Virtual Marking Must be Product-Specific

September, 11th, 2019

Categories: Articles, Blog Tags: litigation, patent, whipgroup

By William L. Birks III

A Federal District Court for the District of Delaware has decided that for a product to be virtually marked by a patent, a patentee must associate the covering patent with the specific product. An association of a patent with a class or group of products is not sufficient to meet the notice requirements of 35 U.S.C. § 287. This decision comes as a result of proceedings in Manufacturing Resources International, Inc. v. Civiq Smartscapes, LLC, Civil Action No. 17-269-RGA (D. Del. Aug. 28, 2019). In Manufacturing, MRI filed suit against Civiq alleging infringement of its patents. Civiq counterclaimed. Both parties filed motions for summary judgement including Civiq’s Motion for Partial Summary Judgement of no pre-suit damages for any of the asserted patents.

Federal statute 35 U.S.C. § 287 creates a notice requirement for a patentee to receive damages for infringement. An infringer must be given notice by communication by the patentee or marking of the patent number on a product. Marking in its most basic form requires a patentee to display the word “patent” or its abbreviation “pat.” and the serial number of the patent covering a product on the product or its packaging. Alternatively, a patentee may mark their product by substituting the patent serial number with an internet address of a posting where a member of the public can view the patents covering the product, also called “virtual marking.” In Manufacturing, MRI attempted to virtually mark its products with a website showing a list of patents associated with the classes of products MRI produces. For example, on its webpage, MRI lists patents that may cover any of its models of LCD displays.

In analyzing whether MRI has fulfilled the notice requirement to seek damages for infringement, the court stressed that whether a patentee has marked its products in compliance with the notice requirement turns not on what an infringer actually knew, but on whether the patentee’s actions were sufficient to provide notice to the public of what patents cover a product. The court continued by stating that MRI’s mark of a website URL does not provide sufficient notice to the public because it does not provide an association between a specific product and a patent. It is the function of the website itself to associate the patent with the product, not the work of the public to make the association. A list of patents covering all of the patentee’s products does not provide the required association but “merely creates a research project for the public.” The court further stated that virtual marking attempts similar to MRI’s may even run afoul with false marking statutes due to the inferences that could be made between a list of patents and a list of products if not all of the listed products are covered by all of the patents.

Because MRI listed multiple patents, each of which could cover any of the products within a category of products, the court granted Civiq’s motion stating that as a matter of law, MRI did not meet the notice requirements of 35 U.S.C § 287 and is not entitled to pre-suit damages.

To maximize recovery of damages for infringement, patentees should make sure they have fulfilled the notice requirement by sufficiently marking their products under 35 U.S.C. § 287. Regardless of the method chosen to mark the products, patentees must associate specific patents with specific covered products. Otherwise, the patentee risks losing pre-suit damages which can be a substantial portion of available damages. While associating each covered product with specific patents may initially require more work, it could pay off during enforcement of the patents.

 

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