Virtual Patent Marking Joel Lutzker General Counsel March 27, 2013

Topics Why Mark? Who Must Mark? What to Mark? When to Mark? How to Mark? Virtual Marking Primer Questions 2

Why Mark? 35 U.S.C. §287(a): “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. “ Failure to mark deprives patent owner of ability to collect damages for pre-notice infringement. 3

Who Must Mark? 35 U.S.C. 287(a): “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 ….” Patentees and licensees (including under covenants-not-to sue) must mark Failure to include marking obligation in license agreements is a common problem 4

What to Mark? 35 U.S.C. 287(a): “any patented article … 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.” Preferably affixed to the patented product Alternatively to a label or package 5

What to Mark? Courts have generally taken a flexible approach in determining whether marking on packaging or a label is permissible alternative to marking on product Factors considered include: Size of product Cost of marking Industry custom Aesthetics Whether there are other markings on the product 6

What to Mark? Marking must be applied to complete patented product Also must be applied to components having no substantial use except for assembly into complete patented product See, Amsted Industries, Inc. v. Buckeye Steel Castings Co., 23 F.3d 374 (Fed. Cir. 1994) (failure to mark center plate component suitable only for use in complete patented railroad car frame resulted in denial of pre- notice damages) 7

When to Mark? Marking must commence on products sold after patent issuance Marking must be substantially continuous No marking required for pure process patents Marking is required for patents containing both product and process claims (failure to mark product will result in denial of pre-notice damages even for process claims) See, American Medical Systems, Inc. v. Medical Engineering Corp., 6 F.3d 1523 (Fed. Cir. 1993) 8

How to Mark Conventional marking 35 U.S.C. §287(a): “by fixing thereon the word “patent” or the abbreviation “pat.”, together with the number of the patent” 9

How to Mark Conventional marking has significant shortcomings Difficulty in listing large number of patents Difficulty in updating (newly issued or expired patents) Expense (tooling, labeling) Inventory control Aesthetics 10

How to Mark America Invents Act amended to Section 287(a) to authorize virtual marking: “or by fixing thereon the word “patent” or the abbreviation “pat.” together with an address of a posting on the Internet, accessible to the public without charge for accessing the address, that associates the patented article with the number of the patent” 11

Virtual Marking Website Examples 12

Virtual Marking Primer Website may be internally developed and maintained or maintained through an outside vendor, e.g

Virtual Marking Primer In-house or outside factors to consider Size of portfolio Velocity of portfolio Availability of internal resources Ability of IT system to track availability and versions Ease of proof Budget 14

Virtual Marking Primer Website features Unique landing page for patent marking data, e.g. or May be unique landing page for each product, but most companies have adopted a single landing page with a list of products and patents Landing page may link to pdf files for each product (may be subject to attack) 15

Virtual Marking Primer Elements of proof Availability of site Maintenance of data What patents listed When listings changed Security of site Records of access (not required but may help in proving willfulness) 16

Virtual Marking Primer Marking on product, label or packaging must comply with the statute, i.e., “patent” or “pat.” followed by url url alone will not suffice. See, A to Z Machining Services, LLC v. National Storm Shelter, LLC, 2011 WL (W.D. Ok. 2011) 17

Virtual Marking Primer International issues Virtual marking may not comply with marking provisions of foreign jurisdictions and may give rise to innocent infringement defense and denial of damages, e.g.: Australia United Kingdom Ireland Others? 18

Virtual Patent Marking QUESTIONS OR COMMENTS? Joel Lutzker Ocean Tomo, LLC