On May 14, 2012, Judge Hoyt of the Southern District of Texas granted summary judgment rejecting an affirmative defense of failure to mark a patent (Target Training International, Ltd. v. Extended Disc North America, Inc., Case 4:10-cv-03350). The patent-in-suit included method claims and system claims that implement the methods.
In Oracle America, Inc. v. Google Inc., No. C-10-03561 WHA (NDCA Jan. 31, 2012), Judge Alsup issued an order concerning a patent marking procedure that Oracle (plaintiff) and Google (defendant) on which the parties had agreed to streamline the marking issue for trial. The court was concerned that disputes over which of Oracle’s products practiced the asserted claims would devolve into an “infringement” type analysis at trial. The court thus forced the parties to devise a procedure that would simplify the issue. The procedure is interesting because it eliminates the “infringement” analysis at trial by forcing the parties to stipulate to products that practice the claims and thus must be marked. However, the court found that Google had violated the agreed procedure.
In the first step, plaintiff Oracle submitted a list of its products that practice each asserted patent, and provided supporting evidence. The next step required Google to respond and (a) identify any products in Oracle’s identification that Google contends do not practice the claims, and (b) identify any additional Oracle products that Google contends practice the claims and explain why. Instead of doing this, Google merely objected to Oracle’s evidence.
An interesting fact pattern required Judge Ware in NDCA to decide between two well-established canons relating to past damages where there was no marking. The Plaintiff had asserted both apparatus and method claims, but the apparatus claims were disposed of on summary judgment. The Defendant argued that there should be no pre-notice damages for any of the claims, either apparatus or method. The Plaintiff argued that since only method claims survived, the holdings of Bandag and Hanson allowed for the Plaintiff to recover six years’ worth of damages. The Defendant relied on American Medical Systems, arguing that since Plaintiff had asserted its apparatus claims (even if later held invalid), no pre-notice damages were available for either the apparatus or method claims. The Court sided with the Defendant, finding critical the “asserted” phraseology from American Medical Systems.
Judge Schneider ruled on plaintiff Alexsam, Inc.’s motion for summary judgment concerning marking under 35 USC Section 287. Alexsam, Inc. v. Pier 1 Imports, Inc., Case No. 2:08-CV-15 (E.D. Tex. Oct. 14, 2011). The court disagreed with plaintiff Alexsam’s argument that the marking requirement of Section 287 did not apply to the patents-in-suit because they covered methods and systems for activating pre-paid gift cards, using existing retail point-of-sale devices. The court did note that Section 287 does not apply to method or process claims because ordinarily there is nothing to mark. But then, citing American Med. Sys. Inc. v. Medical Eng’g Corp., 6 F.3d 1523, 1538-39 (Fed. Cir. 1993), Judge Schneider observed that if there is a tangible item to mark, the plaintiff must to do so if it wishes to obtain pre-suit damages: “[H]owever, to the extent that there is a tangible item to mark by which notice of the asserted method claims can be given, a party is obliged to do so if it intends to avail itself of the constructive notice provisions of section 287(a).” American Med. at 1538–39. The court found that a gift card is a “tangible item” that could have been marked and that Alexsam and its licensees had a duty to mark the cards to claim pre-suit damages. The court, however, reserved judgment on whether the plaintiff had satisfied its burden to mark because compliance with Section 287 is a question of fact.
Utah court: refuses to apply entire market value rule to lump-sum damages; finds no marking violation where unmarked products were not within scope of license
Earlier today, we issued a post on a Utah case, Phillip M. Adams & Assoc. LLC v. Winbond Electronics Corp., Case No. 1:05-CV-64 TS (D. Utah, Sept. 8, 2010). The previous post summarized the court's decision on a motion in limine, in which the court refused to exclude testimony from the inventor concerning factual issues relevant to reasonable royalty damages. Only a week earlier, the Utah court also issued an opinion (click here)that addressed summary judgment on two issues: entire market value rule and patent marking. Both issues are interesting.
Click the "continue" link to read more about this case...
Court instructs: If reasonably feasible, mark your product (and not just the packaging) with patent numbers — otherwise, marking will be inadequate
Judge Robinson of the District of Delaware issued an opinion last year (August 24, 2009) on patent marking. I just discovered it and thought it was worth discussing because it's instructive on product vs. packaging marking. The case is Belden Tech. Inc. v. Superior Essex Comm'ns LP, Civ. No. 08-63-SLR (D. Del. 2009). Click here to see the case.
The case is instructive on when it's acceptable to mark just your product packaging as opposed to the product itself. The plaintiff and patentee Belden was inconsistent in its marking -- sometimes it marked its products, but more often it only marked the packaging. Belden made numerous arguments for why its inconsistent marking practice nevertheless complied with the marking statute. But the court disagreed. It issued summary judgment in favor of the defendant on the marking issue.
The take-away? If it's feasible, mark your product, and do so consistently. In just about any circumstances, it's not enough to mark packaging when the product could have reasonably been marked. For a detailed summary, read on...