In a patent infringement case, damages begin to accrue when the accused infringer (the “scum-sucker”) is given notice of the infringement. Notice may be “actual” – a letter, an email, a slap in the face – or it may be “constructive.” Constructive notice occurs when the patentee (the “good guy”) or a licensee markets a product marked with the number of the patent.
If the patent is not commercialized, i.e. no patented product is sold, the marking requirement is excused and the mere issuance of the patent is deemed to constitute constructive notice. However, if the patentee or a licensee markets a patented product without the appropriate patent marking, no damages accrue unless and until the scum-sucker is given actual notice of its infringement.
If the patentee has multiple licensees, they all must mark their products. Failure of even one amongst many is fatal. So, when he gets to court, what does the good guy have to do to establish that all of his licensees have been properly marking their licensed products? (von Holt v. A-1 Tool Corp.)
Von Holt sued A-1 for patent infringement. A-1 moved for a summary judgment that it had not received constructive notice of the patent. Specifically, A-1 argued that von Holt had failed to establish that all of the licensed product had been properly marked. von Holt, deeply affronted, responded that it was company policy that all patented products sold by itself or its licensees, be appropriately marked.
Not good enough, said the Court. “Evidence of current company policy and practice, without any other evidence of compliance with the marking requirement during the relevant time period, is insufficient to overcome a motion for summary judgment … The plaintiffs merely speculate that [patented products] sold … would have been marked based on their policy and practice. Importantly, they fail to offer any photographs, affidavits, testimony, or supplementary declarations from any … customers confirming marking on [the patented products].”
THE LESSON TO BE LEARNED: When you need to prove something, INTRODUCE EVIDENCE!
It's kind of unbelievable that Von Holt produced no evidence of marking. Even a first-year law student knows that such blanket assertions, unsupported by evidence, are a no-no. I hope their legal team has a malpractice insurance policy.