Patent Marking Makes Patent Owner's Allegation of Practicing Invention a Double-Edged Sword

After alleging that its product practiced the invention claimed in its patent, and having failed to properly mark that product, a patent owner found itself unable to pursue damages for alleged infringement before the date when the accused infringer received actual notice of the patent.  Bed Bath & Beyond, Inc. v. Sears Brands, LLC, No. 08-5839 (SDW)(MCA) (D. N.J. June 4, 2012).

Under 35 U.S.C. § 287(a), where a patent owner has a product covered by its patent claims, patent marking may be used to provide constructive notice of those claims to potential infringers.  Further, where the marking requirements have not been met, a potential infringer may only be liable for damages from the date on which it received actual notice of patent claims (unless the claims are method claims).

In this case, the patent owner, Sears, had marked its in-store registry system and its web site with the patent number, but the marking had fallen off the in-store system.  Sears' in-house counsel directed that the marking be restored, but this was not done.  Although the court did not explain why, it noted that the "basis" of Sears' infringement claim was "that it practices the [claimed] invention."  (Presumably Sears was seeking an injunction, which it could likely obtain only if it practiced the claimed invention.)  If Sears was practicing the claimed invention, it was required to mark it.  Because Sears did not satisfy the marking requirement, it could recover damages only from the date on which it had sent actual notice of its patent to the accused infringer.

Accordingly, the court granted the accused infringer's Motion for Partial Summary Judgment Limiting Sears' Damages (but denied its Motion for Summary Judgment of Non-Infringement).

If you like a simple moral, this case offers it.  Computer, software and Internet products protected by patent claims can and should be marked -- and should stay marked.  So the next time a client hesitates to fulfill patent marking requirements, tell them about this case.