Adrea v. Barnes & Noble: Court Holds That Adrea Is Precluded From Seeking Certain Past Damages for Failure to Mark

by Jeffer Mangels Butler & Mitchell LLP
Contact

Adrea, LLC ("Adrea") filed a patent infringement action against Barnes & Noble, Inc., barnesandnoble.com llc, and Nook Media LLC (collectively, "B&N"), which alleged that B&N's e-reader Nook infringed U.S. Patent Nos. 7,298,851 ("the '851 patent"), 7,299,501 ("the '501 patent"), and 7,620,703 ("the '703 patent"). As explained by the district court, "[t]he '851 patent describes systems and methods of securely distributing electronic books and other digital content to a portable viewing device, discloses an operations center for storing and transmitting electronic books and a device for viewing books, and further describes encryption processes for securing those electronic books. The '501 patent describes systems and methods of controlling access to electronic books, essentially a fixed-time rental system. The '703 patent describes devices and methods for retrieving information related to the usage context of devices and discusses embodiments where the device is configured to retrieve information about the usage context of the device without a web browser."

Both parties cross moved for summary judgment, including a motion by B&N to preclude certain past damages for failure to mark. The district court granted this summary judgment motion for failure to mark. "[T]he Court grants defendants summary judgment precluding damages incurred prior to March 29, 2012, for alleged infringement of the '851 patent. The Patent Act requires patentees to give notice to the public by marking the patented article (or packaging) with the identifying patent number. 35 U.S.C. § 287(a). Here, Adrea's licensees (such as Amazon) produced devices (such as the Kindle) that qualified as "patented articles," which should have been, but were not, so marked.

In response, plaintiff asserted that its licensees' products did not constitute "patented articles" with respect to the '501, '703, and '851 patents. The district court disagreed. "But it bases this assertion chiefly on the fact that in a prior litigation with Amazon, Adrea did not claim infringement of the '501 and '703 patents, because, Adrea asserts, there is no evidence that Amazon's licensed products infringe the '501 and '703 patents. However, in that very same litigation, Adrea took the position that Amazon infringed the '851 patent. Moreover, in the instant litigation, Adrea's own infringement expert Brian A. Berg states that it is likely impossible for an e-reader manufacturer to design around the '851 patent. Declaration of Yue-Han Chow, dated January 31, 2014 ("Chow Decl."), Exhibit ("Ex.") EE ¶ 62. Given all this, and given that it is the patentee who bears the burden in pleading and proving compliance with the marking statute. See, e.g., Maxwell v. J. Baker, Inc., 86 F.3d 1098, 1111 (Fed. Cir. 1996), the Court finds that Adrea has totally failed to provide adequate evidence from which a reasonable fact finder could find that Adrea complied with the marking statutes with respect to, at least, the '851 patent."

Adrea then contended that the date of notice occurred as early as October of 2010 when Adrea's Vice President of Licensing and Business Development, wrote to B&N and identified Adrea's "portfolio of over 300 patents related to eBooks," and stated that Adrea is "currently in litigation with Amazon related to the Discovery Networks eBook patents which Adrea now owns," one of which was the '851 Patent. Declaration of Micah Miller ("Miller Decl."), dated February 21, 2014, Ex. EE at 71-72.

The district court did not believe that such an email constituted notice. "Plaintiff would have the Court find that this email correspondence, which constituted the very first email ever sent to defendants, somehow satisfied the notification of infringement requirement because it referenced the Amazon litigation. However, "[f]or purposes of section 287(a), notice must be of 'the infringement,' not merely notice of the patent's existence or ownership. Actual notice requires the affirmative communication of a specific charge of infringement by a specific accused product or device." Amsted Indus. Inc. v. Buckeye Steel Castings Co., 24 F.3d 178, 187 (Fed. Cir. 1994). Adrea's communications with defendants in October of 2010 cannot reasonably constitute communication of a specific charge against a specific device, given that the communication mentioned no charge, no device, and indeed, no patent."

Instead, the district court concluded that a later notice, which included a substantive claim chart, actually notified B&N of infringement. "In contrast, on March 29, 2012, Adrea notified defendants' counsel of infringement via attachment of a detailed claim chart, noting both the relevant charges and the relevant devices. See Chow. Decl., Ex. HHH at ADREA016951 ('we have prepared sample claim illustrations regarding the Adrea portfolio and B&N devices for your review').

Accordingly, the district court determined that failure to mark precluded damages for the '851 patent prior to March 29, 2012, the date of actual notice.

Adrea, LLC v. Barnes & Noble, Inc., Case No. 13 Civ. 4137 (JSR) (S.D.N.Y. July 1, 2014)

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Jeffer Mangels Butler & Mitchell LLP | Attorney Advertising

Written by:

Jeffer Mangels Butler & Mitchell LLP
Contact
more
less

Jeffer Mangels Butler & Mitchell LLP on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Privacy Policy (Updated: October 8, 2015):
hide

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.

Security

JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at info@jdsupra.com. In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at: info@jdsupra.com.

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.