Physical space constraints are not dispositive of whether a patentee is required to mark its commercial article rather than its packaging. Here, for example, a traffic control system was found to be adequately marked by its packaging rather than its components even though there was sufficient space on which to mark the components because the packaging represented the only time when all of the components were together and in full view of the public, thereby adequately serving the purpose of providing constructive notice to the public that the entire system was patented. “Because there may be many factors that affect the character of a patented article, we hold that, when a patentee marks the packaging rather than the article, the district court should evaluate the specific character of the article at issue.” It may therefore be best when counseling clients to focus on the purpose of providing constructive notice to the public to determine how to best mark a patented article, rather than merely relying on whether marking a given component is physically feasible.
Background / Facts: The patent being asserted here is directed to a traffic control preemption system for emergency vehicles that uses data from a global positioning system (“GPS”). In its commercial product, the patentee did not mark the physical components in the system with the patent number. Instead, it marked the packaging in which the system was sold.
Issue(s): Whether, if there is physical space on any component of a patented system, the patentee must mark that component to comply with the marking statute of 35 U.S.C. § 287(a).
Holding(s): No. “Because we do not pretend to know all of the possible types, characteristics, or components of patented—and yet to be patented—machines and systems, we cannot construct a bright line rule regarding what aspects to consider in determining whether marking the packaging amounts to ‘substantial compliance.’” Citing examples such as patented systems in which “such markings may mislead the public into believing that the marked components themselves are patented” and hidden components that “may be immediately installed out of the public view once unpackaged,” the court concluded that “the physical size of the article is not the only aspect of the ‘character of the article’ that may be considered. [] Because there may be many factors that affect the character of a patented article, we hold that, when a patentee marks the packaging rather than the article, the district court should evaluate the specific character of the article at issue.” In this case, “marking the packaging of [the system]—the only time when all of the components that made up the patented system were together and in full view of the public—adequately served the purpose of providing constructive notice to the public that the entire [] system was patented.”