How Marking Mishaps Mess up Patent Litigation Strategies

Patent owners are required to mark their patented products with the word ‘patent’ or ‘pat’ along with a corresponding patent number or website listing the patent. If patent owners fail to properly mark their product, they can face repercussions during a patent litigation procedure. Managing Intellectual Property interviewed Finnegan partner David Mroz to discuss implications for failing to properly mark patents.

Dave explained that companies can have a patent marking procedure in place, but then license the patent to other companies that may not follow through on the proper procedure for marking products as required. He stated, “This could cause the compliance rate to drop below the substantial compliance threshold and preclude a party from satisfying the marking statute, even though a marking policy was in place.”

If a patent owner bringing an infringement suit failed to comply with marking requirements, in order to obtain pre-suit damages, they might need to drop apparatus claims, which cover what an invention is, and assert only method claims, covering what an invention does. Some courts are more lenient than others when allowing plaintiffs to drop apparatus claims.

Dave explained that the varying consensus on dropping apparatus claims during suit can lead to forum shopping within the confines of TC Heartland. He advised attorneys to look at a court’s history of how they have resolved similar disputes when deciding which forum to file suit. Dave added that it would be helpful for the U.S. Court of Appeals for the Federal Circuit to rule on the issue. 

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