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A patentee need not make an unqualified charge of infringement to provide notice of potential infringement but instead can provide that notice through a letter in which the “clear inference” is that the patentee believes the patent is being infringed by the accused party’s products, the Federal Circuit has held. Samuel Gart v. Logitech Inc., No. 00-1088, Fed. Cir. (2001). A panel of the court reversed a grant of summary judgment by the U.S. District Court for the Central District of California on the issue of Samuel Gart’s satisfaction of the statutory notice requirement as to certain products sold by Logitech Inc. The Federal Circuit also vacated the grant of summary judgment, which found that there was no literal infringement by Logitech or infringement under the doctrine of equivalents. The patent at issue relates to an ergonomically shaped computer mouse. Gart granted a royalty-bearing license to a third company, Moustrak Inc., to manufacture computer mice under the patent, although Moustrak did not mark the items with the patent number, the court recounted. 1995 LETTER In April 1995, Gart sent a letter accompanied by the patent to Logitech, stating that he was the holder of the patent and that Logitech “might wish to have [its] patent counsel examine” the patent to determine whether a nonexclusive license was needed in light of the sales of a Logitech device known as the TRACKMAN VISTA. In September 1996, Gart sent another letter and another copy of the patent, saying that Logitech “may find the patent particularly interesting,” particularly two of its claims, relative to another Logictech device known as the TRACKMAN MARBLE. In January 1997, Gart sent a third letter explicitly stating that he was investigating whether the Vista and Marble devices infringed the patent. Each time, Logitech responded that it did not believe the patent covered its products. In 1998, Gart filed a complaint alleging that those devices and several others infringed. NO INFRINGEMENT The lower court found no infringement, construing claim language for an “angular medial surface” for supporting the middle, ring and small fingers as requiring the mouse housing to have an angular ledge that supports those fingers in an enclosed or folded position. On appeal, Logitech argued that the interpretation was proper, noting that all of the drawings show that the support structure has a ledge with an undercut area and arguing that Gart distinguished his invention from the prior art on grounds that those references do not describe an undercut area for those fingers. However, in its June 26 ruling, the Federal Circuit said the lower court erroneously relied on a portion of the specification that merely exemplifies one embodiment of the invention. “These drawings are not meant to represent ‘the’ invention or to limit the scope of coverage defined by the words used in the claims themselves,” the appeals panel said. Similarly, it found that though Gart distinguished his preferred embodiment from prior art references based on the undercut feature, he also noted that those references did not contain all of the ergonomic surface features of the invention and “did not in any way limit all of his claims to a controller with an angular medial ledge by the remarks distinguishing the prior art.” Further, the examiner never stated that the concave undercut area was the patentable difference over the prior art, and “we note that drawing inferences on the meaning of claim terms from an examiner’s silence is not a proper basis on which to construe a patent claim,” the court said. The court remanded to the lower court for a determination of whether the accused devices infringe under a construction that merely requires the angled surface support the fingers such that they are partially bent over it. DAMAGES Regarding the limitation of damages, the lower court found that because the licensed products were not marked, Logitech did not receive actual notice of the patent with regard to the Marble and Vista products until the 1997 letter. The lower court found that the 1995 letter was insufficient notice because it did not inform Logitech of the activity believed to be infringement and that the 1996 letter was insufficient because it did not indicate Gart’s belief that the Vista and Marble products were infringing. The Federal Circuit noted that under its precedent, informing the alleged infringer of the identity of the patent and of the activity that is believed to be an infringement, accompanied by a proposal to abate the infringement such as by a license complies with the actual notice requirement under 35 U.S. Code � 287(a). But that “does not mean the patentee must make an unqualified charge of infringement,” it said. The 1995 letter included a specific reference to certain claims of the patent and specific reference to the Vista device and raised the possibility of the need for a license, the court noted. “Thus, from an objective standpoint, the clear inference … is that Gart believed the TRACKMAN VISTA infringed claims 7 and 8 of the patent … whether or not this letter also invited Logitech to study the patent and to determine for itself whether there might be an infringement of the patent is irrelevant to the clear inference that Gart believed Logitech’s VISTA infringed claims 7 and 8,” the court said. REASONABLY APPRISED Further, the 1996 letter, in conjunction with the 1995 letter, reasonably apprised Logitech that Gart believed that making and selling of the Marble products infringed the patent, the court said in reversing the grant of summary judgment limiting damages. The Federal Circuit agreed with the District Court, though, that Logitech was not notified about certain other products until Gart filed suit in 1998. Gart is represented by Joseph R. Re of Knobbe, Martens, Olson & Bear in Newport Beach, Calif. Logitech is represented by William L. Anthony of Orrick Herrington & Sutcliffe in Menlo Park, Calif. �; Copyright 2001 Mealey Publications, Inc.

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