Federal Circuit Emphasizes that Patentee Always Bears the Burden to Prove Statutory Marking

The Federal Circuit vacated and remanded part of the district court’s decision in Arctic Cat Inc. v. Bombardier Recreational Products, Inc., No. 2017-1475 (Fed. Cir. Dec. 7, 2017), finding that the district court committed legal error in placing the burden of proof to demonstrate marking on the alleged infringer. 

The Court explained that the burden of proving compliance with the marking statute of 35 U.S.C. § 287(a) “is and at all times remains with the patentee.”  In cases where, as here, the alleged infringer challenges the patentee’s compliance with § 287, it bears the initial burden of production to articulate the products it believes were sold as unmarked.  The Federal Circuit emphasized that this is a low bar, requiring only that the patentee be put on notice of specific unmarked products.  The patentee then bears the burden of proving the identified products do not practice the patents-at-issue. 

By identifying fourteen products sold by plaintiff’s licensee, the Federal Circuit concluded that defendant here met its initial burden. The Federal Circuit then found that the district court erred in requiring defendant to also demonstrate that the identified products practiced the asserted patents, so the Court vacated and remanded the judgment as to marking.