Interesting fact dispute regarding marking

On March 2, in azd-2-12-cv-01797-267, Case No. CV-12-01797-PHX-JAT, Judge Teilborg of the District of Arizona denied a motion for summary judgment based on a marking defense. Holland moved for summary judgment of no damages for units sold before the date of actual notice, arguing that no constructive notice had been provided since PCT did not properly mark. The products at issue were coaxial connectors, and

PCT argued that the products were too small to make it feasible to legibly mark on the products themselves. That being said, Holland pointed out that PCT did affix a label to some of the connectors, bearing the PCT logo as well as the PCT part number. These labels, however, are 5mm in height and have text of only 2.8mm, and PCT countered that it was not feasible to add the patent information to these labels, or to make the labels any larger.

Instead of labeling the products themselves, PCT marked the packaging in which the connectors are sold (with many connectors in a single package). The Court noted that while section 287(a) uses the phrase "can not" be marked for the exception where packaging marking is acceptable, that courts have interpreted the provision to require less than absolute physical impossibility. The Court cited Belden Techs., Inc. v. Superior Essex Commc'ns LP, 733 F. Supp. 2d 517, 534 (D. Del. 2010) for the proposition that when a product is so small that marking the product itself would not effectively notify the public of the patent, marking the packaging is appropriate. But on the other hand, the Court also cited Rutherford v. Trim-Tex, Inc., 803 F. Supp. 158, 162 (N.D. Ill. 1992) for the proposition that when the patented article has other markings or printings - besides patent marking - listing the patent numbers on the packaging is insufficient. The Court found the present facts to be halfway in between, to the point there was, in the Court's opinion, a fact dispute:

In the present case, the fact that PCT marks its connectors with its logo and the product number undermines PCT's argument. On the other hand, PCT marks its product number using text measuring just 2.8 mm tall,hardly the "large, clear print" that Holland purports it to be. Because patent marking must be legible, it is possible that adding a patent number to the labels on PCT's connectors would result in the patent number being so small as to be illegible to the naked eye. Whether PCT can affix labels containing a legible marking of the '422 Patent number to its products is an issue of fact. There is sufficient evidence from which a reasonable jury could conclude that it was not feasible for PCT to legibly mark its connectors with the '422 Patent number.