MVS Filewrapper® Blog: USPTO Issues Report on Virtual Patent Marking Under the AIA

Among the provisions of the America Invents Act that went into effect on September 16, 2011 was a change to the patent marking provisions contained in 35 U.S.C. § 287(a).  Marking an article as with a patent number provides constructive notice to the public that the article is patented, and failure to appropriately mark an article can preclude the recovery of damages for infringement until effective notice is given. The revised marking statute allows patent owners to identify their products with the web address containing the patent information, limits false marking lawsuits to those filed by the U.S. government or by a competitor who can prove competitive injury, and does away with provisions making it a violation to mark a product with a patent that covered the product, but has since expired.


The USPTO has issued a Report on Virtual Marking that provides analysis of the effectiveness of virtual marking under the AIA; whether virtual marking has limited or improved the ability of the general public to access information about patents; legal issues, if any, that arise from virtual marking; and any deficiencies arising from virtual marking.  The report is based on comments solicited by the USPTO, along with independent research. 


The conclusion the USPTO Report is that virtual marking has likely met its intended objectives of reducing manufacturing costs and facilitating public notice.  The Report identifies several benefits demonstrated by the analysis, in particular the ability of patent owners to dynamically update patent information, to provide a real-time, complete list of associated patents, and to include additional patent-related information, which all may help increase transparency by improving the public’s ability to access a wider scope of information about relevant patents.  The Report also notes that there is little applicable case law on the subject, due to the recency of the new marking provisions, and that virtual marking may have deficiencies that are not yet totally apparent, and as a result the issues may need to be revisited at a later date. 


The full report is available here.

Federal Circuit decisions address false marking statute in Solo Cup and Brooks Brothers cases

The Federal Circuit continues to address false marking cases. The court's recent decisions stress how important it is for patentees to monitor and update their labeling and other marking activities, particularly as patents expire.

In June, the court affirmed a summary judgment decision in favor of Solo Cup related to the company's practice of marking patents on beverage cup lids, and addressed whether each decision to mark or each article falsely marked is an act of false marking under the statute.  In August, the court addressed the issue of who has standing to bring a false marking case, reversing a district court's finding of lack of standing in a false marking case brought against Brooks Brothers. 

The Solo Cup case demonstrates the potential damage awards against companies that sell numerous products can be very large.  However, the court created a higher bar for plaintiffs seeking to cash in on the false marking statute and demonstrates the importance for a defendant to be able to show good faith actions to overcome any presumption of intent to deceive the public.

The Brooks Brothers case provides a lesson on standing under 35 U.S.C. § 292.   The Federal Circuit held a plaintiff has standing as a result of sufficiently alleging an injury in fact to the U.S. that was caused by Brooks Brothers' false marking of its bow ties, that may be redressed with the statutory fine created by § 292.  This removes a potential barrier to false marking suits being filed in the first instance.

More detail of these two cases after the jump.


False marking applies on a per article basis, not a per decision to mark basis

In Forest Group v. Bon Tool Co., the Federal Circuit held that the false marking statute applies on a per article basis, rather than on a per decision to mark basis.  The Federal Circuit reversed the district court, which had imposed a fine of $500 for a single decision to falsely mark a shipment of stilts as patented when they were not patented, and instructed the district court to recalculate the fine based on the total number of stilts that were falsely marked.

More details of Forest Group v. Bon Tool Co. after the jump.


Reliance on initial expert for rebuttal sufficient to defeat summary judgment

In a decision Tuesday, the Federal Circuit reversed grants of summary judgment in favor of both parties.  The defendant was granted summary judgment of noninfringement, and the plaintiff (and counterclaim defendant) was granted summary judgment on the grounds of no marking under 35 U.S.C. § 287.  Both parties appealed.

The Federal Circuit determined there was a genuine issue of fact regarding infringement under the doctrine of equivalents of the plaintiff's patent.  Only one element of the claim was disputed, and the plaintiff's expert provided a detailed analysis under the function-way-result test.  In response, the defendant's expert testified there were two additional functions of the element in the accused device.  In reply, the plaintiff's expert referred to his previous analysis without explicitly rebutting the defendant's expert's claims.  The Federal Circuit stated the plaintiff's "decision to refer to the evidence already before the court should not be fatal," and held there was sufficient evidence to generate a question of fact on the issue of infringement.  Accordingly, the court reversed the district court's grant of summary judgment on this issue.

Regarding the marking issue, the Federal Circuit noted the defendant only asserted infringement of method claims in its counterclaim.  As such, the Federal Circuit held it was bound by its decision in Hanson v. Alpine Valley Ski Area, Inc., which held that marking is not required when only method claims are asserted in a case.  As such, any failure to mark was irrelevant to the defendant's counterclaims of infringement, and the district court's summary judgment on this issue was reversed as well.

More detail of Crown Packaging Tech., Inc. v. Rexam Beverage Can Co. after the jump.


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