The requirement that patented articles must be marked in order for the patentee to recover damages is well known among patent practitioners. According to the marking statute:
Patentees, and persons making, offering for sale, or selling within the United States any patented article for or under them … 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 can not 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) (emphasis supplied). Thus, the failure to mark patented articles may result in a forfeiture of damages prior to providing actual notice to the infringing party. Because actual notice in many cases is first provided by the filing of a lawsuit, the amount of damages that are forfeited can be significant. The purpose of the marking requirement is to provide notice to the public to protect members of the public from innocently infringing. Patentees generally will strive to be careful about taking into account the marking statute prior to releasing a patented article to the public, while defendants in a patent infringement lawsuit often analyze the plaintiff’s history of marking (or not marking) patented products to determine if they can avoid paying damages, in part or in full, for potential infringement that occurred prior to a complaint’s filing.
- Marking Requirements For Process And Method Claims
The United States Court of Appeals for the Federal Circuit has long held that marking is not required if the patent is directed to a process or method.1 The rationale for this rule is simple: the marking statute applies to “patented articles,” and when dealing with a method or process claim, there is no article to mark. However, the reasoning behind this rule is arguably imprecise or unconvincing with respect to articles that are either capable of performing a patented process, are used by a patented process or are created by a patented process. In those situations, although the patent is directed to a process, there may well be a tangible article to mark. Nonetheless, the rule is clear from the case law — the marking statute does not require these articles to be marked when the patents are directed to a process or method.
Application of this straightforward rule becomes problematic when dealing with a patent directed to both method and apparatus claims. In Hanson v. Alpine Valley Ski Area, the Federal Circuit held that 35 U.S.C. § 287(a) did not apply when only the method claims of a patent were infringed, although the patent included both method and apparatus claims.2 Four years later, in Devices for Medicine v. Boehl, the Federal Circuit noted a distinction between cases “in which only method claims are asserted to have been infringed” and cases where a patentee alleges infringement of both the apparatus and method claims of the same patent.3 When both method and apparatus claims are asserted, the Federal Circuit stated that because the method claims of the patent were directed to the use of the claimed product, “[h]aving sold the product unmarked, [the patentee] could hardly maintain entitlement to damages for its use by a purchaser uninformed that such use would violate [patentee’s] method patent.” Id. Based on the Federal Circuit’s decision in these cases, patentees can seemingly avoid application of the marking requirements if they only assert method claims.
However, in American Medical Systems v. Medical Engineering Corp., the Federal Circuit stated that “[w]here the patent contains both apparatus and method claims, however, to the extent that there is a tangible item to mark by which notice of the asserted method claims can be given, a party is obliged to do so if it intends to avail itself of the constructive notice provisions of section 287(a).”4 This unequivocal statement seems to imply that, contrary to Hanson and Devices for Medicine, if a patent contains both method and apparatus claims, the marking requirements apply regardless of whether only the method claims are asserted. However, because both method and apparatus claims were asserted in American Medical, it can be reconciled with Hanson and Devices for Medicine if the holding is limited to its facts — namely, when both method and apparatus claims are asserted, the marking requirements definitely do apply.
Confusion over the proper interpretation of American Medical resulted in uncertain application of the marking requirements by the district courts. Some courts interpreted American Medical Systems to always require marking with respect to patents containing both method and apparatus claims.5 Other courts have reconciled American Medical with Hanson because both apparatus and method claims were asserted in American Medical, which made these courts comfortable concluding that if only process claims are asserted the marking requirements do not apply.
The Federal Circuit recently clarified the confusion regarding the marking requirements in Crown Packaging Tech. v. Rexam Beverage Can, holding that when only method claims are asserted in a patent containing both method and apparatus claims, the marking requirements do not apply.6 The court reconciled Hanson with American Medical by acknowledging that only method claims had been asserted in Hanson, whereas method and apparatus claims had been asserted in American Medical.
Prior to the decision in Crown Packaging, in State Contracting v. Condotte the Federal Circuit considered another difficult application of the marking requirements: whether the marking requirements apply to method claims when method and apparatus claims from related patents are both asserted.7 Specifically, one patent contained only method claims, and another patent — a divisional of the patent having only method claims — contained only apparatus claims. The court held that each asserted patent is evaluated independently. Thus, based on the rule that marking requirements never apply to patents directed only towards a process or method, the court held that the marking requirements did not apply to the patent that contained only method claims, despite the fact that system claims from a related patent were also asserted.
- Practical Impact
For plaintiffs who face a limitation on their recovery of damages for failing to comply with the marking requirements, Crown Packaging essentially provides a safe harbor that allows plaintiffs to avoid application of the marking requirements by only asserting the method claims of a patent containing both method and apparatus claims. In some circumstances this may be a steep trade-off for the plaintiff, as the scope of the method and apparatus claims in a patent often differ. However, in many cases the scope of method and apparatus claims are similar and the defendant’s actions may infringe both the method and apparatus claims. In those cases, the plaintiff loses very little from the unasserted apparatus claims, while potentially gaining a lot by avoiding the marking requirements and obtaining a full recovery.
From a prosecution standpoint, patentees can plan ahead to further take advantage of the exemption of method-only patents from the marking requirements. Patentees can isolate method and apparatus claims into separate patents by filing continuations. In this manner, if the patents are subsequently asserted in a patent infringement lawsuit and the plaintiff is facing a limitation on damages for failing to comply with the marking requirements, the plaintiff does not have to strategically decide to assert only method claims. According to State Contracting, because each patent is evaluated independently to determine if the marking requirements apply, both the method and apparatus claims from the respective patents can be asserted. Thus, even if the court finds that damages should be limited with respect to the apparatus claims, damages will not be limited with respect to the method claims that are contained in a separate patent.
The Federal Circuit decisions on marking, taken as a whole, represent a comparatively lenient interpretation of the duty to mark patented technology. In view of what was historically viewed as the strong policy bases for marking requirements, it is possible that the Federal Circuit may revisit these issues. On the other hand, a comparatively lenient application of the marking requirements may be here to stay, if courts reason that in an era of widely-available online patent resources and other informational advances, tangible marking is less than a sine qua non to provide notice to the public of the applicability of a patent. On balance, though, to the extent that there is a tangible article to mark by which notice of a method claim may be given, a conservative patent owner may continue to consider doing so, rather than rely on the case law-based “exemptions” of process claims from the marking requirements.