On May 19, 2018, the United States District Court for the Eastern District of Wisconsin denied a patent owner’s request for reconsideration of a decision that the patent owner had not complied with the marking statute, and that therefore its damages in the pending infringement case would be limited, pursuant to that statute. Acantha LLC v. Depuy Orthopaedics, Inc., et al.
, Case No. 15-C-1257 (E.D. Wis. May 19, 2018). The Court rejected the patent owner’s argument that placing a patent notice in its surgical guide constituted sufficient marking.
United States patent owners are not required to mark as patented their own products that embody their patented invention, nor are they required to ensure that their licensees mark licensed products. However, if patent owners or their licensees do not mark, the patent owner cannot recover damages for any act of infringement committed before the infringer was given actual notice of the infringement. 35 U.S.C. § 287.
As recently amended, the marking statute gives patent owners and their licensees several options:
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 by fixing thereon the word “patent” or the abbreviation “pat.” together with an address of a posting on the Internet, accessible to the public without charge for accessing the address, that associates the patented article 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.
35 U.S.C. § 287.
In this case, the products in questions were surgical implants, and presumably, it was impractical to mark the products themselves. Thus, it would have been permissible to mark the products’ packaging, either with the patent numbers themselves or with the address of a website listing the patent numbers. But more than 90% of the time, the patent owner’s licensee did not mark even the packaging.
The patent owner conceded that the licensee had not marked most of its products, but argued that the patent owner itself had listed the applicable patent number in its “surgical technical guides,” and that this marking should be sufficient under what it characterized as the “lenient” standards of patent marking, when the surgical guides were distributed “at hospitals, trade shows, educational forums, online, or during surgeries.”
The District Court disagreed, holding that “it goes too far to say that a patentee may forgo the two methods of marking the statute explicitly contemplates and instead list the patent number on a technical guide that is not placed in the box or connected to the box in which the product is contained.” The Court also found that printing the patent notice in the surgical guide was insufficient as a matter of law.
The decision serves as a salutary reminder that although the marking standards are lenient, and although some failure to mark can be excused, that leniency is not unbounded. Patent owners should take the time to ensure that both they and their licensees satisfy the marking statute, at the risk of later finding themselves unable to recover what might otherwise have been substantial damages.