WDMI adopts majority "practical approach" allowing marking of product packaging

On November 29, 2012, Judge Jonker of the Western District of Michigan issued an opinion in Stryker Corp. v. Zimmer Inc., Case No. 1:10-cv-1223 (Doc. No. 246), addressing Zimmer's argument that Stryker's marking did not provide adequate constructive notice of alleged infringement. The issue concerned marking of actual products versus package marking. Zimmer argued that Stryker could have marked the commercial embodiments with the patent numbers, but only marked the product packaging, and that Stryker's marking thus ran afoul of 35 U.S.C. Section 287 (the marking statute).

The court rejected Zimmer's "highly literal reading of the marking statute's requirements." Slip op. at 5. It noted that only a "handful" of district courts had adopted this reading. Id. (citing Belden Techs., Inc. v. Superior Essex Commc'ns LP, 733 F. Supp. 2d. 517, 534 (D. Del. 2010) ("If, however, the patented article has markings or printing on it, other than the appropriate patent marking, then the alternate form of patent marking on the package is not sufficient compliance with

the marking statute."); and Rutherford v. Trim-Tex, Inc., 803 F. Supp. 158, 163 (N.D. Ill. 1992) (same)). The court declined to follow these courts and instead adopted "the practical approach taken by a majority of the district courts to have considered this issue." Slip op. at 5 (citing Ethicon Endo-Surgery, Inc. v. Hologic, Inc., 689 F. Supp. 2d 929, 945-46 (S.D. Ohio 2010); Bowling v. Hasbro, Inc., 490 F. Supp. 2d 262, 276-77 (D.R.I. 2007); Sessions v. Romadka, 145 U.S. 29, 50 (1892); Chicago Pneumatic Tool Co. v. Hughes Tool Co., 192 F.2d 620, 625 (10th Cir. 1951)). The court read the latter cases to hold that non-compliance with the marking statute arises only where the decision not to mark the actual product was unreasonable in light of the following (exemplary) factors (slip op. at 6):

• The size of the product.
• The cost of marking the product rather than the packaging.
• Industry norms for marking similar products.
• Whether an alternative form of marking would provide users with adequate notice of the patent.

Applying these factors, the court found that Stryker's marking of the product packaging was a triable issue of fact, and did not violate the marking statute as a matter of law. The court cited the following evidence of record: (a) Stryker's commercial competitors (including Zimmer) having marked packaging for similar products rather than the products themselves; (b) the potentially prohibitive price of marking the Stryker products at issue; and (c) the danger of affixing a sticker or label to the Stryker products (which were medical devices) because the label might come off during use with potentially serious consequences. It also cited a lack of evidence that Stryker's patent marking on its packaging failed to provide effective notice, because all of Stryker's patented products were sold in their packaging (with the patent marking) and were not taken out of their packaging until use. On these facts, the court concluded that the user would necessarily come into contact with the patent marking just as surely as marking the product. See slip op. at 6-7.

The court also addressed Zimmer's argument that Stryker failed to comply with Section 287 because it did not mark a high enough percentage of the product packaging. Zimmer argued that, as a matter of law, Stryker's marking of 99.68% of its embodiments of one of the three patents-in-suit, 98.58% of another, and 83.7% of the third was insufficient. The court again disagreed:

The raw percentages of marked products is certainly an important consideration, but it is not necessarily dispositive at any particular bright line. Congress itself has certainly not provided such a bright line, and neither has any court. The Federal Circuit, for example, recently affirmed a finding that substantial evidence supported a jury's determination that marking 88-91% of all the commercial embodiments of a patent was sufficient to satisfy the marking statute. Funai Elec. Co., Ltd. v. Daewoo Electronics Corp., 616 F.3d 1357, 1374-75 (Fed. Cir. 2010). True, one of the factors in Daewoo-the presence of third-party licenses-is not present here. But other factors in this case may be significant to the jury, including whether some portion of the Stryker products not marked with the 383 patent nevertheless were marked with other patent protection notices. At a minimum, there is a question of material fact as to whether Stryker's marking 99.68%, 98.58%, and 83.37% of the commercial embodiments of its patents satisfies the marking statute's "substantially all" requirement on the particular facts of this case.