Marking Not Required When the Patentee Only Asserted the Method Claims

Holding: The Marking Statute, 35 U.S.C. § 287(a), Does Not Apply Where the Patentee Only Asserted the Method Claims of a Patent Which Included both Method and Apparatus Claims.

In Crown Packaging Tech., Inc. v. Rexam Beverage Can Co., No. 2008-1284 (Fed. Cir. Mar. 17, 2009), the Federal Circuit reversed the district court’s grant of summary judgment dismissing Rexam’s counterclaim based on a failure to mark, because it is “bound by our holding in Hanson v. Alpine Valley Ski Area, Inc., 718 F.2d 1075 (Fed. Cir. 1983)—that the marking requirement of 35 U.S.C. § 287(a) does not apply when only method claims are asserted.” Slip op. at 2.

The Federal Circuit observed:

“The marking statute, 35 U.S.C. § 287(a), requires that:

Patentees, and persons making, offering for sale, or selling within the United States any patented article for or under them, or importing any patented article into the United States, may give notice to the public that the same is patented, either by fixing thereon the word “patent” or the abbreviation “pat.”, together with the number of the patent, or when, from the character of the article, this can not be done, by fixing to it, or to the package wherein one or more of them is contained, a label containing a like notice. In the event of failure so to mark, no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice. Filing of an action for infringement shall constitute such notice.

Accordingly, a party that does not mark a patented article is not entitled to damages for infringement prior to actual notice.”

Id. at 12.

However, in Hanson, 718 F.2d at 1082–83, the Federal Circuit held that “35 U.S.C. § 287(a) did not apply where the patentee only asserted the method claims of a patent which included both method and apparatus claims.” Id. Here, “because Rexam asserted only the method claims of the ’839 patent, the marking requirement of 35 U.S.C. § 287(a) does not apply.” Id. at 13.