Central District Of California Finds Marking Of Product Packaging Insufficient Under 35 U.S.C. § 287.
On January 6, 2021, Judge James V. Selna of the United States District Court for the Central District of California granted, in part, defendant Feit Electric Co., Inc.’s (“Feit”) motion for partial summary judgment related to plaintiff Zadro Prods, Inc.’s (“Zadro”) alleged failure to properly mark certain products. Zadro Prods, Inc. v. Feit Electric Co., Inc., Case No. SACV-20-101-JVS (C.D. Cal. Jan. 6, 2021). Judge Selna found that: (1) Zadro’s alleged failure to disclose that it marked its products in a discovery response was not grounds for summary judgment; (2) an issue of material fact remained as to whether Zadro’s products practiced one of the patents in suit; and (3) Zadro’s marking of the packaging of its products which practiced one of the patents in suit (rather than the products themselves) was insufficient under 35 U.S.C § 287.
On January 17, 2020, Zadro filed suit against Feit alleging infringement of U.S. Patent Nos. 8,162,502 (“the ’502 patent”) and 8,356,908 (“the ’908 patent”). The patents relate to mirrors that incorporate LED technology. On November 30, 2020, Feit filed the present motion, alleging deficiencies in Zadro’s discovery responses and marking practices related to 35 U.S.C. § 287.
35 U.S.C. § 287 provides that “[p]atentees, and persons making, offering for sale, or selling … any patented article for or under them… may give notice to the public that the same is patented … by fixing thereon the word ‘patent.’” Moreover, “[i]n 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.”
Important to the present motion, the United States Court of Appeals for the Federal Circuit (“CAFC”) has clarified that when it is not possible to mark the actual product (e.g., because the product is too small), a patentee can provide notice by marking the packaging of the product.
First, Feit argued that Zadro should be precluded from arguing that it complied with 35 U.S.C. § 287 by asserting that it marked its products, because Zadro failed to state that it provided such notice in an interrogatory response. The Court rejected this argument, noting that Feit neither provided a reason why such an alleged failure can serve as a basis for summary judgment, nor met and conferred with Zadro about such a basis for summary judgment (as required under the local rules). Accordingly, the Court denied summary judgment on this basis.
Next, Feit argued that Zadro did not properly mark its products that allegedly practiced the patents in suit, thus precluding Zadro from recovering pre-filing damages. At summary judgment, a party challenging compliance with 35 U.S.C. § 287 bears the initial burden of showing that the patentee’s products were unmarked. The burden then shifts to the patentee to show that it marked its products, or that its products do not practice the patent in question.
With regards to the ’908 patent, Feit argued that certain Zadro product lines that allegedly practice the patent were unmarked. The Court ultimately denied Feit’s motion on this ground, noting that a question of material fact existed as to whether Zadro’s identified products practice the patent. In particular, the Court ruled that whether the identified products practice the patent turned on the meaning of a key term (“beam”), which was not construed during claim construction. The Court accordingly found that “there is at least a material issue of fact as to whether the [identified] products practice the ’908 patent.”
With regards to the ’502 patent, Feit argued that Zadro products that practice the patent were not properly marked. Zadro attempted to comply with the marking statute with regards to products practicing the ’502 patent by marking the packaging of the products. As noted above, the CAFC has clarified that a product itself must be marked unless marking on the product cannot be accomplished. While there is no bright line rule for when marking packaging may suffice, Judge Selna noted that factors can include the size of the product, whether the product is a machine or a multi-part system, and whether the product is immediately installed out of public view once unpackaged.
The Court ruled that Zadro was required to mark its products that practiced the ’502, and that marking the products’ packaging would not suffice. The Court found persuasive the fact that Zadro marked “patent pending” on the battery case cover of its practicing products. This inscription, though insufficient to provide constructive notice, showed that it was possible to mark the actual practicing products: “[i]t is therefore insufficient that Zadro marked the packaging … for the products could be marked themselves.”
The Court found unpersuasive Zadro’s arguments that marking the products’ packaging was sufficient. These arguments largely relied on Denneroll Holdings Pty Ltd. v. ChiroDesign Group, LLC, 2016 WL 705207 (S.D. Tex. Feb. 23, 2016). First, Zadro relied on Denneroll’s proposition that “what is primarily important is for the public to be able to view the patent number when it encounters the product in a store.” Judge Selna rejected this notion, stating that “if all that was important was that a consumer viewed the patent number when she encounters the product in the store, marking a package would be the preferred method under § 287(a).”
Second, Zadro argued that Denneroll suggests that a product used in the home is not “in public view,” and therefore marking a product’s package is more appropriate than marking the product itself. Judge Selna found that Denneroll misread CAFC precedent, and further that products used in a home (like Zadro’s products) are viewed by the public (e.g., house guests), and accordingly the products, rather than the packaging, would be the most effective method of marking.
Finally, the Court denied Zadro’s argument that it did not need to mark its products because its competitors did not mark their products. Judge Selna noted that “[i]f that were so, industries could effectively opt out of § 287 for no reason.” Additionally, the Court found unpersuasive that Zadro printed a URL to Zadro’s website, which identified the ’502 patent, on the packaging of its products, noting again that the products themselves should have been marked.
Accordingly, the Court granted Feit’s motion with respect to the claims for infringement of the ’502 patent.