional cure for marketing.

[00:21:38] Speaker 04:
What that doesn't do is

[00:21:40] Speaker 04:
give a pass to someone who did exactly what Arctic Cat did, which is electively license the product, try to put in the original license agreement a requirement for marking, be told by their licensee, we don't want that, and then take it out.

[00:21:54] Speaker 04:
They very well could have insisted on including that marking requirement.

[00:21:58] Speaker 04:
They would have probably had to take less money for the license agreement.

[00:22:01] Speaker 04:
But that was a choice that they made to be out of compliance with the marking statute.

[00:22:07] Speaker 04:
Once they made that choice, the consequence

[00:22:09] Speaker 04:
is very clear from the statute.

[00:22:10] Speaker 01:
And in fact, there's no dispute that Arctic... But do you really think... I mean, the part that's bothering me is, do you really think, once they've made that choice, that if Honda gets out of the market, they're a licensee, and if Arctic Cat went on the market and sold two of these ski-do things, whatever they are, and it marks them both, that that's it, they're suddenly back in compliance now, and that from that point forward, they would be able to get

[00:22:35] Speaker 01:
damages without any notice?

[00:22:37] Speaker 04:
I have to call them personal watercraft, because skidoo is a trademark term of our client, VRP.

[00:22:41] Speaker 04:
But the personal watercraft they would sell, I think the answer is under the logic of American medical, it's possible.

[00:22:47] Speaker 04:
Though American medical does go on and make clear that it is tying this to what it calls substantially consistent and continuous marking.

[00:22:57] Speaker 04:
So there is some room there in American medical.

[00:23:00] Speaker 04:
It may be that selling one or two products is not enough.

[00:23:04] Speaker 04:
That's a question, I think, for this Court for another day.

[00:23:08] Speaker 04:
Here we have selling zero products, and we know that zero is not enough.

[00:23:11] Speaker 04:
There was no curative act whatsoever.

[00:23:19] Speaker 04:
I think I have addressed all of the Court's questions on this issue.

[00:23:21] Speaker 04:
I'm happy to address the Amstead issue if you would like, or I'm happy just to sit down if the Court does not have questions about it.

[00:23:28] Speaker 00:
It's the Amstead issue.

[00:23:28] Speaker 00:
The use of the word act in place of fact

[00:23:34] Speaker 04:
That's what it seems to be.

[00:23:36] Speaker 00:
The fact is an act.

[00:23:39] Speaker 00:
It's either a mocking or a notice.

[00:23:41] Speaker 04:
You're correct.

[00:23:41] Speaker 04:
And I would say just the key point on Amstead is let's give them full credit and say that there is indeed a typo in Amstead.

[00:23:50] Speaker 04:
Either the quotation mark was in the wrong place because an act is a fact or it was a typo with the missing F from an act to a fact.

[00:23:57] Speaker 04:
Umstead still perfectly correctly interpreted Dunlap.

[00:24:00] Speaker 04:
The very sentence that Umstead quotes and quotes the rest of, it makes clear whether it's act or fact, that it is an action to be taken by the patent owner.

[00:24:11] Speaker 04:
The sentence in Umstead is, each is an affirmative fact, that's the part that they quote, and is something to be done by him.

[00:24:24] Speaker 04:
Something to be done by him is the portion in Amstead that makes clear that this is not just about burdens, but is, in fact, an action to be done, something to be done by him.

[00:24:36] Speaker 04:
And him refers back to the prior sentences talking about the patent owner.

[00:24:39] Speaker 04:
So Amstead got it completely right, notwithstanding the typo.

[00:24:43] Speaker 04:
And Amstead is correctly interpreting Dunlap.

[00:24:46] Speaker 04:
There's no reason to change that, certainly no reason to go and bank to change that issue.

[00:24:52] Speaker 00:
Now, when there was a licensee and Honda was selling, there was an obligation to mark.

[00:25:03] Speaker 00:
And then Honda stopped selling, and there was no longer an obligation to mark, arguably.

[00:25:10] Speaker 00:
And if they licensed someone else, then there's an obligation again.

[00:25:15] Speaker 00:
So you have a back and forth inconsistent

[00:25:21] Speaker 00:
a varying situation with respect to the marking requirement, which makes no sense.

[00:25:31] Speaker 04:
Well, I think, Your Honor, what the statute is, if you go back to the beginning of the purpose of the statute, the purpose of the statute was very clearly to prohibit false marking and to encourage accurate marking.

[00:25:42] Speaker 04:
And when you take that into account, the statutory text

[00:25:46] Speaker 04:
Requiring marking only when there is only when when they're enduring a period in which there is making offering for sale or selling Right that that that makes sense you only have to mark something if you're actually making it or selling it But once you have failed to do so the consequences of that failure Extend beyond the period in which you're marking it and they extend to quote any act of infringement Thank You counsel, thank you

[00:26:14] Speaker 00:
Mr. Lacasio has some rebuttal time.

[00:26:20] Speaker 03:
Thank you.

[00:26:23] Speaker 03:
There is a way to reconcile AMS with the language 287.

[00:26:27] Speaker 03:
And it's simple, that cure is when you stop selling unmarked goods, because the statute specifically refers back to the making, selling, or offering of products.

[00:26:37] Speaker 03:
On the policy side of the house, I agree, AMS certainly does not declare it's creating some policy-based exception.

[00:26:46] Speaker 03:
It purports to construe the language.

[00:26:48] Speaker 03:
It doesn't actually parse the language, because if it did to find a cure provision that involves marking, there is none.

[00:26:56] Speaker 03:
The policy at issue that would apply here, just like it applies in AMS, is to incentivize stopping or cessation of putting unmarked products

[00:27:06] Speaker 03:
out into the marketplace.

[00:27:08] Speaker 03:
That itself

[00:27:09] Speaker 03:
would prevent innocent infringement, which is, at core, the base policy in Nike and going back to the Supreme Court's treatment of wine railway?

[00:27:19] Speaker 01:
I don't agree, because it seems to me once you've put a product covered by the patent on the market with no marking, Mr. Tom Pro is exactly right that if somebody was going to compete with that product, they would look at that product.

[00:27:35] Speaker 01:
So you stopping to sell it does nothing to

[00:27:37] Speaker 01:
the misinformation that you've already communicated to the world?

[00:27:41] Speaker 03:
Those products certainly are out there.

[00:27:43] Speaker 03:
AMS acknowledged that there are products like that that are going to be out there.

[00:27:47] Speaker 03:
But there's no analysis in AMS to the point of, I think, tens of thousands of unmarked goods that were in the marketplace.

[00:27:53] Speaker 03:
And if you don't read 287 to require the current making, selling, or offering of an unmarked product and coming into compliance once that stops, well, then you're in a scenario where your example, Judge Moore,

[00:28:07] Speaker 03:
If Articat, at the end of the Honda effort, had said, OK, this is the way the law is going to be considered, we would have spun up a manufacturing line, sold a handful of personal watercraft that were marked, and then we'd be all set going forward, despite the- We don't know if you'd be all set because of the language in American Medical that talks about continuous marking, right?

[00:28:26] Speaker 02:
Right, meaning- So that's not really your hypothetical.

[00:28:30] Speaker 02:
I don't think that our court has resolved that.

[00:28:32] Speaker 03:
I think the language of substantially and consistently should be the same standard here, of are you substantially and consistently no longer selling unmarked products.

[00:28:40] Speaker 02:
That's fine, but your hypothetical was selling five products.

[00:28:43] Speaker 03:
I think at that point you would no longer consistently, you wouldn't have, there's not two are or three aren't.

[00:28:48] Speaker 03:
I think at that point, there's not a numeric test.

[00:28:51] Speaker 03:
And once you've stopped, and AMS didn't say, how many have you now sold?

[00:28:55] Speaker 03:
They said, have you stopped selling the unmarked?

[00:28:57] Speaker 03:
Thank you.

[00:28:58] Speaker 00:
Thank you, counsel.

[00:28:59] Speaker 00:
Case is submitted.