Simonian v. Blistex, Ciba, Pfizer, 3M, Edgecraft, Darex, Cisco, Bunn-O-Matic, Oreck, Novartis, Merck, etc. (N.D. Ill. 2010)
Thomas Simonian is a self-described “individual living in Geneva, Illinois.” In a series of at least 27 complaints filed in the past few days, Simonian has raised the stakes of the Federal Circuit’s false marking jurisprudence. Most of the complaints assert false marking claims based on the continued marking of products with now-expired patents. However, a few cases focus on marked products that are allegedly not covered by the patent rights. For instance, in Simonian v. 3M, the plaintiff asserts that the 3M patent requires a “hook portion” but that the marked 3M “Command Strips” do not include that feature.
The cases were filed by the Chicago-based law firm of Vanek, Vickers & Masini.
- Simonian Cases: Simonian v. Blistex, Inc.(Blistex); Simonian v. Ciba Vision Corporation (Clear Care); Simonian v. Hunter Fan Company (thermostat); Simonian v. Mead Westvaco Corporation (envelopes); Simonian v. Fiskars Brands, Inc. (Fiskars scissors); Simonian v. Pfizer, Inc. (Pfizer); Simonian v. Pella Corporation (Pella windows); Simonian v. 3M Company; Simonian v. The Quigley Corporation; Simonian v. Edgecraft, Corp.; Simonian v. Tru Fire Corporation; Simonian v. Darex, LLC; Simonian v. Cisco Systems, Inc.; Simonian v. Novartis Pharmaceuticals Corp.; Simonian v. Bunn-O-Matic Corporation; Simonian v. Kimberly-Clark Corporation et al; Simonian v. Merial L.L.C. et al; Simonian v. Weber-Stephen Products Co.; Simonian v. Oreck Corporation et al; Simonian v. BP Lubricants USA, Inc.; Simonian v. Irwin Industrial Tool Company; Simonian v. Novartis Animal Health US, Inc.; Simonian v. Novartis Consumer Health, Inc.; Simonian v. Monster Cable Products, Inc.; Simonian v. Global Instruments, Ltd. et al (Riddex); Simonian v. Merck & Co., Inc. et al; Simonian v. Advanced Vision Research, Inc.
- Other Recent False Marking Cases: O’Neill v. Roche Diagnostics Corporation; Akbar v. Proctor & Gamble Co.; Josephs v. Federal-Mogul Corporation; Josephs v. Sigma-Aldrich Corporation; Seirus Innovative Accessories, Inc. v. Cabela’s, Inc.; Yarbough v. S.C. Johnson & Son, Inc. et al.
Has anyone found the case law regarding an inventory exception for patent marking? I’ve tried using the search field on this site as suggested above and have spent an hour on Lexis but thus far not found anything at all.
“WARNING — this post is not for butwhole retentive attorneys”
Best comment intro EVAR. JAOI, I like your style.
WARNING — this post is not for butwhole retentive attorneys — WARNING.
And I do not want to hear any complaints!
How Fights Start —
My wife sat down on the sofa next to me as I was flipping channels. She asked, “What’s on TV?”
I said, “Dust.”
And then the fight started….
******************************************
My wife and I were watching “Who Wants To Be A Millionaire” while we were in bed. I turned to her and said, “Do you want to have nucky?”
“No,” she answered.
I then said, “Is that your final answer?”
She didn’t even look at me this time, simply saying, “Yes.”
So I said, “Then I’d like to phone a friend.”
And then the fight started….
******************************************
Saturday morning I got up early, quietly dressed, made my lunch, and slipped quietly into the garage. I hooked up the boat to the van, and proceeded to back out into a torrential downpour. The wind was blowing at 40 mph, so I pulled back into the garage, turned on the radio, and learned that the weather would be bad all day.
I went back into the house, quietly undressed, and slipped back into bed. I cuddled up to my wife’s back, now with a different anticipation, and whispered, “The weather out there is terrible.”
My loving wife of 5 years replied, “Can you believe my styoupid husband is out fishing in that?”
And that’s how the fight started….
******************************************
I rear-ended a car this morning. So, there we were alongside the road and slowly the other driver got out of his car. You know how sometimes you just get soooo stressed and little things just seem funny? Yeah, well I couldn’t believe it…. He was a DWARF!!! He stormed over to my car, looked up at me, and shouted, “I AM NOT HAPPY!!!”
So, I looked down at him and said, “Well, then which one are you?”
And then the fight started….
*****************************************
My wife was hinting about what she wanted for our upcoming anniversary. She said, “I want something shiny that goes from 0 to 150 in about 3 seconds.”
I bought her a bathroom scale.
And then the fight started….
******************************************
After retiring, I went to the Social Security office to apply for Social Security. The woman behind the counter asked me for my driver’s License to verify my age. I looked in my pockets and realized I had left my wallet at home. I told the woman that I was very sorry, but I would have to go home and come back later.
The woman said, “Unbutton your shirt.” So I opened my shirt revealing my curly silver hair. She said, “That silver hair on your chest is proof enough for me,” and she processed my Social Security application.
When I got home, I excitedly told my wife about my experience at the Social Security office.
She said, “You should have dropped your pants. You might have gotten disability, too.”
And then the fight started….
******************************************
My wife and I were sitting at a table at my school reunion, and I kept staring at a drunken lady swigging her drink as she sat alone at a nearby table.
My wife asked, “Do you know her?”
“Yes,” I sighed, “She’s my old girlfriend. I understand she took to drinking right after we split up those many years ago, and I hear she hasn’t been sober since.”
“My God!” says my wife, “who would think a person could go on celebrating that long?”
And then the fight started….
******************************************
I took my wife to a restaurant. The waiter, for some reason took my order first. “I’ll have the steak, medium rare, please.”
He said, “Aren’t you worried about the mad cow?”
“Nah, she can order for herself.”
And then the fight started….
******************************************
A woman was standing nude, looking in the bedroom mirror. She was not happy with what she saw and said to her husband, “I feel horrible; I look old, fat and ugly. I really need you to pay me a compliment.”
The husband replied, “Your eyesight’s darn near perfect.”
And then the fight started
Dear Consumer product IP lawyer,
Marking requirements have always been a sticky wicket.
Your advice is an excellent suggestion.
Well, my advice to one of my clients.
Mark the patent numbers as follows: U.S. Patent No. 7,xxx,xxx (expiring yy/yy/yyyy).
This assumes the product being marked has sufficient real estate that can be devoted to this.
Also, the related argument that “it may be willful and it may be infringement, but neener neener no damages shall be recovered by you”.
Better than that – “Neener neener, TRIPLE no damages shall be recovered by you!”
“Is this copying willful infringement? In a sense, it is not, because it is authorized by the statute. That is a argument that somebody is going to make someday.”
Also, the related argument that “it may be willful and it may be infringement, but neener neener no damages shall be recovered by you”.
NAL, true, the PO has the option of giving actual notice, but the infringer has a pass granted by the marking statute to “willfully infringe with impunity until notified or sued. In essence, one can copy an unmarked product and be assured that he is not going to be liable in damages for a patent on that product until actually notified.
So, when asked for an opinion on a patent, every good practitioner should ask whether the PO is selling a product covered by the patent and whether it is marked. If the answer is that the product is covered and it is not marked, there are no damages regardless of whether the patent is infringed.
Is this copying willful infringement? In a sense, it is not, because it is authorized by the statute. That is a argument that somebody is going to make someday.
I understand your hang-up, but its about constructive notice, not actually having notice. Counter-intuitive, I know.
I know the difference between constructive notice and actual notice. That’s why I didn’t say anything like “has never seen the product”. The notice of the NPE’s patent via the patent office is just as constructive.
I’m questioning the policy that links constructive notice of a *patent* to a presumed awareness of a *product*. Why should a single embodiment give (or defeat) constructive notice as to the entire scope of a patent?
What if you assert apparatus claims that don’t cover your unmarked product, in a patent that also has claims covering your product? Why should an unasserted claim that doesn’t invalidate the patent affect your entitlement to damages?
IANAE,
I understand your hang-up, but its about constructive notice, not actually having notice. Counter-intuitive, I know.
Patent marking law doesn’t make all that much sense…
NAL: “The non-substantive, handwaiving, hoorah-getting-pummeled sock puppet chorus is merely fluff.”
When you’re handwaiving, does that mean you relinquish your hands?
IANAE: And if he’s going to infringe your patent without copying your product, what’s the point of any of this?
MM: Is this an existential question?
No, it’s a serious question. The premise is that the infringer must be on notice to be liable for damages, right? Well, why does a marked product effect notice for anything other than the exact product? Suppose you make and mark product A. I make product B which isn’t really that similar to product A, and is not an attempt to copy product A. Some small component of product B happens to infringe the patent you marked on product A.
What did I really have notice of? That your patent exists generally? That making product A infringes a patent? That I should go look up the patent to make sure my different product B also does not infringe? That I should check all my market competitors’ products for marked patents before selling anything?
I don’t think a marking gives notice of anything more than the marker’s belief that the actual marked product would infringe his patent. If at that point you still have to look up the patent to see whether your product infringes it, the marking gives no more notice than the published patent itself, and people should be paying damages for all past infringements.
Mr. Hobbes, if your view is different, or in addition to the cites provided, please join in with your feedback.
Noise, I am flattered once more that you think of me. However, I’m not sure what the question is.
interestingly the claims of the 581 patent that Simonian is mentioning in the case against 3M do not call for a hook 🙂 oops…
Hey Mooney, you forgot about the
unordered list tag
The stories of my demise have been more than slightly exagerated.
Unlike Malcolm, I can share the playground.
I will review the case law cited and augment my learning – as Ned can attest, not all case law cited holds for what it is cited for.
I LOVE the feedback with substantive material. Such does allow me to grow. The non-substantive, handwaiving, hoorah-getting-pummeled sock puppet chorus is merely fluff.
Mr. Hobbes, if your view is different, or in addition to the cites provided, please join in with your feedback.
As to the Undertaker – get a grip – the mark IS the status is an UNtouched element of my maxim.
Or do you have any legal thoughts on the matter?
…thought not.
“What do you want on your tombstone?”
“The mark IS the status.”
tags on,tags OFF.
tags On, tags OFF.
wax on,wax OFF.
Wax On, WAX off.
Heh, heh, Butthead, he said Whacks….
I like this thread. NAL is getting pummeled from all directions and Mooney is seeing how many different HTML tags he can leave open. Quite entertaining!
Let’s try again
IANAE: why should selling unmarked product (marking is optional, remember?) in an attempt to monetize your invention place your patent in the public domain more than not practicing the patent at all?
I don’t think this is an accurate description of the dynamic. The marking statute (287(a)) is designed to encourage marking of a patented product, in part, so when the public sees the product, the public knows that it’s patented. Unless there’s a reason to suspect false or expired marking, members of the public do not have to waste their time and money attemping to sell copies.
If there’s no patented product to see, it’s a moot issue.
If someone’s going to copy your product, shouldn’t the law make it reasonable for him to look into the legalities of that course of action?
That’s what the marking statute already does: the first place to “look into the legalities” is on the surface of the article itself.
Our current system of patent laws also makes it reasonable to look into the legalities of manufacturing any article, marked or unmarked, unless the product is known to be covered by an expired patent, or you already own the patent. Even then, you have to worry about method claims.
And if he’s going to infringe your patent without copying your product, what’s the point of any of this?
Is this an existential question?
IANAE: If you see a product in the US without a patent number on it, go ahead and rip it off. No charge.
That is bad advice. Any money invested in special machinery/labor to produce the product may be wasted if the product turns out to be patented. Not to mention the time, which can never be regained.
Is that really good policy, considering that all patents are easily available to the public?
I think it’s still good policy. It can take a lot of time and a lot of money to determine whether a product is patented. There needs to be an incentive or requirement on manufacturers of patented goods to mark their products so that when the public sees an article, they can determine quickly if it’s patented.
I also think that it should be easier for “members of the public” to discover the exact date of expiration of a patent.
why should selling unmarked product (marking is optional, remember?) in an attempt to monetize your invention place your patent in the public domain more than not practicing the patent at all?
I don’t think this is an accurate description of the dynamic. The marking statute (287(a)) is designed to encourage marking of a patented product, in part, so when the public sees the product, the public knows that it’s patented. Unless there’s a reason to suspect false or expired marking, members of the public do not have to waste their time and money attemping to sell copies.
If there’s no patented product to see, it’s a moot issue.
If someone’s going to copy your product, shouldn’t the law make it reasonable for him to look into the legalities of that course of action?
The law now makes it reasonable to look into the legalities of manufacturing any product unless the product is known to be covered by an expired patent, or you already own the patent. Even then, you have to worry about method claims.
And if he’s going to infringe your patent without copying your product, what’s the point of any of this?
Is this an existential question?
Now that we’ve established that Paul Morgan was right (last week!) about the marking law penalizing non-NPPs (PPs? NNPPs?), can we discuss that issue?
The only reason I can think of is to place unmarked products in the public domain. If you see a product in the US without a patent number on it, go ahead and rip it off. No charge. Is that really good policy, considering that all patents are easily available to the public? I can see how it might have been justified when patents were only available physically at the patent office and there was no electronic way to search them, but can’t we put this old-timey silliness behind us?
Also, why should selling unmarked product (marking is optional, remember?) in an attempt to monetize your invention place your patent in the public domain more than not practicing the patent at all? If someone’s going to copy your product, shouldn’t the law make it reasonable for him to look into the legalities of that course of action? And if he’s going to infringe your patent without copying your product, what’s the point of any of this?
I’m quite curious to see how it turns out.
[passes popcorn]
Let me know if it needs more butter.
Ah, kind of reminds me of the infamous dissection of the 112, first paragraph. That, too, was a fabulous waste of time.
This exchange is even more fascinating, if you ask me. I’m quite curious to see how it turns out.
And it helps to research the caselaw. No lawyer worth his salt reads the statute in isolation.
I’m sending you a bill for this banter.
NAL your reading comprehension fails you – note the conjunctive subject – there are two groups being discussed -and the practice options given here, after the conjunctive “and” are only descriptive of the second group.
Ah, kind of reminds me of the infamous dissection of the 112, first paragraph. That, too, was a fabulous waste of time.
The thing about “reading comprehension,” NAL, is that it’s important to remember the context. 287(a) is all about marking patented articles. You can count commas until your blue in the face but that fact isn’t going to change. And it’s that fact that ultimately blows your construction to pieces because if there isn’t a patented article to be marked, 287(a) is simply irrelevant.
… your reading comprehension fails you – note the conjunctive subject – there are two groups being discussed -and the practice options given here, after the conjunctive “and” are only descriptive of the second group. The NPE is the patentee – and merely falls to the first part of the conjunctive – they NEED NOT do the items listed –as those describe requirements for the others, the second half of the conjunctive subject.
Noise, I now understand completely how you get to your position. You’re right to the extent that Congress did a horrible job of drafting this particular statute. In any event, the courts have effectively held that Congress meant to say “patentees making, offering for sale, or selling any patented article within the United States, and persons making, offering for sale, or selling any patented article for or under them, within the United States…”
Once more, Section 287(b) is unrelated to the marking/notice provisions of Section 287(a), and is not of much use in interpreting the earlier subsection. It’s a completely distinct notice provision that applies only to the fairly rare 271(g) infringement situation. You’re right that it is also about “notice.” However, you might note that 287(c), which spells out yet another limitation of the patent right, has nothing to do with “notice” at all.
Agreed, IANAE.
NAL Except – that’s exactly what I said.
Respectfully, you did not say “exactly” what I said. And respectfully, it’s your inability to express yourself coherently and your tendency to misquote and mischaracterize others (e.g., “that’s exactly what I said”) which has earned you those red welts on your hairy behind.
287(a) applies to patentees who are making patented articles and to persons who are making patented articles for or under patentees. It does not apply to anybody who is not making a patented article. Not only is this the best and most sensible reading of the statute, but it is the law.
Just because you are an NPP, does not mean that 35 USC 287 does notapply to you.
Never give up the good fight, NAL.
…if it’s not deliberate, it’s really just sad. Even if it is deliberate, it’s still kinda sad.
Arguably, assertion of both method and apparatus claims from one patent, where after litigation only the method claims are found infringed may, even in the absence of marking, lead to pre-suit damages.
Equally arguably, those damages for the method claims shouldn’t depend on whether the apparatus claims are infringed. The law only excludes damages with respect to a product, leaving the process liable in any event.
Anyone else – I will look at that – however the distinction is NPP (who may license others – the second half of the conjunctive) and practicing entities.
Just because you are an NPP, does not mean that 35 USC 287 does notapply to you.
Crown Packaging is an interesting case Mooney for its “revitalization” of Hanson after the American Medical case. Arguably, assertion of both method and apparatus claims from one patent, where after litigation only the method claims are found infringed may, even in the absence of marking, lead to pre-suit damages.
malcolm,
Another attempt, another failure. The word “may” indicates only that it is not illegal to fail to mark a patented product that you are making or selling in the manner described by the statute (the alternative term would be “shall” or “must”). A practicing entity won’t collect damages if it fails to mark its article as described UNLESS the practicing entity provides an alternative form of notice to the infringer.
Except – that’s exactly what I said. Your error is using practicing entity (also not there – see above). You have no basis for excluding NPP’s.
You also supply a note about process – that applies equally to be practicing and NPP’s – such your attempted statement is at best a non sequitur.
The PS section I supplied deals with inventions that are not processes – and that applies equally to all patentees – note the law does nto say patentees that practice – ALL patentees.
you should recognize that it fully applies to NPP’s.
Tell it to the Federal Circuit in Texas Digital.
“The recovery of damages is not limited where there is no failure to mark, i.e., where the proper patent notice appears on products or where there are no products to mark.”
Seems pretty straightforward to me. No product to mark equals no failure to mark equals no limit on recovery of damages.
NAL since patents are a negative right, NPP’s “practice” their invention simply by owning it
Turn out the lights when you’re finished, okay?
“Anyone else” beat me to the better case law — well done! I knew I should have spent more than five seconds looking but Crown Packaging seemed to do the job well enough.
INANE,
Ironic – I did say “boiled down to” which excuses my use of a different word – you attack, except you yourself also used a word not there – practicing.
Better yet – using your own word, since patents are a negative right, NPP’s “practice” their invention simply by owning it, and since, you are the master of remedy – and this section falls to remedy for the patentee, you should recognize that it fully applies to NPP’s.
As to the explicit list, your reading comprehension fails you – note the conjunctive subject – there are two groups being discussed -and the practice options given here, after the conjunctive “and” are only descriptive of the second group. The NPE is the patentee – and merely falls to the first part of the conjunctive – they NEED NOT do the items listed –as those describe requirements for the others, the second half of the conjunctive subject.
Anyone else – are NPP’s considered patentees? (hint the answer is yes – and is enough for the trigger)
kill bold
NAL Patentees, and others may give notice to the public that the same is patented.
Nice try. As pointed out already, the word “others” is not in 287(a). 287(a) refers to patentees and “persons making, offering for sale, or selling within the United States any patented article for or under [the patentees]”.
287(a) has no relevance to NPEs because NPEs are, by definition, not selling any articles.
The primary verb here is give notice, or rather, MAY give notice.
The fact that “the event of failure so to mark’ and the word MAY are used indicates that this law covers MORE THAN marking alone.
Another attempt, another failure. The word “may” indicates only that it is not illegal to fail to mark a patented product that you are making or selling in the manner described by the statute (the alternative term would be “shall” or “must”). A practicing entity won’t collect damages if it fails to mark its article as described UNLESS the practicing entity provides an alternative form of notice to the infringer.
“The law is clear that the notice provisions of § 287 do not apply where the patent is directed to a process or method. Bandag, Inc. v. Gerrard Tire Co., 704 F.2d 1578, 1581 (Fed. Cir. 1983). In Hanson, 718 F.2d 1075 (Fed. Cir. 1983)—we 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. Hanson is factually identical to this case, and we are therefore bound by the rule of Hanson.”
Judge Moore, Crown Packaging v. Rexam Beverage (Fed. Cir. 2009)
As Dennis noted, under Crown Packaging, “the patentee is free to claim damages back six years under Section 286 even without marking or providing actual notice.”
If there is no article to be marked, notice is not required to obtain past damages.
Noise,
You have plainly not researched this issue. There is no duty to mark when a patent is not being practiced. Texas Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1219 (Fed. Cir. 2002) (citing Wine Ry. Appliance Co. v. Enter. Ry. Equip. Co., 297 U.S. 387, 395-98 (1936) (“Penalty for failure implies opportunity to perform.”)).
This discussion with Noise Above Law reminds me of The Shawshank Redemption, “How can you be so obtuse? Is it deliberate?”
NAL, I suggest you check out what happens in real life. Patentees having no product to mark get the full 6 years of past damages.
This is also the case for owners of method patents, except for a few “sport” cases regarding method patents where the district court decided (for example) that the patentee’s website was integral to his patented method, and therefore was an appropriate tangible object he should have marked.
Even assuming that there is generally no liability for damages without notice, why is a marked product considered effective notice (or lack thereof a failure to give such notice) for infringement by the making, using or selling of a non-identical product?
In other words, why are damages over the entire scope of the patent hinged on the marking of a single embodiment? How do we know that marking with respect to the the “patented article” (whatever that means) in 35 USC 287(a) gives notice with respect to the “any product”/”that product” in 35 USC 287(b)(2)?
Bonus points if you can make out a case for that notice without requiring the infringer to go look up the patent.
Noise,
The NPP can’t “fail to mark” because no obligation to mark is triggered per the first part of 287(a).
P.S.
You may also consider my reference to 35 U.S.C. 287(b). While I had referenced a different subsection and you had responded that you deemed that only apply to processes, (b)(2) applies to products:
(2)No remedies for infringement under section 271(g) of this title shall be available with respect to any product in the possession of, or in transit to, the person subject to liability under such section before that person had notice of infringement with respect to that product.
Here, you can see that the point of the section is not to “mark”, but rather to “notice”. An NPP looking for remedy clearly must satisfy “notice”.
Patentees, and others may give notice to the public that the same is patented.
Sorry, where in 35 USC 287 do you see the word “others”? It clearly only applies to patentees practicing the invention and those practicing under them. It’s silent about whether or how NPPs might give notice.
As an NPE cannot mark, they automatically fall to the “failure so to mark”, and must rely on the exception clause.
Skydivers may use parachutes. In the event of failure so to use, (bad thing etc.)
As a non-practicing skydiver, am I subject to the consequence for failure so to use?
Bonus question: what if it said “shall have the power to give notice”?
NAL I am heartened that many comments hear are actually in debate of legal matters … the level of discussion for the most part has been uplifting. Those pursing discussions for legal edification should be applauded – those seeking to merely distract should be disparaged.
What does this have to do with marking?
Mr Hobbes,
Can you explain the part of 35 U.S.C. 287(a) that details the exception to the event of failure to so mark?
This, I believe is key to our differing opinions. Insofar as you think a blanket six years is possible by merely being an NPE, I read this differently. As an NPE cannot mark, they automatically fall to the “failure so to mark”, and must rely on the exception clause.
I read this as the first paragraph, first sentence can be boiled down to:
Patentees, and others may give notice to the public that the same is patented.
Patentees and others – clearly envisions that there will be some that merely hold the patent (NPP’s).
The primary verb here is give notice, or rather, MAY give notice.
The fact that “the event of failure so to mark’ and the word MAY are used indicates that this law covers MORE THAN marking alone.
As I have posted – I believe that you have fixated on the marking portion, and you are missing both the NPP as patentee and the what to do if not marking exception.
I think that the limitation itself concerns not only marking, but notice (again, marking is an expediant, even preferred subset – but still only a subset).
I think that NPP is covered by the patentee phrase and is NOT excused, merely by being a NPP. I do not see how you are reading otherwise.
My mind is open – I am listening.
“[…] in practice, NPP’s have every right to their property that in certain cases are just as violated as if they were practicing entities […] Your line of thought misses the fact that the rights are indeed above the fray as I mentioned. […]”
Could you please point out exactly where my line of thought suggested that NPPs rights are not “legitimate”, which is what I believe you intimate.
“Therein 35 USC287(a) is MORE difficult for the NPP – it has to forego the expediant option.”
This is a falacy. Filing of an action for infringement shall constitute such notice. QED.
Finally, when the utility patent term expires, am I no longer allowed to practice my new design?
You can still practice the design, but (1) you should probably charge $500 more for it, and (2) you should add more twists for the design patent number.
You’d also be in the unusual position of charging more for an off-patent product than when it was patented.
So I get a utility patent on a new type of wind intrument.
Fifteen years later, I make a version of that instrument that is twisted into the shape of the patent number.
Next I get a design patent on the new design for that new type of wind instrument.
Finally, when the utility patent term expires, am I no longer allowed to practice my new design?
NAL you are entirely off-base.
Mr. Hobbes – you glossed over this as well.
Respectfully, Noise, I did not. I explicitly addressed this in the final four sentences of my post. An NPP does not have to provide notice at all.
“Therein 35 USC287(a) is MORE difficult for the NPP – it has to forego the expediant option.”
I’ve read through your and Hobbes arguments in this regard.
Here’s the upshot. The idea that the NPP has to “forego the expedient option” is immaterial.
The NPP need only file suit and it has all 6 years of past damages available to it. This is what happens in real life.
The widget manufacturer who fails to mark, only has damages from the date of filing suit or other actual notice. This is what happens in real life.
“unless actual notice has been given.”
Mr. Hobbes – you glossed over this as well.
Do you see how easy it is to focus only on “mark” and lose track of “notice”?
Again – notice is different than marking – you cannot wipe clear the effect on an NPP – notice is still a requirement (it might help to think of marking as a special subset), rather than say “since marking is not possible, notice is not possible and thus the requirement of notice does not apply, the law becomes (for NPP’s) requirement of notice cannot be acheived through marking.
Two very different levels of undertaking.
Therein 35 USC287(a) is MORE difficult for the NPP – it has to forego the expediant option.
“For NPP’s . . . MUST take some other arduous route to provide “notice” and cannot take the expedient route. If anything, the loss of back damages without actual notice is not given such an expedient route – you have proven the opposite point you desired.”
NAL, could you please explain this? I am pursuing legal edification. Thx.
For NPP’s (in deference to Mr. Hobbes’s distinction, which I do like), MUST take some other arduous route to provide “notice” and cannot take the expedient route.
I think this is precisely the point at which we’re talking past one another, Noise. The second sentence of 35 USC 287(a) makes back damages unavailable for failure to mark, unless actual notice has been given. A NPP cannot fail to mark, as it has nothing to mark. Thus, this limitation on damages (which can be regarded as a partial affirmative defense) simply does not apply to NPP. As a result, the NPP does not have to provide notice at all – this is clearly the least arduous route possible. If you’d like a case citation to back this up, let me know.
“In other words, infringement of a PE’s patent is intentional, but infringement of a NPE’s patent is strict liability.”
No, infringement of PE’s patents is not an intentional tort, it is also strict liability. The difference is that under 287(a) there may be no infringement damages for a PE. However, the determination of infringement alone could trigger other damages, e.g. contractual.
The “positive” vs. “negative” debate is academic and tangential.
First off, I am heartened that many comments hear are actually in debate of legal matters, rather than the usual litany of diversions and flame baiting (mind you I amnot shy of returning flame – if that’s in doubt).
So let’s handle the diversions and get them out of the way.
IANAE – how is your comment even relevant to the topic at hand?
To your “I keep forgetting that I have to spell everything out for you.” And “Let me know if you need another hint.”
I reply:
You keep forgetting to keep my actual words in mind
So I need another hint. Again what does your comment have in relevance to this issue? It appears that you are intent on attacking me and conflating issues. I thought you were not going to do that.
My challenges to the system are large scale and NOT “whenever one gets processed less than perfectly”. NO ONE HAS EVER ASKED FOR PERFECTION. Why do you persist in your extremist-redirections of views that I do not hold?
Do you like arguing phantom points? Or do you merely find it irritating that my points are actually based in Law and you keep losing when we debate, having to run from answering my actual questions?
So please, give me another hint – this one based in reality, not in your made-up-extrem-misdirection-so-you-can-attack phantasy world, m’K?
(while writing my note I see that IANAE has engaged in an actual legal discussion – kudos are due, so please discount the harshness of my tone above by 17%)
MrModesty,
Please take my stance on marking for what it is – see the posts above about the two prongs and the inventory issue. Please realize that in creating the mantra of my maxim, the beauty is in its Truth AND Simplicity. For any particular situation, additional facts, such as inventory are covered in details that fall into a separate larger discussion. It is not that the maxim is not true – but rather that such extenuating circumstances are not fit for maxims. It is good indeed that you observe such wrinkles and they do make good discussion for particular fact patterns in individual cases.
Mr. Hobbes,
I had to toss my first response, as I see that you came back and caught a part that I hoped would make a difference in your understanding.
However, I think we are still at a disconnect on “doesn’t have to do ANYTHING to maintain its rights for back damages.” I do not believe that you are correct – “notice” either is or is not a requirement. “Marking” is not the only form of notice. Somehow you have conflated this. I think your attempts at keeping ”notice” apart from “mark” has missed a beat. As you have been most honorable – I will give you more than the benefit of a doubt and re-evaluate my understanding of the requirement for back damages being either notice or mark.
In the meantime, I think it very telling what “anyone else” posts “Marking is a requirement in order to collect back damages for infringement of patent rights embodied in an actual product, in the absence of actual notice.”
Anyone else,
You touch upon an important disclaimer – “in the absence of actual notice.”
This is key – actual notice being a legally different point than marking.
You far too glibly dismiss this important part. For NPP’s (in deference to Mr. Hobbes’s distinction, which I do like), MUST take some other arduous route to provide “notice” and cannot take the expedient route. If anything, the loss of back damages without actual notice is not given such an expedient route – you have proven the opposite point you desired.
As to “…missing the mark.” The right/requirement/privilege talk is only one element of my maxim – it serves more than your immediate purpose – do not be so quick to dismiss it.
Ned,
regarding cost of marking, “The cost of not making is to authorize willful infringement.”, and “for mistakes! Wow!!”
Ned – you are conflating arguments for making the privilege a requirement. There are in fact other ways of making notice than marking, so there is no “authorizing of willful infringement with lack of marking.” The hyperbole here will cause more confusion than benefit. For another example, mistakes are not the same as intent – please do not fall for the mark and forget crowd’s enticements. Everyone should know that patents are for limited times. It has always been the patentee’s just responsibility for making sure the law is followed. Remember – the mark IS the status. The expediency gained by marking comes with a fair legal responsibility. There is NO reason to ignore that responsibility.
MrsCostConscious,
In regards to your comments on patents, negative rights, and theory and practice – in practice, NPP’s have every right to their property that in certain cases are just as violated as if they were practicing entities (several illustrative examples above concerning licensing point this out). Your line of thought misses the fact that the rights are indeed above the fray as I mentioned. To dismiss the “negative” rights because that’s how they are “in theory’ is to misunderstand the nature of the property at the very heart of the matter. The standing of an NPP is inherent to the transgression of their legal rights and it simply doesn’t matter whether the entity is practicing or not – patent rights are simply not a right to practice –they are a right to exclude.
Again, the level of discussion for the most part has been uplifting. Those pursing discussions for legal edification should be applauded – those seeking to merely distract should be disparaged.
Ergo they have a positive right to the royalties, otherwise all they could get would be an injuction.
No. They would have a positive right to the royalties if the “infringer” were a licensee who hadn’t mailed them a check.
In this context, a “right” is an expression of the set of circumstances that permit you to state a cause of action. What entitles you to sue in the first place. That would be the act of making/using/selling without permission.
Right = exclusive right to make, use, sell.
Remedy = royalties.
For one “stealing” is an intentional tort, patent infringement is not.
It is intentional to the extent that you’re not liable for damages absent notice. In other words, infringement of a PE’s patent is intentional, but infringement of a NPE’s patent is strict liability.
“The damages are the royalties the infringer would have been paying, if he had licensed the technology instead of stealing it.”
Ergo they have a positive right to the royalties, otherwise all they could get would be an injuction. Nevertheless, “stealing” is a horrible misnomer for patent infringement. For one “stealing” is an intentional tort, patent infringement is not.
NPEs should have no standing to sue for damages until they actually licensed their patent to a practicing entity. Otherwise, what would be the damages?
They have standing because anyone else practicing the patent is violating their exclusive right.
The damages are the royalties the infringer would have been paying, if he had licensed the technology instead of stealing it. Plus whatever other damages they can prove on the facts.
My main concern is not even that patent rights should apply whether or not you make a product, though that’s certainly a perverse result of the law. Patents aren’t limited to individual products, any more than they’re limited to disclosed preferred embodiments. Patents may apply to only a small component of a large product. Your marked product is not a tremendously good indication of what your competitor may not do, unless he goes and reads the actual patent.
“The product-producing patentee can file suit today, but cannot get back damages, UNLESS it has either marked its product or provided actual notice. The difference in position is quite stark, and the non-practicing patentee clearly has a much more desirable position.”
My read on the requirement of 278(a) is that it provides an affirmative defense, unless, of course, the plaintiff bases it’s calculation of damages on its own products, which would be treated as an admission. In the latter case the plaintiff would be well advised to ensure that it was marking said products prior to claiming damages based on those products.
That provision does strike me as unfair to practicing patentees/entities vis-a-vis non-practicing entities/patentees. Nonetheless, the Congreff giveth and the Congreff taketh away. Time to talk to your favorite elected representative.
Patent rights are “negative” rights and apply whether or not you yourself are making the product.
While true in theory, the above point is not true in practice. If it were, NPEs should have no standing to sue for damages until they actually licensed their patent to a practicing entity. Otherwise, what would be the damages? Moreover, because in general NPEs experience no harm than cannot be remedied monetarily, they are generally not eligible to receive equitable relief. I say in general because a case for equitable remedies could be made by an NPE against a judgment proof defendant.
Hobbes, you got it.
All, also please consider that marking is not easy and can be expensive. The cost of not making is to authorize willful infringement. People can copy your product with impunity.
Now, add to this the nightmare consequences that the False Making statute adds for mistakes! Wow!!
Marking is a requirement in order to collect back damages for infringement of patent rights embodied in an actual product, in the absence of actual notice.
The whole right/requirement/privilege talk is missing the mark.
Anouther round of a bunch of lawyers wanting something for nothing. Law maybe they need to worry about real problems and issues. Right v Privlage is a wonderful reason to squeeze Corporate American out of their earnings. Otherwise they would invest in the companies and see to a strong economy in the US and now wonder why everythings is going to China and Mexico….sounds like good business sence.
And in a certain sense, the practicing entity actually has the advantage of the expediency of marking, where as the NPE has nothing to mark, and MUST therefore take the less expeditious path in its pursuit of protecting its rightful property.
I missed this comment earlier. Respectfully, Noise, I think you are missing part of the equation. The NPE (I would prefer “non-practicing patentee” in this context, as this issue is not limited to NPEs) doesn’t have to do ANYTHING to maintain its rights for back damages. The non-practicing patentee can file suit TODAY, and claim damages going back up to 6 years, WITHOUT having provided any prior notice. The product-producing patentee can file suit today, but cannot get back damages, UNLESS it has either marked its product or provided actual notice. The difference in position is quite stark, and the non-practicing patentee clearly has a much more desirable position.
This is not an issue about NPEs versus the world.
The anti-NPE stance should not infect law in this manner. If being an NPE were against the law, I could see actions being taken with this bias. As it is, I find such blind adoption of the “troll” rhetoric distasteful.
Respectfully, my dear Noise, I don’t believe I adopted any “troll” rhetoric at all. And I certainly didn’t mean to display an “anti-NPE stance.” Indeed, I didn’t even use the phrase non-practicing entity. Rather, I used the term “non-practicing patentee” to refer to a patentee that doesn’t make that particular patented product. Under that proposed definition (which certainly might have been unclear in my earlier post), many large manufacturers are “non-practicing patentees” with respect to at least some of their patents.
My point was simply that there is a clear legal distinction between a patentee who produces products covered by that patent and a patentee who doesn’t. The same distinction applies between product-producing holders of an apparatus claim and product-producing holders of a method claim infringed by users of the product. That legal distinction places a burden on the former that doesn’t apply to the latter. Others have opined on whether this is a good thing or not. But I don’t think it’s necessary to bring “trolls” into this.
If you own the (R)ight, you deserve every legal portion of that (R)ight, right?
I don’t disagree with that, except that I would have said that “you are entitled to” rather than “you deserve.” But it’s interesting that you bring this up in this context. The marking-related statutes make it more difficult for a product-producing patentee to get “every legal portion” of the patent (R)ight. If one’s concern was solely for strong patent (R)ights, I should think that one would be pre-disposed against the marking-related statutes.
I think it’s likely that many non-practicing entities would agree. It should be kept in mind that the marking requirement applies to licensed products as well. If an NPE grants a license, it must require the licensee to mark the products, or the NPE becomes subject to the same limitations on damages as a patent-producing patentee. Again, I’ll leave it to smarter people than me to determine whether this is good public policy.
NAL as much as I like you for sharing my disfondness for Mooney, I’m going to have to say that your stance on marking is a little overly pedantic. Although it is conceivable that a patent marking program could be instituted that was near perfect, the costs would be exorbitant and, for expired patents at least, would not be justified.
Even if you consider marking labels, there would still be a problem for products that sat on shelves for an extended period of time.
IANAE – how is your comment even relevant to the topic at hand?
I keep forgetting that I have to spell everything out for you.
You’ve said over and over again that marking is a privilege and not a right. You go on from there to express morally justified disdain for any patentee who marks a product and suffers adverse consequences. After all, it’s his responsibility to mark his product correctly and keep it up to date.
And yet, filing a patent application is just as much a privilege, but whenever one gets processed less than perfectly you’re immediately up in arms about how the system needs to be changed. Because it’s never the applicant’s fault, and how dare anyone imply that anything is the applicant’s fault till the PTO gets its house in order.
Let me know if you need another hint.
Mr Hobbes,
Even if I consider your position in arguendo, I do not follow how “I also think it’s reasonable to say that this makes the former’s patent rights somewhat weaker than the latter’s.”
Patent rights are “negative” rights and apply whether or not you yourself are making the product. The rights themselves are above the fray.
And in a certain sense, the practicing entity actually has the advantage of the expediency of marking, where as the NPE has nothing to mark, and MUST therefore take the less expeditious path in its pursuit of protecting its rightful property.
Where the power balance breaks down resolves to the same Armageddon defeating capability that irks those who would want this to be a sport of kings – there is no counter-sue reprisal available. I do not see ability to defeat patent briar patches as a bad thing.
IANAE – how is your comment even relevant to the topic at hand?
You risk conflating what people MAY rightfully do with their property with, as you have admitted, something that is NOT a requirement.
Filing a patent application is not a requirement either. Who cares what becomes of them, amirite?
Mr. Hobbes,
I would dare say that “product-producing patentee at something of a disadvantage relative to the non-practicing patentee” should not be a part of the equation.
You risk conflating what people MAY rightfully do with their property with, as you have admitted, something that is NOT a requirement.
The anti-NPE stance should not infect law in this manner. If being an NPE were against the law, I could see actions being taken with this bias. As it is, I find such blind adoption of the “troll” rhetoric distasteful. If you own the (R)ight, you deserve every legal portion of that (R)ight, right?
That being said, I am getting the “flavor” of your and Paul’s point. If I could paraphrase, it has become a defacto requirement (and an uneven one at that) in order to reach some certain level of protection – especially considering the evolution of reprisal suits, and the protection against those.
I apologize for the lack of clarity in my prior posts. Regarding your paraphrase, no doubt there are companies and/or industries for which Section 287(a) is regarded as a de facto requirement. I’ve worked with several large companies, on the other hand, where marking is rarely done.
On the other thread, there is a tangent regarding whether Section 287(a), when coupled with the false marking statute of 35 USC 292, makes the patent system “stronger” or “weaker.” I humbly submit that this is, like many other questions, a matter that depends on your perspective. As discussed above, a patentee who also makes the patented product must choose whether to mark (which has its costs) or to rely on actual notice to preserve rights to infringement damages (which carries with it the risk of premature and/or inconvenient DJ suits). I think it’s quite fair to say that this puts the product-producing patentee at something of a disadvantage relative to the non-practicing patentee. I also think it’s reasonable to say that this makes the former’s patent rights somewhat weaker than the latter’s.
These two statutes thus reduce the average “strength” of the patent right. I’ll leave it to those wiser than me to determine whether this makes the overall patent system better or worse.
I can tell you from experience that litigators defending accused infringers love the marking statute. The more potential defenses, the better.
While I am contemplating this (and checking out hte link graciously provided by Ned – thanks Ned), even arguendo Paul’s contention is accepted, the fact that marking is not strictly mandated makes the mantra of
Marking is a privilege, not a right.
Marking IS the status, not an invitation to check the status.
As status changes, so must marking.
still correct.
I do find it interesting on the sister thread the notion of striking the first element and removing the privilege element and making it a strict requirement. Doing so would still not make marking a right – it would extend the responsibilities of marking (elements 2 and 3) more evenly.
Mr Hobbes,
Your “I’m afraid I don’t follow you,” to my question is answered by your own quote “In my earlier post, I meant to say that the law is pretty clear about what constitutes “notice.” ”
But I still think that “I’m not equating “notice” with “marking” at all.” is not quite accurate.
That being said, I am getting the “flavor” of your and Paul’s point. If I could paraphrase, it has become a defacto requirement (and an uneven one at that) in order to reach some certain level of protection – especially considering the evolution of reprisal suits, and the protection against those.
Posted by: Noise above Law | Feb 27, 2010 at 01:08 PM
“Ned, which Supreme Court case are you referring to?”
Wine Railway Appliance Co. v. Enterprise Railway Equipment Co., 297 U.S. 387, 56 S. Ct. 528 (1936).
Paul, I am 100% agreement with you on marking. It would be better to provide damages as a default rule for all infringement and enhanced damages if the patentee was successfully marking.
… I was inspired by your penchant for the fine arts…
It’s kind of you to think of me at all. On the fine arts note, Mrs. Hobbes and I were pleased to hear some very nice Shostakovich and Bach this weekend. Although quite different from one another, each is far more to my taste than the Rachmaninoff I mentioned before. Our next date promises to be even better. Although England hasn’t produced very many noted Classical composers, Holst and Vaughan Williams are among my favorites.
You may be correct as to a specific notice, but you would be incorrect to equate “notice” with “marking” as strongly as you do.
I’m afraid I don’t follow you, Noise – I’m sure I’m just misunderstanding you. Section 287(a) is pretty clear on its face – if you don’t mark your patented product, you can’t collect damages for infringing activities that occur before you provide actual notice. I’m not equating “notice” with “marking” at all. With regards to collecting pre-suit damages, marking is a necessary condition to avoid a notice requirement, for a manufacturer of a patented product.
I would be interested in where you think the law is pretty clear that you must mark. That would make marking a requirement. I hold that it is not.
Respectfully, I very carefully avoided saying that a manufacturer must mark. Instead, I said that the law encourages it to do so. A manufacturer of a patented product “must” mark IF it wants to be put back on the same footing as a patentee who doesn’t manufacture a patented product (or a patentee having only a method claim). In my earlier post, I meant to say that the law is pretty clear about what constitutes “notice.” I can track down a relevant case if you like, but I recall that there are fairly strict requirements for the notice to be effective vis-a-vis 287(a).
Incidentially, that’s why I must respectfully disagree that marking is a “privilege.” A manufacturer of a patented product has a burden that other patentees don’t have, with regards to maintaining the right to collect back damages – it must either mark, or provide infringers with actual notice. As someone else has noted, the actual notice route carries with it the risk of a DJ action. I’m not opining on whether Section 287(a) is a good thing or not. I do agree with you that a manufacturer that chooses to mark must do so with a reasonable degree of care, but I believe that the false marking statute does include an “intent to deceive” feature that is not unimportant.
Reference, for example, 35 U.S.C. 287(b)3(B)(iii) – mitigating circumstances.
I might be wrong, but I believe that the section you cite is almost completely unrelated to the “marking and notice” of Section 287(a). 35 USC 287(b)3(B)(iii) is related to infringement by importation of products made by patented processes.
By the way, welcome to the discussion.
Thank you for making me feel welcome!
Also, Mr. Hobbes – a minor note – I was inspired by your penchant for the fine arts when I penned my reply to Game Over at link to patentlyo.com
I think you might quite enjoy the missive.