Patent Marking Requirements

Marking Requirements

Under 35 U.S.C. § 287(a), a patent owner cannot begin collecting damages for patent infringement of a “patented article” until they provide sufficient notice.[1] This helps to avoid innocent infringement by the public.[2] The statute permits two types of notice: actual and constructive.[3] Actual notice requires “affirmative communication [to the alleged infringer] of a specific charge of infringement by a specific accused product or device.”[4] This can be accomplished, for example, by a letter detailing the alleged infringement or by filing an infringement action.[5] To provide constructive notice a patent owner must mark its “patented article” consistent with § 287, essentially putting the whole world on notice of its rights.[6]

The statue provides several methods of marking a patented article, including: (1) “by fixing thereon the word ‘patent’ or the abbreviation ‘pat.’, together with the number of the patent,” (2) “by fixing thereon the word ‘patent’ or the abbreviation ‘pat.’ together with an address of a posting on the Internet, accessible to the public without charge for accessing the address, that associates the patented article with the number of the patent,” or (3) “when, from the character of the article, this can not be done, by fixing to it, or to the package wherein one or more of them is contained, a label containing a like notice.”[7] The second method is commonly referred to as virtual marking. The marking must indicate “the number of the patent.”[8] Failing to include the patent number or identifying an article as “patent pending” have both been found insufficient.[9]

Because the damages period may be limited by a failure to mark, a patent owner may wish to mark any patented articles on the date the patent issues or shortly thereafter. The patent owner must “consistently mark[] substantially all of its patented products” to meet the requirements for constructive notice.[10] When analyzing compliance with the “substantially all” requirement, the Federal Circuit has upheld the sufficiency of marking compliance rates of 95%[11] and 88%[12]. Further, the patent owner is required to make “reasonable efforts” to ensure that their’ licensees comply with the marking statute as well.[13] Courts have considered efforts including incorporating a clause into the parties’ license agreement that requires the licensee to mark protected products and verifying a licensee’s marking practices.[14]

“Patented Articles”

The marking statute does not require the marking of all things falling within the claims of a patent. Indeed, the statute requires that “patented articles” be marked for the damages period to commence,[15] but it does not refer to methods. Considering this issue, the Federal Circuit has held that “the notice provisions of section 287 do not apply where the patent is directed to a process or method.”[16] “The recovery of damages is not limited,” the Court has further explained, “where there is no failure to mark, i.e., . . . where there are no products to mark.”[17] A patent holder might, therefore, assume that any infringement allegations it might make based on method claims are immune from limits on damages due to a failure to mark. That is not the case, however. The Federal Circuit has held that where a patent includes both apparatus or composition claims and process claims, and the patent holder asserts both types of claims, a failure to mark the protected apparatus or composition will limit damages on all asserted claims of the patent, including the process claims.[18] In this way, a failure to mark, which would ordinarily only limit damages on a “patented article” can also affect method claims from the same patent asserted in the same action. The result can be avoided, however, by asserting only the method claims from the patent.[19]

Marking Defense

Where the marking statute is applicable, an accused infringer may be able to limit the damages period to after the patent holder began complying with the statute or after actual notice was given of the alleged infringement, whichever came first. Where the accused infringer believes the patent holder has failed to comply with the marking requirement, it should “articulate the products it believes were sold as unmarked.”[20] The Federal Circuit has described this as a “low bar”—“a burden of production, not one of persuasion or proof”—intended merely to “put the patentee on notice.”[21] It is then up to the patent holder “to prove the products identified do not practice the patented invention.”[22] This burden shifting framework is based on the understanding that “[w]hether a patentee’s articles have been marked ‘is a matter peculiarly within his own knowledge.’”[23]

Conclusion

Damages for patent infringement that occurred before the filing of a complaint can in some instances represent the lion’s share of the recovery available. Therefore, it is important to carefully consider the potential impact of marking when considering an action for patent infringement.

Endnotes

1. 35 S.C. § 287(a).

2. Arctic Cat v. Bombardier Recreational Prod. Inc., 876 F.3d 1350, 1366 (Fed. Cir. 2017).

3. Gart Logitech, Inc., 254 F.3d 1334, 1345 (Fed. Cir. 2001)

4. Id. (quoting Amsted Indus. Inc., v. Buckeye Steel Castings Co., 24 F.3d 178, 187 (Fed. Cir.1994)).

5. §287(a).

6. Id.

7. Id.

8. Id.

9. Stryker Corp. v. Zimmer, Inc., 837 F.3d 1268, 1278 (Fed. Cir. 2016) (“[T]he plain language of the marking statute provides that the patented article be marked with the ‘number of the ’”); TecSec, Inc. v. Adobe Inc., No. 1:10-CV-115, 2019 WL 1233847, at *2 (E.D. Va. Mar. 14, 2019) (“[The patent holder’s] products were only marked ‘patent pending,’ which does not satisfy §287(a)’s burden to mark.”)

10. SEB A. v. Montgomery Ward & Co., 594 F.3d 1360, 1378 (Fed. Cir. 2010), aff’d sub nom. Glob.-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754 (2011).

11. Maxwell v. J. Baker, Inc., 86 F.3d 1098, 1111 (Fed. 1996).

12. Funai Co. v. Daewoo Elecs. Corp., 616 F.3d 1357, 1375 (Fed. Cir. 2010).

13. Arctic , 876 F.3d at 1366.

14. Maxwell, 86 3d at 1112.

15. §287(a).

16. Am. Med. Sys., Inc. v. Med. Eng’g Corp., 6 F.3d 1523, 1538 (Fed. Cir. 1993).

17. Texas Digital , Inc. v. Telegenix, Inc., 308 F.3d 1193, 1220 (Fed. Cir. 2002).

18. See, g., Am. Med. Sys., Inc., 6 F.3d at 1538–39.

In this case, both apparatus and method claims of the ‘765 pat- ent were asserted and there was a physical device produced by the claimed method that was capable of being marked. Therefore, we conclude that AMS was required to mark its product pursuant to section 287(a) in order to recover damages under its method claims prior to actual or constructive notice being given to MEC.

Id.

19. Crown Packaging , Inc. v. Rexam Beverage Can Co., 559 F.3d 1308, 1317 (Fed. Cir. 2009).

In this case and Hanson, the patentee only asserted method claims despite the fact that the patent contained both method and appara- tus claims. In American Medical, in contrast, “both apparatus and method claims of the ′765 patent were asserted.” American Medical, 6 F.3d at 1523. Because Rexam asserted only the method claims of the ′839 patent, the marking requirement of 35 U.S.C. § 287(a) does not apply.

Id.

20. Arctic Cat , 876 F.3d at 1368.

21. Id

22. Id

23. Id at 1366 (quoting Dunlap v. Schofield, 152 U.S. 244, 248 (1894)).