Patent infringement litigation is a minefield for the unwary. In addition to standard defenses, such as non-infringement of the patent claims by the accused product or invalidity of the asserted patent, some esoteric defenses are sometimes raised to defeat otherwise valid infringement claims.
Notice of the existence of a patent is a requirement under the US patent laws, and failure to provide appropriate notice results in severe limitations on recovery of damages. Under 35 U.S.C. §287(a), patent marking on the patented goods (or if not possible, then on the packaging associated with the patented goods) is required. If the goods are not marked with an appropriate notice, then damages incurred before actual notice of the patent cannot be awarded, and an infringer may only be enjoined from further infringement. Appropriate marking of patented products normally takes the form of "U.S. Patent No. 1,234,567" or "Pat. No. 1,234,567." If a patent application has been filed and has not been finally adjudicated to grant, appropriate marking of "Patent Pending" or "Pat. Pend" is permitted as prospective notice that a product may be later covered by a patent, when granted.
Goods that are properly marked provide constructive notice that the goods are patented. If patented goods are not properly marked, but the patent owner provides actual notice of the existence of a patent, for example, by sending a letter to a manufacturer of the accused goods drawing attention to the patent, then the measure of possible damages begins from the date the notice is received.
Care must be taken to only properly mark patented products since improper patent marking can also raise issues of unfair completion. Another patent statute, 35 U.S.C. §292, criminally penalizes a person who is found to engage in false marking of a product when no patent or application exists, and the statute permits any person to assert the statute against a person who is engaging in such conduct. Any damages recovered in such an assertion of the statute by a plaintiff are equally divided by the plaintiff and the U.S. Government. By statute, damages are limited to "not more than $500 for every such offense" and case law has deemed each instance of a false marking to be an offense. Thus if 2000 products are marked falsely, then each instance is an offense and subject to the penalty, with potential damages being $1,000,000.
The statute was included in a revision of the patent laws enacted in 1870. Similar laws, so called qui tam actions were passed during the Civil War to inhibit war profiteering. Private persons could bring such actions and a monetary incentive was provided, usually in the amount of one half of the recovery. Similar policing of the marking statute was intended as incentive to cause potential abusers of patent marking to abide by the patent laws. Two such actions have been filed in the Eastern District of Virginia, against Solo Cup and against Gillette, claiming that marking on products of expired patents constitutes false marking. This issue has survived a motion to dismiss, and will most probably create new precedent in the field of patent marking.
Vol. 53, June 2010