Jack L. Frolow v. Wilson Sporting Goods Co.


Docket No. 2012-1185
NEWMAN, CLEVENGER, MOORE
March 15, 2013

Brief summary: AIA requires “a competitive injury” and monetary damages are available where the marking was done “with the intent…of deceiving the public”.

Summary: Mr. Frolow (“Frolow”) appealed from USDC NJ grant of SJ to Wilson regarding breach of a License Agreement for “Licensed Article(s)” (“tennis rackets which are covered by one or more unexpired or otherwise valid claims” of Forlow’s US RE33372). Representative claim 20 relates to “[a] complete tennis racket” having particular weight distributions and “moment of intertia” values (e.g., >80 ounce inches squared). The DC concluded that 37/42 rackets did not meet the inertia requirement and rejected Forlow’s argument that Wilson’s patent marking of some of those 37 rackets raised a genuine issue of material fact. The other five were litigated and the court entered JMOL that those were not Licensed Articles. Wilson argued that Forlow had not shown that those rackets included a “head, handle, grip, and string netting” which the FC panel concluded “borders on frivolous” and “not subject to reasonable dispute”. But the FC panel still concluded that the DC did not abuse its discretion in entering JMOL. Forlow also attempted to introduce evidence that another 299 rackets infringed the patent but the DC granted SJ to Wilson and did not allow entry of that evidence. The FC panel found the SJ improper because Wilson had not provided any evidence regarding 217 of the rackets, had been paying royalties on the other 82 rackets, and the DC did not properly consider whether evidence regarding such rackets had been timely presented. Wilson also contended that payments on other models were “inadvertent…based on the mistaken belief” that those were covered by the claims. But the FC panel explained that, although previous case law indicated “a party that marks its product with a patent number is estopped from asserting that the product is not covered by the patent” (SmithKline, FC 1989), Congress enacted the AIA requires “a competitive injury” and monetary damages where the marking was done “with the intent…of deceiving the public”. However, the panel did find that the DC erred when it held that the marking evidence was irrelevant (e.g. “akin to a corporate officer admitting [infringement] in a letter or at a deposition”) and, on this point and others (e.g., expert declarations), decided that SJ was improper (e.g., evidence of marking is circumstantial evidence). Judge Clevenger provided additional views regarding the evidence of marking.

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