Arctic Cat Inc. v. Bombardier Recreational , 876 F.3d 1350 ( 2017 )

United States Court of Appeals
for the Federal Circuit
______________________
ARCTIC CAT INC.,
Plaintiff-Appellee
v.
BOMBARDIER RECREATIONAL PRODUCTS INC.,
BRP U.S. INC.,
Defendants-Appellants
______________________
2017-1475
______________________
Appeal from the United States District Court for the
Southern District of Florida in No. 0:14-cv-62369-BB,
Judge Beth Bloom.
______________________
Decided: December 7, 2017
______________________
JOHN A. DRAGSETH, Fish & Richardson P.C., Minne-
apolis, MN, argued for plaintiff-appellee. Also represented
by NICHOLAS STEPHAN BOEBEL, Populus Law LLC, Min-
neapolis, MN; NIALL ANDREW MACLEOD, AARON MYERS,
DIANE PETERSON, Kutak Rock LLP, Minneapolis, MN.
WILLIAM F. LEE, Wilmer Cutler Pickering Hale and
Dorr LLP, Boston, MA, argued for defendants-appellants.
Also represented by JENNIFER JASMINE JOHN, MICHELLE
LISZT SANDALS, LOUIS W. TOMPROS.
______________________
2 ARCTIC CAT INC. v. BOMBARDIER RECREATIONAL
Before MOORE, PLAGER, and STOLL, Circuit Judges.
MOORE, Circuit Judge.
Bombardier Recreational Products Inc. and BRP U.S.
Inc. (collectively, “BRP”) appeal from the United States
District Court for the Southern District of Florida’s denial
of judgment as a matter of law that the asserted claims of
U.S. Patent Nos. 6,568,969 (“’969 patent”) and 6,793,545
(“’545 patent”) would have been obvious, that Arctic Cat
Inc. (“Arctic Cat”) failed to mark patented products, that
the jury’s royalty award was based on improper expert
testimony, and that BRP did not willfully infringe the
asserted claims. BRP also appeals the district court’s
decision to treble damages and its award of an ongoing
royalty to Arctic Cat. We affirm the district court’s denial
of judgment as a matter of law as to obviousness, the
jury’s royalty rate, and willfulness. We affirm the district
court’s decision to treble damages and award an ongoing
royalty to Arctic Cat. We vacate the court’s denial of
judgment as a matter of law as to marking and remand
for further consideration limited to that issue.
BACKGROUND
The ’969 and ’545 patents disclose a thrust steering
system for personal watercraft (“PWC”) propelled by jet
stream. This type of watercraft is propelled by discharg-
ing water out of a discharge nozzle at the rear of the
watercraft. E.g., ’545 patent at 1:22–24. The rider con-
trols the thrust of water out of the discharge nozzle by
pressing a lever mounted on the steering handle. Id. at
1:38–40. A sufficient amount of thrust out of the steering
nozzle is required for these watercraft to steer properly
because decreasing the thrust of the water out of the
discharge nozzle decreases the steering capability of the
watercraft. Id. at 1:34–36, 1:51–55.
ARCTIC CAT INC. v. BOMBARDIER RECREATIONAL 3
Because steering capabilities are affected by the
amount of thrust applied, the patents explain that, to
avoid obstacles at high speed, riders should apply con-
stant pressure on the throttle lever while simultaneously
turning the steering handle away from the obstacle. Id.
at 1:59–61. This is counter-intuitive to inexperienced
riders who often slow down to turn out of the way. Id. at
1:55–65. In these situations a rider may not be able to
avoid the obstacle because steering capability has been
decreased. Id. at 1:65–67. The patents seek to overcome
this issue by automatically providing thrust when riders
turn the steering system. Id. at 2:11–27. Claim 15 of the
’545 patent is representative:
A watercraft including:
a steering mechanism;
a steering nozzle;
a thrust mechanism;
a lever adapted to allow an operator to
manually control thrust of said thrust
mechanism, said lever mounted on said
steering mechanism and biased toward an
idle position; and
a controlled thrust steering system for
controlling thrust of said thrust mecha-
nism independently of the operator;
wherein said controlled thrust steering
system activates said thrust mechanism
to provide a steerable thrust after said
lever is positioned other than to provide a
steerable thrust and after the steering
mechanism is positioned for turning said
watercraft.
Arctic Cat sued BRP for infringement of claims 13, 15,
17, 19, 25, and 30 of the ’545 patent and claims 15–17,
4 ARCTIC CAT INC. v. BOMBARDIER RECREATIONAL
and 19 of the ’969 patent, accusing the off-throttle thrust
reapplication system in several of BRP’s Sea-Doo PWC.
BRP refers to its proprietary off-throttle thrust reapplica-
tion system as Off-Throttle Assisted Steering (“OTAS”).
Before trial, BRP unsuccessfully moved for summary
judgment on several issues, including that Arctic Cat’s
sole licensee Honda failed to mark its products with the
licensed patent numbers.
At trial, the jury found both patents not invalid,
awarded a royalty consistent with Arctic Cat’s model
($102.54 per unit) to begin on October 16, 2008, and found
by clear and convincing evidence that BRP willfully
infringed the asserted claims. Based on the willfulness
verdict, the district court trebled damages, a decision it
further explained in a subsequent order.
After post-trial briefing, the district court denied
BRP’s renewed motion for judgment as a matter of law on
all issues. It granted Arctic Cat’s motion for an ongoing
royalty, awarding $205.08 per unit. BRP appeals the
district court’s denial of judgment as a matter of law on
validity, marking, damages, and willfulness, as well as its
grant of an ongoing royalty and decision to treble damag-
es. We have jurisdiction under 28 U.S.C. § 1295(a)(1).
DISCUSSION
In appeals of patent cases, we apply the law of the re-
gional circuit “to which district court appeals normally lie,
unless the issue pertains to or is unique to patent law.”
AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech,
Inc., 759 F.3d 1285, 1295 (Fed. Cir. 2014) (internal quota-
tion marks omitted). We review rulings on motions for
judgment as a matter of law under the law of the regional
circuit. Id. The Eleventh Circuit reviews the denial of
judgment as a matter of law de novo, viewing the evidence
in the light most favorable to the non-moving party.
Howard v. Walgreen Co., 605 F.3d 1239, 1242 (11th Cir.
2010). “The motion should be granted only when the
ARCTIC CAT INC. v. BOMBARDIER RECREATIONAL 5
plaintiff presents no legally sufficient evidentiary basis
for a reasonable jury to find for him on a material element
of his cause of action.” Id. (internal quotation marks
omitted).
I. Obviousness
Obviousness is a question of law based on underlying
facts. WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1326
(Fed. Cir. 2016). In KSR International Co. v. Teleflex Inc.,
550 U.S. 398, 419 (2007), the Supreme Court cautioned
that the obviousness analysis should not be reduced to
“rigid and mandatory formulas.” In Graham v. John
Deere Co., the Supreme Court set the framework for the
obviousness inquiry under 35 U.S.C. § 103:
Under § 103, the scope and content of the prior art
are to be determined; differences between the pri-
or art and the claims at issue are to be ascer-
tained; and the level of ordinary skill in the
pertinent art resolved. Against this background,
the obviousness or nonobviousness of the subject
matter is determined. Such secondary considera-
tions as commercial success, long felt but unsolved
needs, failure of others, etc., might be utilized to
give light to the circumstances surrounding the
origin of the subject matter sought to be patented.
383 U.S. 1, 17–18 (1966). The Graham factors—(1) the
scope and content of the prior art; (2) the differences
between the claims and the prior art; (3) the level of
ordinary skill in the art; and (4) objective considerations
of nonobviousness—are questions of fact reviewed for
substantial evidence. See Apple Inc. v. Samsung Elecs.
Co., 839 F.3d 1034, 1047–48 (Fed. Cir. 2016) (en banc); In
re Cyclobenzaprine Hydrochloride Extended–Release
Capsule Patent Litig., 676 F.3d 1063, 1068 (Fed. Cir.
2012). “When reviewing a denial of judgment as a matter
of law of obviousness, where there is a black box jury
verdict, as is the case here, we presume the jury resolved
6 ARCTIC CAT INC. v. BOMBARDIER RECREATIONAL
underlying factual disputes in favor of the verdict winner
and leave those presumed findings undisturbed if sup-
ported by substantial evidence.” WBIP, 829 F.3d at 1326.
We examine the legal conclusion de novo in light of those
facts. Id.
“A determination of whether a patent claim is invalid
as obvious under § 103 requires consideration of all four
Graham factors, and it is error to reach a conclusion of
obviousness until all of those factors are considered.”
Apple, 839 F.3d at 1048. This includes objective indicia of
nonobviousness, which must be considered in every case
where present. See, e.g., id. at 1048 & n.13; Millennium
Pharm., Inc. v. Sandoz Inc., 862 F.3d 1356, 1368–69 (Fed.
Cir. 2017); Merck & Cie v. Gnosis S.p.A., 808 F.3d 829,
837 (Fed. Cir. 2015); Bristol-Myers Squibb Co. v. Teva
Pharm. USA, Inc., 752 F.3d 967, 977 (Fed. Cir. 2014);
Transocean Offshore Deepwater Drilling, Inc. v. Maersk
Drilling USA, Inc., 699 F.3d 1340, 1349 (Fed. Cir. 2012).
“This requirement is in recognition of the fact that each of
the Graham factors helps inform the ultimate obviousness
determination.” Apple, 839 F.3d at 1048. Objective
indicia of nonobviousness are considered collectively with
the other Graham factors because they “serve to ‘guard
against slipping into use of hindsight,’ and to resist the
temptation to read into the prior art the teachings of the
invention in issue.” Graham, 383 U.S. at 36 (citation
omitted); see also KSR, 550 U.S. at 415 (inviting court “to
look at any secondary considerations that would prove
instructive”); Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d
1530, 1538–39 (Fed. Cir. 1983) (noting that evidence of
these factors must be considered with all the evidence and
“not just when the decisionmaker remains in doubt after
reviewing the art”).
Also a fact question is whether one of ordinary skill in
the art had a motivation to combine the prior art to
achieve the claimed combination. Apple, 839 F.3d at
1047–48, 1051; Wyers v. Master Lock Co., 616 F.3d 1231,
ARCTIC CAT INC. v. BOMBARDIER RECREATIONAL 7
1237–39 (Fed. Cir. 2010). “In KSR, the Supreme Court
criticized a rigid approach to determining obviousness
based on the disclosures of individual prior-art references,
with little recourse to the knowledge, creativity, and
common sense that an ordinarily skilled artisan would
have brought to bear when considering combinations or
modifications.” Randall Mfg. v. Rea, 733 F.3d 1355, 1362
(Fed. Cir. 2013). Therefore, a motivation to combine can
be found explicitly or implicitly in the prior art references
themselves, in market forces, in design incentives, or in
“any need or problem known in the field of endeavor at
the time of invention and addressed by the patent.” KSR,
550 U.S. at 420–21; accord Plantronics, Inc. v. Aliph, Inc.,
724 F.3d 1343, 1354 (Fed. Cir. 2013) (“[M]otivation to
combine may be found explicitly or implicitly in market
forces; design incentives; the ‘interrelated teachings of
multiple patents’; ‘any need or problem known in the field
of endeavor at the time of invention and addressed by the
patent’; and the background knowledge, creativity, and
common sense of the person of ordinary skill.” (quoting
Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324,
1328–29 (Fed. Cir. 2009))). “The court should consider a
range of real-world facts to determine ‘whether there was
an apparent reason to combine the known elements in the
fashion claimed by the patent at issue.’” Intercontinental
Great Brands LLC v. Kellogg N. Am. Co., 869 F.3d 1336,
1344 (Fed. Cir. 2017) (quoting KSR, 550 U.S. at 418).
Motivation to combine is a factual determination as to
whether there is a known reason a skilled artisan would
have been motivated to combine elements to arrive at a
claimed combination. This is not the ultimate legal
determination of whether the claimed combination would
have been obvious to the ordinary artisan—meaning that
it is possible that a reason or motivation may exist, but
nonetheless the ordinary artisan would not have found
the combination obvious.
8 ARCTIC CAT INC. v. BOMBARDIER RECREATIONAL
When a challenger shows that a “motivation” ex-
isted for a relevant skilled artisan to combine pri-
or art in the way claimed in the patent at issue,
such a showing commonly supports and leads
readily to the further, ultimate determination
that such an artisan, using ordinary creativity,
would actually have found the claimed invention
obvious. But the latter conclusion does not follow
automatically from the former finding, and addi-
tional evidence may prevent drawing it. . . . Even
with a motivation proved, the record may reveal
reasons that, after all, the court should not con-
clude that the combination would have been obvi-
ous . . . .
Intercontinental Great Brands, 869 F.3d at 1346–47.
Determining whether a claimed combination would
have been obvious to a skilled artisan requires considera-
tion of all the facts, no one of which is dispositive. The
prior art, skill, and knowledge of the ordinarily skilled
artisan may present a motivation or reason to combine.
The prior art, skill, and knowledge of an ordinary artisan
may also provide reasons not to combine which would
likewise be a question of fact. For example, a reference
may be found to teach away from a claimed combination,
also a question of fact. Allergan, Inc. v. Sandoz Inc., 796
F.3d 1293, 1305 (Fed. Cir. 2015). Prior art teaches away
when “a person of ordinary skill, upon reading the refer-
ence, would be discouraged from following the path set
out in the reference, or would be led in a direction diver-
gent from the path that was taken by the applicant.” Id.(citing In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). In
fact, the prior art could contain one reference suggesting a
combination and others critiquing or otherwise discourag-
ing the same. Even a single reference can include both
types of statements, and we have held that it is error to
fail to consider the entirety of the art. See, e.g., W.L. Gore
& Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1550 (Fed.
ARCTIC CAT INC. v. BOMBARDIER RECREATIONAL 9
Cir. 1983) (holding the district court erred by “considering
the references in less than their entireties, i.e., in disre-
garding disclosures in the references that diverge from
and teach away from the invention at hand”).
“The degree of teaching away will of course depend on
the particular facts; in general, a reference will teach
away if it suggests that the line of development flowing
from the reference’s disclosure is unlikely to be productive
of the result sought by the applicant.” Gurley, 27 F.3d at
553. As our precedent reflects, prior art need not explicit-
ly “teach away” to be relevant to the obviousness determi-
nation. Implicit in our discussion of the “degree” of
teaching away is an understanding that some references
may discourage more than others. Id.; see also
Meiresonne v. Google, Inc., 849 F.3d 1379, 1382 (Fed. Cir.
2017) (“A reference that ‘merely expresses a general
preference for an alternative invention but does not
criticize, discredit, or otherwise discourage investigation
into’ the claimed invention does not teach away.” (quoting
Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 738
(Fed. Cir. 2013))); DePuy Spine, Inc. v. Medtronic Sofamor
Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (affirm-
ing district court’s finding of teaching away where the
reference “expresse[d] concern for failure”); ATD Corp. v.
Lydall, Inc., 159 F.3d 534, 546 (Fed. Cir. 1998) (reversing
a judgment of invalidity in part because references “cau-
tioned against compressing the layers in a multilayer
insulator”). Indeed, the Supreme Court has long held
that “known disadvantages in old devices which would
naturally discourage the search for new inventions may
be taken into account in determining obviousness.”
United States v. Adams, 383 U.S. 39, 52 (1966) (emphasis
added).
Such understandings about reasons to combine or
countervailing reasons not to combine could come from
the knowledge, skill, and creativity of the ordinarily
skilled artisan. KSR, 550 U.S. at 418. We have held that
10 ARCTIC CAT INC. v. BOMBARDIER RECREATIONAL
where a party argues a skilled artisan would have been
motivated to combine references, it must show the artisan
“would have had a reasonable expectation of success from
doing so.” Cyclobenzaprine, 676 F.3d at 1068–69. Thus, if
an ordinarily skilled artisan would not believe that a
particular combination would have a reasonable expecta-
tion of “anticipated success,” the combination may not be
obvious. See KSR, 550 U.S. at 421. Whether a reasonable
expectation of success exists is yet another fact question.
PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186,
1196 (Fed. Cir. 2014). Thus, whether there exist reasons
a skilled artisan would combine or reasons a skilled
artisan would not combine are entirely factual determina-
tions to which deference must be given. Once all relevant
facts are found, the ultimate legal determination involves
the weighing of the fact findings to conclude whether the
claimed combination would have been obvious to an
ordinary artisan.
The jury, in this case, determined that BRP failed to
prove by clear and convincing evidence that the claims at
issue would have been obvious to a skilled artisan. BRP
moved for judgment as a matter of law on obviousness,
which the district court denied. On appeal, BRP argues
that the district court erred in refusing to grant it judg-
ment as a matter of law that the asserted claims would
have been obvious in light of the off-throttle thrust reap-
plication system in its 1997 Sea-Doo Challenger 1800 Jet
Boat (“Challenger”) and an existing PWC such as the
1998 Sea-Doo GTX RFI (“GTX”). There is no serious
dispute that the Challenger system and a PWC like the
GTX disclose all elements of most of the asserted claims. 1
1 BRP argues the only claims not disclosed in the
Challenger-PWC combination are dependent claims 25 of
the ’545 patent and 17 of the ’969 patent, but notes those
ARCTIC CAT INC. v. BOMBARDIER RECREATIONAL 11
BRP argues a reasonable jury could only have concluded
an ordinarily skilled artisan would have been motivated
to combine Challenger and a PWC, and that objective
indicia of nonobviousness confirm the asserted claims
would have been obvious. BRP disputes whether sub-
stantial evidence exists for particular jury fact findings
and the ultimate legal determination of obviousness.
BRP argues that “KSR compels a finding of obvious-
ness.” Appellant’s Br. 21. It argues that a conclusion of
obviousness must be reached because there was “a design
need or market pressure to solve a problem” and the
combination is one of “a finite number of identified, pre-
dictable solutions.” Id. at 24 (quoting KSR, 550 U.S. at
421).
In order to show a skilled artisan would have been
motivated to modify a PWC with Challenger’s off-throttle
thrust reapplication system, BRP principally relies on two
prior art reports written by the Society of Automotive
Engineers (“SAE”) that studied “personal watercraft as
test vehicles in order to evaluate and test emerging off
throttle steering concepts and devices.” J.A. 7530. Specif-
ically, the SAE Interim and Draft Final Reports suggested
using the Challenger system in a PWC to address the off-
throttle steering problem. The Draft Final Report con-
cluded if the Challenger system were applied to PWCs,
“performance characteristics would remain unchanged
when operated properly, but when off-throttle steering
and panic was sensed, then some additional steering
torque would automatically be restored.” J.A. 7577. BRP
also cites additional references that it argues provided
PWC manufacturers with overwhelming pressure to
implement solutions to off-throttle steering so that riders
could safely avoid obstacles. For example, the National
claims are disclosed by adding another patent to the
Challenger-PWC combination. Appellant’s Br. 23–24.
12 ARCTIC CAT INC. v. BOMBARDIER RECREATIONAL
Transportation Safety Board recommended PWC manu-
facturers “consider . . . off-throttle steering” “to improve
operator control and to help prevent personal injuries.”
J.A. 7944. The National Association of State Boating Law
Administrators similarly pressured the PWC industry to
address the “disproportionate number of accidents” at-
tributed to “‘off-throttle’ steering loss” in PWCs.
J.A. 9536. BRP also argues its own patent application,
Canadian Patent Appl. 2,207,938 (“Rheault ’938”), and
patent, U.S. Patent No. 6,336,833 (“Rheault ’833”), dis-
close a throttle reapplication system and suggest its use
in a PWC.
BRP argues a skilled artisan would have selected the
Challenger system because it was one of a finite number
of identified, predictable solutions to the problem of off-
throttle steering in PWCs. See KSR, 550 U.S. at 421. The
SAE Interim and Draft Final Reports identified the
Challenger’s throttle reapplication as one of four solutions
to the problem of off-throttle steering, along with rudders,
flaps, and scoops. The National Association of State
Boating Law Administrators also explained that jet boats
and PWCs are similar and off-throttle directional control
is a problem for both. Rheault ’833 disclosed that its
steer-responsive throttle “is applicable to single-engine
personal watercraft,” and Rheault ’938 states the Chal-
lenger jet boat’s thrust steering “is applicable to all types
of watercraft vehicles, including personal watercraft
vehicles.” J.A. 8942 at Abstract; J.A. 8920 at 8:15–17.
For these reasons, BRP argues a reasonable jury could
only have found a skilled artisan would have been moti-
vated to modify a PWC with Challenger’s off-throttle
thrust reapplication system, which would have combined
known elements to improve the system in the same way
and yield expected results.
We presume the jury found that an ordinarily skilled
artisan would not have been motivated to combine the
Challenger system with a PWC given its determination
ARCTIC CAT INC. v. BOMBARDIER RECREATIONAL 13
that the asserted claims are not invalid as obvious. If
such a fact finding is supported by substantial evidence,
we may not reverse it. In briefing and oral argument,
BRP devoted much of its argument to re-litigating its case
and its evidence rather than addressing the evidence that
could have supported the jury’s finding of no motivation to
combine. We do not reweigh the evidence and reach our
own factual determination regarding motivation. The
question for us on appeal is only whether substantial
evidence supports the jury’s presumed finding. See, e.g.,
Apple, 839 F.3d at 1052 (“Our job is not to review whether
Samsung’s losing position was also supported by substan-
tial evidence or to weigh the relative strength of Sam-
sung’s evidence against Apple’s evidence. We are limited
to determining whether there was substantial evidence
for the jury’s findings, on the entirety of the record.”). We
conclude that it does.
A reasonable jury could have found that a skilled arti-
san would not have been motivated to combine Challenger
and a PWC. The SAE reports identified the combination
of the Challenger system with a PWC to address the off-
throttle steering problem, tested the Challenger for that
purpose, and noted potential benefits of the combination.
E.g., J.A. 7577. But the reports did not stop there. The
Draft Final Report also stated that “additional new haz-
ards can be envisioned with such a steering system,”
including collisions “when inadvertent activation of re-
stored thrust might occur close to other boats, swimmers
or fixed objects.” Id. It explained that because these
hazards do not currently exist, “it is difficult to predict the
frequency with which such events may occur.” Id. Kevin
Breen, an author of the SAE reports and BRP’s expert at
trial, testified that automatic throttle reapplication with-
out “smart” engine controls could be dangerous.
J.A. 2361–62. The Draft Final Report likewise identified
potential problems with proposed “smart” engine controls,
which “would only become activated when needed and
14 ARCTIC CAT INC. v. BOMBARDIER RECREATIONAL
would not otherwise effect [sic] handling.” J.A. 7577. The
report noted some “obvious” problems with this technolo-
gy, such as the system performing in a manner contrary
to the operator’s intentions and the need for the system to
account for several variables “to be beneficial.” Id. As to
the thought process behind “smart” engine controls,
Mr. Breen testified that throttle reapplication “would be
useful only if they were smart or on demand, as opposed
to they just happened.” J.A. 2231–32. The claimed
invention, in contrast, “just happen[s]” when the rider
turns the steering mechanism. Id.; see, e.g., ’545 patent at
claim 1.
This evidence may not rise to the level of teaching
away. Nonetheless, in light of this record, the jury’s
determination that there was no motivation to make this
particular combination is supported by substantial evi-
dence. Evidence suggesting reasons to combine cannot be
viewed in a vacuum apart from evidence suggesting
reasons not to combine. In this case, the same reference
suggests a reason to combine, but also suggests reasons
that a skilled artisan would be discouraged from pursuing
such a combination. Under such circumstances, the jury’s
fact finding regarding motivation is supported by sub-
stantial evidence. Coupled with testimony confirming the
potential problems of automatic throttle reapplication and
suggesting an alternative approach might reduce those
same problems, J.A. 2230–32, a jury could find a skilled
artisan would not have been motivated to combine the
Challenger system with a PWC to arrive at the claimed
combination.
BRP argues that the SAE reports demonstrate market
pressure to solve a problem and a finite number of pre-
dictable solutions; in fact, BRP argues there were only
four articulated solutions. Appellant’s Br. 9. In KSR, the
Supreme Court explained when there is “market pressure
to solve a problem and there are a finite number of identi-
fied, predictable solutions, a person of ordinary skill has
ARCTIC CAT INC. v. BOMBARDIER RECREATIONAL 15
good reason to pursue the known options within his or her
technical grasp.” 550 U.S. at 421. While the SAE reports
identified the Challenger system, rudders, flaps, and
scoops as potential solutions to the problem of off-throttle
steering in PWCs, a reasonable jury could have deter-
mined that more than four solutions existed. At trial,
Arctic Cat’s expert and named inventor Fred Bernier
testified there were “various fins” and “a variety of things
tried over a course of a number of years,” including modi-
fying where the appendages attached to the PWC. J.A.
1219–21. BRP’s expert Richard Simard also testified BRP
built seventeen prototypes incorporating various ap-
proaches over the course of five years. J.A. 1951–57. An
internal BRP “brainstorming” session identified thirty-
two possible designs directed to off-throttle steering. J.A.
9454. And there is evidence that other potential solutions
to the off-throttle steering problem existed but were not
fully disclosed for confidentiality and other concerns. See,
e.g., J.A. 7532 (noting that some ideas offered in response
to SAE’s inquiry “have typically either not conveyed
sufficient information or have patent, propriety, or litiga-
tion concerns”).
A reasonable jury also could have found that modify-
ing a PWC with the Challenger system would not have
been a predictable solution yielding expected results.
Mr. Bernier testified “[i]t was quite a—quite a surprise,
actually” when his team realized the technology worked
on a prototype PWC. J.A. 1232. So did Mr. Simard, who
testified “[w]e were surprised” that Proto-14, BRP’s
prototype incorporating the Challenger system with a
PWC, was “pretty good in forward speed.” J.A. 1960. He
also admitted “what works on a jet boat may not work on
a personal watercraft.” Id. And although Arctic Cat’s
expert Dr. Bernard Cuzzillo testified the Challenger
system reapplies some throttle when steering, he also
testified he did not know whether the Challenger system
was “adequate to qualify as a steerable thrust” and that it
16 ARCTIC CAT INC. v. BOMBARDIER RECREATIONAL
would “not necessarily” comprise a “controlled-thrust
steering system.” J.A. 2876–78. This testimony along
with the SAE reports’ own cautions about potential haz-
ards of the combination provide substantial evidence upon
which a jury could conclude that a skilled artisan would
not have “anticipated success” with the claimed combina-
tion.
A. Objective Considerations
At trial, Arctic Cat argued the claimed invention re-
ceived industry praise and satisfied a long-felt need. We
presume the jury found in favor of Arctic Cat as to each of
these objective considerations. We will not reverse these
presumed findings if supported by substantial evidence.
1. Industry Praise
“Evidence that the industry praised a claimed inven-
tion or a product that embodies the patent claims weighs
against an assertion that the same claimed invention
would have been obvious.” Apple, 839 F.3d at 1053;
accord Institut Pasteur & Universite Pierre Et Marie Curie
v. Focarino, 738 F.3d 1337, 1347 (Fed. Cir. 2013)
(“[I]ndustry praise . . . provides probative and cogent
evidence that one of ordinary skill in the art would not
have reasonably expected [the claimed invention].”).
At trial, Arctic Cat introduced a press release it is-
sued after Captain Michael Holmes, chief of the U.S.
Coast Guard Office of Boating Safety, rode and evaluated
an Arctic Cat prototype incorporating the claimed inven-
tion. J.A. 9537. After his test ride, Captain Holmes
stated: “I like it. It’s one of the most impressive innova-
tions I’ve seen all year.” J.A. 9537. He continued, “What
I saw today will help us move forward in developing a
realistic, achievable standard for a control and safety
issue that we need to address. I’m particularly encour-
aged that this amount of quick-turn control can be
achieved without some of the negative handling or safety
ARCTIC CAT INC. v. BOMBARDIER RECREATIONAL 17
ramifications that seem to accompany fins or rudders.”
J.A. 9537. And Mr. Bernier testified others at the proto-
type demonstration “were very impressed with the system
and how it worked” and said “it was the first time they
had seen something that had a viable chance of resolving
the off-throttle steering issues.” J.A. 1237.
BRP argues that substantial evidence does not sup-
port the jury’s presumed factual finding that the claimed
invention received industry praise because “praise from a
Coast Guard official in Arctic Cat’s own press release” is a
“hearsay statement [that] cannot overcome persuasive
evidence that the claimed technology described the same
approach as BRP’s system.” Appellant’s Br. 35–36 (citing
J.A. 7828; J.A. 7871; In re Cree, Inc., 818 F.3d 694, 702
(Fed. Cir. 2016)). We disagree for at least two reasons.
First, Arctic Cat contends—and BRP does not contest—
that BRP failed to object to this evidence as hearsay at
trial, so the jury was entitled to credit the statement.
Appellee’s Br. 12. Second, that Captain Holmes’ state-
ments appear in Arctic Cat’s press release goes to eviden-
tiary weight. Captain Holmes’ statements and
Mr. Bernier’s testimony constitute substantial evidence to
support the jury’s presumed factual finding that the
claimed invention received praise from the industry. This
evidence of industry recognition of the significance and
value of the claimed invention weighs in favor of nonobvi-
ousness.
2. Long-Felt Need
“Evidence of a long felt but unresolved need tends to
show non-obviousness because it is reasonable to infer
that the need would have not persisted had the solution
been obvious.” WBIP, 829 F.3d at 1332; see also Iron Grip
Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed.
Cir. 2004) (“Absent a showing of long-felt need or the
failure of others, the mere passage of time without the
claimed invention is not evidence of nonobviousness.”).
18 ARCTIC CAT INC. v. BOMBARDIER RECREATIONAL
BRP does not dispute there was a long-felt need in the
area of off-throttle steering and PWC rider safety. Ra-
ther, it argues Arctic Cat’s invention did not satisfy this
long-felt need because the Challenger system already
solved off-throttle steering. Substantial evidence sup-
ports the jury’s presumed finding that the claimed inven-
tion solved the problem of off-throttle steering. The SAE
Draft Final Report noted “an effort has been ongoing to
develop this [off-throttle steering] technology for more
than three decades with little commercially viable suc-
cess.” J.A. 7575. The report summarized test results of
the Challenger system for its off-throttle steering capabili-
ties and offered potential pros and cons of its use in a
PWC; it did not summarize test results of a Challenger-
PWC combination. And Mr. Breen conceded at trial that
despite a number of people working to address the off-
throttle steering problem, there “was not a publicly avail-
able personal watercraft with throttle reapplication”
before Arctic Cat’s invention. Appellee’s Br. 41 (citing
J.A. 2337). This is substantial evidence to support the
jury’s fact finding about long-felt need. This long-felt
need weighs in favor of the nonobviousness of the claimed
invention.
B. Legal Conclusion
We consider whether the claimed invention would
have been obvious de novo, in light of the jury’s underly-
ing factual findings. WBIP, 829 F.3d at 1326. The evi-
dence suggesting a motivation to combine is tempered by
the evidence suggesting the Challenger-PWC combination
could have serious problems, that “smart” engine controls
might better address those problems, that the combina-
tion was not one of only four possible solutions, and that
the combination did not yield expected results. We cannot
under these circumstances reverse any of the jury’s pre-
sumed fact findings regarding motivation to combine or
expectations of success. In light of these fact findings
along with the objective indicia of nonobviousness, which
ARCTIC CAT INC. v. BOMBARDIER RECREATIONAL 19
also weigh in favor of nonobviousness, we see no error in
the conclusion that BRP failed to prove that the asserted
claims would have been obvious by clear and convincing
evidence.
II. Marking
Pursuant to 35 U.S.C. § 287(a), a patentee who makes
or sells a patented article must mark his articles or notify
infringers of his patent in order to recover damages. See
Dunlap v. Schofield, 152 U.S. 244, 248 (1894). Sec-
tion 287(a) provides:
Patentees, and persons making, offering for sale,
or selling within the United States any patented
article for or under them, or importing any pa-
tented article into the United States, may give no-
tice to the public that the same is patented, either
by fixing thereon the word “patent” or the abbre-
viation “pat.”, together with the number of the pa-
tent . . . . In the event of failure so to mark, no
damages shall be recovered by the patentee in any
action for infringement, except on proof that the
infringer was notified of the infringement and
continued to infringe thereafter, in which event
damages may be recovered only for infringement
occurring after such notice.
The patentee bears the burden of pleading and prov-
ing he complied with § 287(a)’s marking requirement.
Maxwell v. J. Baker, Inc., 86 F.3d 1098, 1111 (Fed. Cir.
1996); see also Dunlap, 152 U.S. at 248 (“[T]he duty of
alleging and the burden of proving either [actual or con-
structive notice] is upon the [patentee].”). Whether a
patentee’s articles have been marked “is a matter peculi-
arly within his own knowledge . . . .” Dunlap, 152 U.S. at
248. If a patentee who makes, sells, offers for sale, or
imports his patented articles has not “given notice of his
right” by marking his articles pursuant to the marking
statute, he is not entitled to damages before the date of
20 ARCTIC CAT INC. v. BOMBARDIER RECREATIONAL
actual notice. Id.; see also 35 U.S.C. § 287 (noting the
patentee’s “failure so to mark” limits his damages to those
incurred after actual notice). Section 287 is thus a limita-
tion on damages, and not an affirmative defense.
Motorola, Inc. v. United States, 729 F.2d 765, 770 (Fed.
Cir. 1984). Compliance with § 287 is a question of fact.
Maxwell, 86 F.3d at 1111.
A patentee’s licensees must also comply with § 287,
because the statute extends to “persons making or selling
any patented article for or under [the patentee].” Id.
(quoting § 287(a)). Recognizing that it may be difficult for
a patentee to ensure his licensees’ compliance with the
marking provisions, we have held that where third par-
ties are involved, courts may consider “whether the pa-
tentee made reasonable efforts to ensure compliance with
the marking requirements.” Id. at 1111–12. This “rule of
reason” inquiry is “consistent with the purpose of the
constructive notice provision—to encourage patentees to
mark their products in order to provide notice to the
public of the existence of the patent and to prevent inno-
cent infringement.” Id. at 1112.
We have explained that the marking statute serves
three related purposes: (1) helping to avoid innocent
infringement; (2) encouraging patentees to give public
notice that the article is patented; and (3) aiding the
public to identify whether an article is patented. Nike,
Inc. v. Wal-Mart Stores, Inc., 138 F.3d 1437, 1443 (Fed.
Cir. 1998) (collecting authorities). Although patent in-
fringement is a strict liability tort, a patentee who sells or
permits the sale of unmarked, patented articles misleads
others into believing they are free to make and sell an
article actually covered by patent. Marking helps reduce
innocent infringement by notifying the public that the
article is patented. See Motorola, 729 F.2d at 772.
The parties dispute whether Arctic Cat’s licensee’s
failure to mark certain products limits Arctic Cat’s dam-
ARCTIC CAT INC. v. BOMBARDIER RECREATIONAL 21
ages. In February 2002, Arctic Cat entered into a fully
paid-up license agreement with Honda in which Honda
paid $315,000 for licenses to two earlier-issued Arctic Cat
patents and any later patents “that patently cover Arctic
Cat’s Controlled Thrust Steering methods, systems and
developments.” J.A. 3540 ¶ EE; J.A. 7830–31 §§ 1.01,
3.01. The agreement includes the patents-in-suit.
J.A. 3540 ¶ EE. The agreement specifically states Honda
“shall have no obligation or requirement to mark” its
licensed products. J.A. 7833 § 6.01. Honda sold PWCs in
the United States through 2009 and Arctic Cat made no
effort to ensure Honda marked those PWCs. J.A. 3540–41
¶¶ II, JJ. At trial, the jury found damages began on
October 16, 2008, before BRP received actual notice of
infringement. J.A. 94.
There is no dispute that the patentee bears the bur-
den of pleading and proving he complied with § 287(a).
Maxwell, 86 F.3d at 1111. There is no dispute that Arctic
Cat did not require Honda to mark; in fact, it expressly
authorized Honda to sell licensed products without mark-
ing. And it is likewise undisputed that Honda did not
mark any of its PWCs with the patent numbers at issue.
Thus, if Honda sold PWC products covered by the patents
at issue, Arctic Cat has failed to satisfy the marking
requirements. The only dispute between the parties is
whether any of the Honda PWCs was covered by the
patent claims at issue. BRP explains the issue on appeal:
“The only area of dispute between the parties was wheth-
er the PWCs that Honda sold were patented articles that
were required to be marked. Which party bears the
burden on this issue is a question of first impression for
this Court and has split district courts.” Appellant’s Br.
37.
On summary judgment, the district court in this case
held that the burden of proving compliance with marking
is placed on the defendant and that “the burden of pro-
duction does not shift to the plaintiff to show compliance
22 ARCTIC CAT INC. v. BOMBARDIER RECREATIONAL
with a marking statute.” J.A. 58–59. And again in the
denial of judgment as a matter of law, the district court
repeated its belief that “BRP bears the burden of proving
the defen[se] of marking.” J.A. 75. This was a legal error.
The burden of proving compliance with marking is and at
all times remains on the patentee. As in this case where
BRP identified fourteen unmarked Honda PWCs, which it
argued fell within the patent claims, it was the patentee’s
burden to establish compliance with the marking stat-
ute—that these products did not fall within the patent
claims.
There is a split among the district courts regarding
which party must initially identify the products which it
believes the patentee failed to mark. Some courts require
the alleged infringer to initially identify products it be-
lieves practice the asserted patents. See, e.g., Fortinet,
Inc. v. Sophos, Inc., No. 13-CV-05831-EMC, 2015 WL
5971585, at *4–5 (N.D. Cal. Oct. 14, 2015). These courts
reason that “[a]bsent guidance from the other side as to
which specific products are alleged to have been sold in
contravention of the marking requirement, a patent-
ee . . . is left to guess exactly what it must prove up to
establish compliance with the marking statute.” Sealant
Sys. Int’l, Inc. v. TEK Glob. S.R.L., No. 5:11-CV-00774-
PSG, 2014 WL 1008183, at *31 (N.D. Cal. Mar. 7, 2014),
rev’d in part on other grounds, 616 F. App’x 987 (Fed. Cir.
2015) (placing the initial burden on the alleged infringer
to put the patentee “on notice” of unmarked products and
finding it failed to meet its burden because of conflicting
expert testimony and failure to produce admissible evi-
dence showing a patented product was sold); Fortinet,
2015 WL 5971585, at *5 (adopting a “burden of production
on [the alleged infringer] to identify the [unmarked prod-
ucts] it believes practice the inventions claimed” and
granting partial summary judgment in favor of the al-
leged infringer where its expert report was “not too con-
clusory”); Unwired Planet, LLC v. Apple Inc., No. 13-CV-
ARCTIC CAT INC. v. BOMBARDIER RECREATIONAL 23
04134-VC, 2017 WL 1175379, at *5 (N.D. Cal. Feb. 14,
2017) (holding “[a]t most, the infringer bears some initial
burden of plausibly identifying products subject to the
marking requirement” and granting summary judgment
in favor of the alleged infringer where it submitted a
declaration and attached exhibits identifying particular
products). This district court agreed with that approach,
concluding that if the defendant did not at least have the
burden of identifying unmarked products it believed fell
within the claims, “a defendant’s general allegations could
easily instigate a fishing expedition for the patentee.”
J.A. 59.
Other courts have required the patentee prove that
none of its unmarked goods practice the asserted claims.
See, e.g., Adrea, LLC v. Barnes & Noble, Inc., No. 13-CV-
4137 JSR, 2015 WL 4610465, at *1–2 (S.D.N.Y. July 24,
2015). Courts adopting this approach reason the patentee
is in a better position to know whether his goods practice
the patents-in-suit. Id. at *2 (citing Dunlap, 152 U.S. at
248); see also, e.g., DR Sys., Inc. v. Eastman Kodak Co.,
No. 08-CV-0669H(BLM), 2009 WL 2632685, at *4 (S.D.
Cal. Aug. 24, 2009) (“Just as a patentee’s compliance with
the marking statute is a matter particularly within its
knowledge, so are the details of its own product line.”);
Kimberly-Clark Worldwide, Inc. v. First Quality Baby
Prods., LLC, No. 1:09-CV-1685, 2013 WL 1821593, at *3
(M.D. Pa. Apr. 30, 2013).
We hold an alleged infringer who challenges the pa-
tentee’s compliance with § 287 bears an initial burden of
production to articulate the products it believes are un-
marked “patented articles” subject to § 287. To be clear,
this is a low bar. The alleged infringer need only put the
patentee on notice that he or his authorized licensees sold
specific unmarked products which the alleged infringer
believes practice the patent. The alleged infringer’s
burden is a burden of production, not one of persuasion or
proof. Without some notice of what market products BRP
24 ARCTIC CAT INC. v. BOMBARDIER RECREATIONAL
believes required marking, Arctic Cat’s universe of prod-
ucts for which it would have to establish compliance
would be unbounded. See Fortinet, 2015 WL 5971585, at
*5 (“Without some notice of what marketed products may
practice the invention, AMI’s universe of products for
which it would have to establish compliance with, or
inapplicability of, the marking statute would be unbound-
ed.” (quoting Sealant, 2014 WL 1008183, at *31)). Per-
mitting infringers to allege failure to mark without
identifying any products could lead to a large scale fishing
expedition and gamesmanship. Once the alleged infringer
meets its burden of production, however, the patentee
bears the burden to prove the products identified do not
practice the patented invention.
We do not here determine the minimum showing
needed to meet the initial burden of production, but we
hold in this case it was satisfied by BRP. At trial BRP
introduced the licensing agreement between Honda and
Arctic Cat showing Honda’s license to practice “Arctic Cat
patents that patently cover Arctic Cat’s Controlled Thrust
Steering methods, systems and developments.” J.A. 7830
§ 1.01. BRP identified fourteen Honda PWCs from three
versions of its Aquatrax series sold between 2002 and
2009. J.A. 3540–41 ¶ II. BRP’s expert testified that he
“review[ed] information regarding those models” and
believed if BRP’s OTAS system practiced the patents, so
did Honda’s throttle reapplication system in the Aquatrax
PWCs. J.A. 2447–49; J.A. 2482. This was sufficient to
satisfy BRP’s initial burden of production.
At summary judgment, the district court found BRP
identified Honda PWCs and “presented an array of evi-
dence” alleging they practice the asserted patents, but
concluded BRP failed to meet its burden because it did not
conduct a claim analysis of the products. J.A. 59–61. It
later denied BRP’s motion for judgment as a matter of law
because BRP “failed as a matter of law to meet its burden
in proving that Honda sold patented articles.” J.A. 75
ARCTIC CAT INC. v. BOMBARDIER RECREATIONAL 25
(emphasis added). The district court erred when it placed
this burden on the alleged infringer. BRP shouldered
only a burden of production to identify unmarked prod-
ucts that it alleges should have been marked. It was
Arctic Cat’s burden to prove those products—once identi-
fied—do not practice the patent-at-issue. The alleged
infringer need not produce claim charts to meet its initial
burden of identifying products. It is the patentee who
bears the burden of proving that it satisfied the marking
requirements and thus the patentee who would have to
prove that the unmarked products identified by the
infringer do not fall within the patent claims. The district
court erred in placing this burden upon BRP and thus we
vacate and remand on marking.
Because the district court adopted this legal approach
at the summary judgment stage, it made clear to the
parties that it would be BRP’s burden to prove that the
unmarked products fell within the patent claims. Arctic
Cat, therefore, did not have a fair opportunity to develop
its case regarding the Honda PWCs at trial. Because
Arctic Cat was not on notice regarding its burden, and in
fact labored under the assumption that BRP had the
burden of proof, reversal would be improper. We thus
vacate the district court’s judgment as to marking and
remand so that Arctic Cat has an opportunity to proffer
evidence related to the identified Honda PWCs. 2 Because
we conclude BRP has met its initial burden of production,
Arctic Cat must now establish the Honda PWCs do not
practice the asserted patents to recover damages under
the constructive notice provisions of § 287.
2 We leave it to the district court to determine if
additional discovery on this issue is appropriate in light of
our ruling.
26 ARCTIC CAT INC. v. BOMBARDIER RECREATIONAL
III. Damages
BRP appeals the district court’s denial of judgment as
a matter of law that the jury’s royalty award of $102.54
per infringing unit should be vacated based on inadmissi-
ble expert testimony. Prior to trial, the district court
denied BRP’s Daubert motion to exclude this testimony of
Arctic Cat’s expert, Walter Bratic, regarding the calcula-
tion of a reasonable royalty rate. J.A. 24–28. BRP also
appeals the district court’s grant of an ongoing royalty of
$205.08 per infringing unit. J.A. 137–44.
A. Reasonable Royalty Rate
The Eleventh Circuit reviews Daubert decisions for
abuse of discretion. Quiet Tech. DC-8, Inc. v. Hurel-
Dubois UK Ltd., 326 F.3d 1333, 1339–40 (11th Cir. 2003).
“We review the jury’s determination of the amount of
damages, an issue of fact, for substantial evidence.”
Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1310
(Fed. Cir. 2009).
BRP raises the same arguments to exclude the testi-
mony of Mr. Bratic rejected by the district court. BRP
argues Mr. Bratic erroneously used BRP’s later-developed
“Intelligent Brake and Reverse” (“iBR”) system as a value
benchmark for BRP’s allegedly infringing and earlier-
developed OTAS system. It argues that Mr. Bratic failed
to establish that iBR is sufficiently comparable to the
technology and value of OTAS, and thus his benchmark
cannot serve as the basis for the jury’s royalty award.
The district court found that Mr. Bratic properly relied on
the opinion of another Arctic Cat expert, Dr. Cuzzillo, who
opined that OTAS and iBR are of comparable technologi-
cal and safety value. J.A. 24–26. The district court noted
that Dr. Cuzzillo’s opinion was not vague or conclusory
but based on “his own investigation of the OTAS and iBR
brake technologies, how they work, and the benefits
provided as well as discussions with [another expert and
review of his report].” J.A. 25–26. To the extent BRP
ARCTIC CAT INC. v. BOMBARDIER RECREATIONAL 27
found the comparison problematic, the district court
suggested “that is a line of attack more appropriately
addressed through cross-examination.” J.A. 26. BRP was
given this chance at trial. E.g., J.A. 1738–43.
We agree with the district court’s analysis and con-
clude it did not abuse its discretion in admitting
Mr. Bratic’s damages testimony. Cf. Apple Inc. v.
Motorola, Inc., 757 F.3d 1286, 1316–20 (Fed. Cir. 2014)
(factually attacking the accuracy of a benchmark goes to
evidentiary weight, not admissibility), overruled on other
grounds by Williamson v. Citrix Online, LLC, 792 F.3d
1339 (Fed. Cir. 2015) (en banc). Because BRP does not
argue the royalty rate is not otherwise supported by
substantial evidence, 3 we affirm the district court’s denial
of judgment as a matter of law as to the jury’s reasonable
royalty rate.
B. Ongoing Royalty Rate
We review for abuse of discretion a district court’s
grant of an ongoing royalty. Whitserve, LLC v. Computer
Packages, Inc., 694 F.3d 10, 35 (Fed. Cir. 2012). Ongoing
royalties may be based on a post-judgment hypothetical
negotiation using the Georgia-Pacific factors. Fresenius
USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1303 (Fed.
Cir. 2009) (citing Georgia-Pac. Corp. v. U.S. Plywood
Corp., 318 F. Supp. 1116, 1120 (S.D.N.Y. 1970)).
3 BRP states in a footnote that even if this testimo-
ny were admissible, it is irrelevant and thus Arctic Cat
failed to provide sufficient evidence to support the jury’s
award. Appellant’s Br. 46 n.3. This single sentence,
devoid of any analysis, is insufficient for BRP to meet its
burden on appeal, and we nevertheless conclude
Mr. Bratic’s testimony constitutes substantial evidence
supporting the jury’s reasonable royalty award.
28 ARCTIC CAT INC. v. BOMBARDIER RECREATIONAL
The district court did not abuse its discretion in
awarding an ongoing royalty rate. The district court
weighed the relevant Georgia-Pacific factors and deter-
mined that Arctic Cat is entitled to an ongoing royalty
amount higher than the jury rate. J.A. 137–42. While
BRP argues the rate impermissibly covers its profits, we
have affirmed rates at or near the infringer’s alleged
profit margin. See, e.g., Golight, Inc. v. Wal-Mart Stores,
Inc., 355 F.3d 1327, 1338–39 (Fed. Cir. 2004) (affirming
district court’s grant of a reasonable royalty the defendant
argued covered its profits); Bos. Sci. Corp. v. Cordis Corp.,
497 F. App’x 69 (Fed. Cir. 2013) (same for ongoing royal-
ties); cf. Douglas Dynamics, LLC v. Buyers Prods. Co., 717
F.3d 1336, 1346 (Fed. Cir. 2013) (vacating and remanding
a royalty award where the district court “clearly erred by
limiting the ongoing royalty rate based on [the defend-
ant’s] profit margins”). And we have explained that
“[o]nce a judgment of validity and infringement has been
entered . . . the calculus is markedly different because
different economic factors are involved.” Amado v. Mi-
crosoft Corp., 517 F.3d 1353, 1362 (Fed. Cir. 2008); see
also Paice LLC v. Toyota Motor Corp., 504 F.3d 1293,
1317 (Fed. Cir. 2007) (Rader, J., concurring) (“[P]re-suit
and post-judgment acts of infringement are distinct, and
may warrant different royalty rates given the change in
the parties’ legal relationship and other factors.”). We see
no abuse of discretion in the district court’s analysis and
affirm its order awarding an ongoing royalty.
IV. Willfulness & Enhanced Damages
We review enhanced damages under 35 U.S.C. § 284for abuse of discretion. Halo Elecs., Inc. v. Pulse Elecs.,
Inc., 136 S. Ct. 1923, 1934 (2016). A party seeking en-
hanced damages under § 284 bears the burden of proof by
a preponderance of the evidence. Id. (citing Octane Fit-
ness, LLC v. ICON Health & Fitness Inc., 134 S. Ct. 1749,
1758 (2014)). The Eleventh Circuit reviews de novo
previously raised objections to jury instructions and gives
ARCTIC CAT INC. v. BOMBARDIER RECREATIONAL 29
district courts wide discretion in wording so long as the
instructions accurately state the law. SEC v. Big Apple
Consulting USA, Inc., 783 F.3d 786, 802 (11th Cir. 2015).
BRP appeals the district court’s denial of judgment as
a matter of law that it did not willfully infringe the as-
serted patents because the jury’s willfulness finding is not
supported by substantial evidence and the district court
erred in instructing the jury. It also argues the district
court abused its discretion by trebling damages.
The jury’s willfulness finding is supported by substan-
tial evidence. In denying BRP’s motion for judgment as a
matter of law on willfulness, the district court found
substantial evidence demonstrated that BRP knew about
the patents before they issued, conducted only a cursory
analysis of the patents, waited years before seeking
advice of qualified and competent counsel, and unsuccess-
fully tried to buy the asserted patents through a third
party. J.A. 70–72. The district court denied BRP’s re-
newed motion for judgment as a matter of law on willful-
ness, stating it “will not second-guess the jury or
substitute [the court’s] judgment for its judgment” where
the verdict is supported by substantial evidence. J.A. 124.
Neither will we.
We reject BRP’s argument that the district court’s ju-
ry instruction was erroneous. The district court instruct-
ed the jury that as to willful infringement, “Arctic Cat
must prove by clear and convincing evidence that BRP
actually knew or should have known that its actions
constituted an unjustifiably high risk of infringement of a
valid and enforceable patent.” J.A. 3037 (emphasis add-
ed). BRP argues this “should have known” standard
contradicts Halo. Appellant’s Br. 61 (citing Halo, 136 S.
Ct. at 1933). But this Court addressed this issue and
concluded:
Halo did not disturb the substantive standard for
the second prong of Seagate, subjective willful-
30 ARCTIC CAT INC. v. BOMBARDIER RECREATIONAL
ness. Rather, Halo emphasized that subjective
willfulness alone—i.e., proof that the defendant
acted despite a risk of infringement that was “‘ei-
ther known or so obvious that it should have been
known to the accused infringer,’” Halo, 136 S. Ct.
at 1930 (quoting Seagate, 497 F.3d at 1371)—can
support an award of enhanced damages.
WesternGeco L.L.C. v. ION Geophysical Corp., 837 F.3d
1358, 1362 (Fed. Cir. 2016). Thus, the court did not err in
instructing the jury as BRP argues.
Finally, the district court did not abuse its discretion
by trebling damages. While the district court initially
trebled damages without much explanation, J.A. 97–98, it
explained its decision in a subsequent thorough and well-
reasoned opinion. See J.A. 99–116 (applying the factors
outlined in Read Corp. v. Portec, Inc., 970 F.2d 816 (Fed.
Cir. 1992)). Although the district court did not allow the
parties to brief the issue, we will not adopt a blanket rule
that a district court abuses its discretion by deciding an
issue without receiving briefing from the parties. That is
especially true where, as here, BRP attacks the district
court’s procedure but does not explain how additional
briefing would have changed the outcome. In short, BRP
has not shown that the district court’s failure to allow
briefing amounts to an abuse of discretion. We affirm the
district court’s denial of judgment as a matter of law on
willfulness and its order trebling damages.
CONCLUSION
For the foregoing reasons, we affirm the district
court’s denial of judgment as a matter of law that the
asserted claims would have been obvious, that the jury-
awarded royalty rate should be vacated, and that BRP did
not willfully infringe the asserted claims. We also affirm
the district court’s orders granting an ongoing royalty and
trebling damages. We vacate the district court’s denial of
ARCTIC CAT INC. v. BOMBARDIER RECREATIONAL 31
judgment as a matter of law as to marking and remand
for a new trial on this issue.
AFFIRMED IN PART, VACATED IN PART, AND
REMANDED
COSTS
No costs.