Lieberman & Brandsdorfer, LLC
May 12, 2021 12:10 EDT
A Reminder Regarding the Importance of Product Marking
By David S. Taylor, Esq.
Section 287(a) of Title 35 U.S.C. states that a patent owner may provide notice that an article imported or offered for sale is covered by a U.S. patent. The notice may include the number of the patent covering the patented article, with the notice affixed on the patented article, “or when, from the character of the article, this can not be done, by fixing to it, or to the package wherein [the patented article] is contained, a label containing a like notice.” Failure to so mark a patented article adversely affects the ability of the patent owner to obtain damages for infringement occurring prior to litigation, except on proof that the infringer was notified of the infringement before litigation was brought and continued to infringe thereafter.
Zadro Prods., Inc. v. Feit Elec. Co., Case No. SACV-20-101-JVS (C.D. Cal. Jan. 6,2021) serves as a reminder of the importance of marking the article itself, not its packaging, when feasible. In Zadro, the patent owner marked the packaging of its rechargeable LED vanity mirrors, but did not mark the mirrors themselves. The district court granted summary judgment precluding the award of pre-filing damages. The district court was not persuaded by several arguments of the patent owner that marking was not feasible or required. One of those arguments was that the industry standard was to mark packaging, not products. In rejecting this argument, the district court found that the argument, if accepted, would allow industries to effectively opt out of Section 287(a)’s marking requirement for no reason.