- BASICS: “Patentees, and persons making, offering for sale, or selling within the United States any patented article for or under them, or importing any patented article into the United States, may give notice to the public that the same is patented, either by fixing thereon the word ‘patent’ or the abbreviation ‘pat.’, together with the number of the patent, or when, from the character of the article, this cannot be done, by fixing to it, or to the package wherein one or more of them is contained, a label containing a like notice. In the event of failure so to mark, 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. Filing of an action for infringement shall constitute such notice.” 35 U.S.C. § 287(a).
- AIA: authorizes “virtual marking”: marking on product “patent” and “address of a posting on the Internet” accessible without charge “that associates the patented article with” the patent number. 35 USC 287(a) (AIA) {effective on 09/16/11, to pending cases}.
- Product Capable Of Being Marked: Rule of reason analysis. Global Traffic (Fed. Cir. 06/04/15) (non-precedential) (aff’g jury verdict that marking packaging of a multi-component system was sufficient; “court should evaluate the specific character of the article at issue,” which is an issue of fact, not just whether space exists for patent number).
- Substantially Continuous Marking: Once begun, marking must be substantially consistent and continuous to satisfy this statute. The patent owner has the burden of pleading and proving compliance with Sec. 287, by it and its licensees. However, the patent owner can meet the pleading requirement simply by alleging that the accused infringer’s alleged infringement was willful. Sentry Protection (Fed. Cir. 3/11/05). A “rule of reason” applies to substantial marking by the patent’s licensees. Maxwell (Fed. Cir. 06/11/96) (sufficient where retailer marked 95% of patent product); Funai (Fed. Cir. 09/01/10) (jury permitted to find constructive notice despite 12% of units (those sold by OEMs) not marked).
- Method Patents: 287’s marking requirement does not apply to method patents. Where a patent contains both method and non-method claims, then Sec. 287 will apply (i.e., no pre-marking/notice damages) only if the patent owner has alleged infringement of one or more of the non-method claims. Crown Packaging (Fed. Cir. 03/17/09). Even if patentee asserts apparatus claims in related patents, Sec. 287 does not apply to patent with only method claims. ActiveVideo (Fed. Cir. 08/24/12).
- Notice Of Infringement: The notice of infringement must be a specific (but perhaps qualified) charge of infringement communicated to the accused by the patentee. But when patent correctly identifies the current assignee, notice may come from the party responsible for licensing and enforcing the patent (even though not the patent’s owner). S. Philips (Fed. Cir. 11/02/07). Effect of notice may extend to other models and products related to those identified in the notice. Funai (Fed. Cir. 09/01/10).
- 287 Does Not Delay Infringement Or Hypothetical Negotiation Date: A failure to mark may delay the start date for damages to accrue, but it does not change the date of first infringement. Power Integrations (Fed. Cir. 03/26/13) (“must assess damages for post-notice infringement relative to market conditions at the point in time when infringement began”). Thus, failure to mark does not change the date for the hypothetical negotiation for “reasonable royalty” purposes.
- Pre-Notice Infringement May Be Admissible On Calculating Post-Notice Damages: “To the extent an infringer’s pre-notice infringement erodes the market price of a patented product, that price erosion is relevant in determining for each post-notice act of infringement what the patentee would have made but for the infringement.” Power Integrations (Fed. Cir. 03/26/13).
Charge May Be Qualified: Charging that a specific design of product would infringe an identified patent may suffice; it’s not required that the patent owner have discovered an actual infringement. Minks (Fed. Cir. 10/17/08).