Kimberly-Clark Worldwide, Inc. v. First Quality Baby Products, LLC, No. 1:09-CV-1685, 2013 WL 1821593 (M.D. Penn. April 30, 2013).
The AIA limited claims arising from “false marking.” Nonetheless, the marking statute tripped up Plaintiff in Kimberly-Clark Worldwide. As to some of the patents-in-suit, the court found sufficient evidence to support a third-party licensee’s failure to mark and limited the damages period to the date notice was actually given (as of the filing of the complaint).
Plaintiff sued for infringement of several patents. Defendant filed a motion seeking to bar a portion of Plaintiff’s damages claim due to a failure to comply with the marking statute (35 U.S.C. § 287(a)). Id. at *1. Defendant argued Plaintiff allowed other companies to practice the patents-in-suit and could not show that those companies marked their products. Thus, Defendant argued, Plaintiff could not show consistent and continuous marking as required by the statute. Id. at *2.
As to one patent, the court found: (1) three companies were either licensed or given carte blanche to practice the patent; (2) only one of the companies was contractually obligated to mark products produced under the patent; and (3) there was evidence of one company not marking a sampling of products that practiced the patent. In light of this evidence, the court granted the motion for summary judgment and limited the damages period. Id. at *2-*3
As to another patent, the court found the evidence mirrored evidence relating to the first patent and granted summary judgment limiting Plaintiff’s damages period. Id. at *4.
As to a third family of patents and a fourth patent, the court found neither party provided evidence of whether a third-party had practiced the patents, and, if so, whether that party failed to mark its products. Therefore, the court denied the motion for summary judgment. Id. at *4, *5.