Magistrate Judge Roy Payne’s recent Report and Recommendation in Huawei Technologies Co. Ltd, v. T-Mobile US, Inc. shines a spotlight on potential inconsistencies in Fed. Cir. precedent regarding patent marking, and provides some valuable insight to plaintiffs and defendants who may be involved in litigation over a patent’s method claims.
Section 287 of the Patent Act generally provides that persons making, offering for sale, or selling a “patented article” in the United States, or importing a “patented article” into the United States, can’t recover damages for patent infringements occurring before the infringer was notified of its infringement unless the “patented article” was properly marked.
Applying this rule to patents covering methods and processes has presented challenges. The Fed. Cir. has explained that method claims are exempt from the marking requirement when there is nothing to mark, but if there is a tangible item that could be marked to provide the public with notice of the method claims, then patentees should mark those items or risk missing out on past damages. Am. Med. Sys., Inc. v. Med. Eng’g Corp., 6 F.3d 1523, 1538 (Fed. Cir. 1993). More recently, the Fed. Cir. also ruled that marking requirements do not apply if the patentee asserts only the method claims of a patent. Crown Packaging Tech., Inc. v. Rexam Beverage Can Co., 559 F.3d 1308, 1316 (Fed. Cir. 2009).
Relying on Crown Packaging, Plaintiff Huawei Technologies Co. Ltd. argued that damages for its asserted method claims shouldn’t be impacted by it is failure to mark. But, noting the Fed. Cir.’s potential inconsistency, Magistrate Judge Payne refused to apply the marking statute in a claim-by-claim fashion. In his view, the patent marking statute should not depend on the type of patent claims that are asserted. Nonetheless, because Huawei had asserted both method claims and apparatus claims, Magistrate Judge Payne found that Huawei’s failure to mark should bar its past damages.
There are a few tasks litigants and potential litigants can perform to avoid being tripped up by the Fed. Cir.’s potentially unclear marking precedent. Patentees should examine their marking practices and consider expanding them to include products relating to their patented methods. Non-marking patentees should also consider asserting only their method claims to take advantage of the favorable Fed. Cir. precedent and potentially avoid the limitations of the marking statute. Accused infringers, on the other hand, should carefully analyze whether the patentee failed to mark products that would have effectively provided notice of the asserted patent’s method claims. These tasks can be well worth the added effort when years of potential damages are on the line.