Making Your Mark

Zorro is not the only one who is concerned about making his mark.

As the reader may (read: should) be aware, a patentee who practices the patented invention is “entitled to damages from the time when it either began marking its products in compliance with 35 USC §287(a) or when it actually notified [the infringer] of its infringement, whichever was earlier … 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 … [such] notice.”¹

“Marking the packaging may result in compliance when the patentee has shown that marking the patented product raises concerns of feasibility or practicality.” This would apply, for example, where marking the patented product would require an additional “burdensome” manufacturing step or where the small size of a patented product could preclude physically marking the product.

So, what happens when the patentee marks the packaging, rather than the product, and the accused infringer – hoping to minimize the damages which might be awarded – argues that such marking does not meet the requirements of the statute? (Belden Technologies Inc. et al. v. Superior Essex Communications LP et al.)

Belden sued Superior, alleging infringement of several patents directed to high performance data cables and methods of making such cables. Not wishing to bear the cost and inconvenience of a trial, both parties filed motions for summary judgment. In one of these motions, Superior sought a ruling that Belden had failed to mark the patented product in accord with the statute.

Belden had been marking the cable packaging. Superior, obviously, argued that this was insufficient; that Belden had failed to demonstrate that marking on the cable itself “cannot be done.”

First, the Court held that, “[a]ssessing compliance with the marking statute is an inquiry amenable to disposition by summary judgment.”

Faced with the need to defend its decision to mark the product packaging, Belden argued that marking the product itself would have entailed additional manufacturing costs. Unfortunately for Belden, this argument foundered when its own employees testified to the contrary in a hearing on the motion. The Court decided that, “no reasonable jury could find that Belden’s choice to mark the product packaging rather than its patented products comports with the marking statute.”

Seeing defeat approaching, Belden then argued that Superior knew of the patents-in-suit for several years prior to the suit. "Not good enough," ruled the Judge. In the absence of proper marking, “[m]ere knowledge of the patents in suit is insufficient to place Superior Essex on notice of infringement, as Belden must show ‘the affirmative communication of a specific charge of infringement by a specific accused product or device’.”

Rather than keeping our avid readers in doubt, we report that the Court found some of the asserted patent claims valid and infringed. So, Belden won a partial victory – but will get reduced damages as a result of its bad choice as to marking.

THE LESSON TO BE LEARNED: If at all practical, MARK THE PRODUCT.
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¹ The marking statute does not apply where the patent is directed to a process or method.