Chapter §20.10 Patent Marking

• Jurisdiction: United States

§20.10 Patent Marking

[A] Statutory Basis: 35 U.S.C. §287

The U.S. Patent Act strongly encourages (but does not require) patentees and/or those who manufacture, sell, offer to sell, or import patented articles for them to mark the articles with the corresponding U.S. patent number(s).¹¹⁹² This is why many patented items sold in the marketplace bear a patent number, either on the items themselves or on their packaging.

The purpose of the marking provisions of the Patent Act is to provide the public with some degree of notice of patent rights (albeit an imperfect degree, because marking is optional). In order to accomplish this purpose, §287(a) of Title 35 provides that without adequate marking, "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."¹¹⁹³

The filing of an infringement lawsuit constitutes notice.¹¹⁹⁴ Thus, notice under 35 U.S.C. §287 can be constructive notice, through marking the patent number on the patented product, or actual notice, through certain communications with the infringer or the actual filing of the lawsuit.¹¹⁹⁵ In cases involving patented articles that were not marked and no other notice was given to the accused infringer, the operation of §287 means that the patentee will not be able to recover any damages for infringements that occurred prior to the filing of the lawsuit.

The Federal Circuit has interpreted literally the language of 35 U.S.C. §287(a) requiring that the patented article be marked with the "number of the patent" (emphasis added), such that marking a product with the number of a related but different patent number is not sufficient to provide notice to the public under the statute. In its 2016 opinion in Stryker Corp. v. Zimmer, Inc.,¹¹⁹⁶ a case involving infringement of three related patents,¹¹⁹⁷ the Federal Circuit observed that the district court had erred in instructing the jury that it should consider " 'whether some portion of the [patentee Stryker's] products not marked with a particular patent number were marked with other related patent notices.' "¹¹⁹⁸ Because of this instruction, "the jury could have been misled to consider a product marked with the number of a patent related to the '383 patent—but not with the '383 patent number itself—as being sufficiently marked." The appellate court acknowledged that some cases "suggest that there is some flexibility in what constitutes sufficient marking," but stated that "the statute is not so broad as to allow marking with a different patent—with different claims—to provide sufficient notice to the public."¹¹⁹⁹ Nevertheless, the Circuit's discussion on this point can be deemed dicta. It stated that it was not reaching the issue [i.e., the jury's finding that Stryker's products were sufficiently marked by the '383 patent] because it was affirming the finding that Zimmer had infringed the other two related patents in suit. That finding was "sufficient to support all of Stryker's award of damages for lost profit."¹²⁰⁰

[B] Notice

A number of Federal Circuit decisions address whether particular prefiling communications between patentees and accused infringers established that the "infringer was notified of the infringement" within the meaning of 35 U.S.C. §287(a) so as to start the damages recovery period. The fact that an accused infringer was merely aware of or even possessed a copy of the patent allegedly infringed is not sufficient, without more, to satisfy §287.¹²⁰¹

As the Federal Circuit explained in Amsted Indus. v. Buckeye Steel Castings Co.,¹²⁰² the determination of notice under 35 U.S.C. §287 "must focus on the action of the patentee, not the knowledge or understanding of the infringer."¹²⁰³ In order to meet §287's actual notice requirement, an "affirmative communication [to the alleged infringer] of a specific charge of infringement by a specific accused product or device" is required.¹²⁰⁴ This standard was not met in Amsted Indus. by a letter that notified the entire industry, including the accused infringer, only of the patentee's ownership of the patent and generally advised companies not to infringe.¹²⁰⁵

When a patentee provides specific actual notice that a particular accused product infringes, that notice may be sufficient to bring related models and products of the accused infringer into the scope of the original notice.¹²⁰⁶ In K-TEC, Inc. v. Vita-Mix Corp., a case involving a patented five-sided blender jar, the patentee K-TEC initially accused Vita-Mix's "MP" jar and thereafter its "XP" jar. The Federal Circuit observed that in designing the latter accused product, Vita-Mix had

started with [its earlier marketed and later discontinued] MP container—a direct copy of K-TEC's five-sided jar—and made only a trivial change. Specifically, K-TEC offered evidence that, rather than adopting one of numerous noninfringing designs, Vita-Mix opted for a design that allowed Vita-Mix to produce a container that performed in the same way as the MP container and employ a design that its customers would not be able to distinguish from the MP container. Indeed, Vita-Mix maintained the same product numbers for both the MP and XP containers. ¹²⁰⁷

K-TEC asserted two patents. K-TEC initially sued Vita-Mix for infringement of U.S. Patent No. 6,979,117 ('117 patent) shortly after the '117 patent issued, alleging that Vita-Mix's original MP jar infringed a number of claims of the '117 patent. Thereafter, K-TEC was issued U.S. Patent No. 7,281,842 ('842 patent) on a continuation application of the '117 patent. K-TEC amended its complaint to include the '842 patent and to assert infringement by Vita-Mix's newer XP jar. Ultimately, Vita-Mix halted sales of the MP jar after it launched the XP jar, and K-TEC pursued damages only for sales of the XP jar. A jury found both patents willfully infringed, not invalid, and awarded K-TEC $11 million in reasonable royalty and lost profits damages.

Notably, K-TEC's damages expert employed an accounting period that began on December 27, 2005, the date that K-TEC's '117 (parent) patent issued. This predated the April 7, 2006 actual notice of infringement by the XP jar (i.e., the date on which K-TEC amended its complaint to allege infringement by the XP jar). The Federal Circuit rejected Vita-Mix's argument that K-TEC did not provide actual notice until April 7, 2006. The appellate court sustained the damages award, explaining:

In the absence of marking a patented article, a patentee who makes, offers for sale or sells a patented article must notify a party of the infringement for damages to accrue. 35 U.S.C. §287(a). If a patentee's initial notice is sufficiently specific to accuse one product of infringement, "ensuing discovery of other models and related products may bring those products within the scope of the notice." Funai Elec. Co. v. Daewoo Elecs. Corp., 616 F.3d 1357, 1373 (Fed.Cir.2010). Here, K-TEC proffered evidence that (1) it provided notice that the MP container infringed various claims of the '117 patent's parent patent in March 2005; (2) it provided subsequent notice to Vita-Mix that the MP container infringed the '117 patent's claims in late October 2005; (3) its notice resulted in Vita-Mix having actual notice of the '117 patent, which its CEO referred to as "the K-Tec patent for the MP container," when the patent issued on December 27, 2005, J.A. 16619; and (4) Vita-Mix treated the XP and MP containers as related products, see, e.g., J.A. 16594.1 (explaining that both products will use the same item numbers and that most of Vita-Mix's customers "will never even notice the change" from the MP to the XP). In light of this evidence, the district court did not err in denying Vita-Mix's motion for judgment as a matter of law on damages. No substantial challenge is made on appeal concerning the amount of the damages found by the jury. ¹²⁰⁸

[C] Marking Patented Articles Versus Methods

The 35 U.S.C. §287(a) marking statute does not apply to patents that claim only processes or methods,¹²⁰⁹ because in such cases there is usually no tangible article to mark; the marking provisions may be applicable to patents that include both method and apparatus claims, however.¹²¹⁰

In ActiveVideo Networks, Inc. v. Verizon Comm., Inc.,¹²¹¹ the Federal Circuit again declined to examine a patent containing only method claims "to see if something could have been marked in order to assess whether the notice provision applies." It so ruled despite accused infringer Verizon's argument that ActiveVideo's three other asserted patents in suit contained apparatus claims, and that the claims in ActiveVideo's method patent were simply directed to a method of using the apparatus claimed in ActiveVideo's other patents. Candidly observing that Verizon's "proposed rule would be a confusing mess for the district courts to try to apply," the Federal Circuit reaffirmed "the bright-line easy to enforce rule: if the patent is directed only to method claims, marking is not required."¹²¹²

[D] "Patent Pending" Designations

Marking one's product with the designation "patent pending" when a patent application has been filed but not issued is permissible but has no legal effect. This is because no patent has yet issued. A patent applicant has no statutory right to exclude others. Giving competitors or the general public notice that a patent application is pending on some aspect of its marketed product may provide the applicant some competitive advantage, however.¹²¹³

In Hall v. Bed Bath & Beyond, Inc.,¹²¹⁴ Mr. Hall's patent claimed the ornamental design for a large towel with binding around all the edges, zippered pockets at both ends, and an angled cloth loop in the middle, which Hall marketed as the "Tote Towel." When Hall sued several retailers including Bed Bath & Beyond for infringement, they...