Court instructs: If reasonably feasible, mark your product (and not just the packaging) with patent numbers -- otherwise, marking will be inadequate

Judge Robinson of the District of Delawareissued an opinion last year (August 24, 2009) on patent marking. I just discovered it and thought it was worth discussing because it's instructive on product vs. packaging marking. The case is Belden Tech. Inc. v. Superior Essex Comm'ns LP, Civ. No. 08-63-SLR (D. Del. 2009). Click here to see the case.

The case is instructive on when it's acceptable to mark just your product packaging as opposed to the product itself. The plaintiff and patentee Belden was inconsistent in its marking -- sometimes it marked its products, but more often it only marked the packaging. Belden made numerous arguments for why its inconsistent marking practice nevertheless complied with the marking statute. But the court disagreed. It issued summary judgment in favor of the defendant on the marking issue.

The take-away? If it's feasible, mark your product, and do so consistently. In just about any circumstances, it's not enough to mark packaging when the product could have reasonably been marked. For a detailed summary, read on...

Belden was plaintiff and is a maker of electrical cables. According to Belden, about 50 of its cable products embodied the patents-in-suit. The cables have jackets with extensive product information on them, including commercial and regulatory information. Testimony also established that the jackets could include name and branding information, as well. In addition, Belden witnesses testified that the jackets could include patent markings without difficulty. And, in fact, Belden produced 5 embodying cable products during discovery that included the patent markings. The remaining products, however, were only marked on the packaging.

The court first cited Federal Circuit law for the proposition that one must "consistently market substantially all" patented products that are capable of being marked. Nike, Inc. v. Wal-Mart Stores, 138 F.3d 1437, 1446 (Fed. Cir. 1998). (Note: this rule doesn't apply to method claims -- the law is that one need not mark method claims.) The District of Delawarethen went on to consider whether Belden's inconsistent marking satisfied this rule, and found it did not.

The Delaware court considered the following factors and arguments in reaching its decision that Belden had not complied with the marking statute:

• The cabling jackets had 10–14 inches of blank space, in 24-inch repeating intervals, leaving plenty of room for patent markings.
• Testimony of Belden employees indicated that it was relatively easy to include patent markings on the jackets, and that it was not extremely costly to include it.
• Belden had marked 5 of its products with the patent numbers, rebutting Belden's argument that it was industry practice to mark only the packaging.
• Belden's argument that the cable jackets were not visible, thus justifying marking only the packaging, was belied by the evidence. The jackets were visibile, at least to some degree, after the cable was installed.
• The cables were not destroyed when in use, thus undermining Belden's argumentproduct marking was ineffective because the marks would be destroyed. Belden had relied on a case accepting packaging marking where the embodying product was a patented single-use oxygen probe that was destroyed through immersion in molten steel and on which users were unable to read the patented information even if it were included on the probes. Heraeus Electro-Nite Co. v. Midwest Instrument Co., 2007 WL 4307128, at *5 (E.D. Pa. Nov. 14, 2007).