Physical-Possibility Test for Marking Products Under 35 U.S.C. § 287 Rejected

The court denied defendants' motion for summary judgment to limit plaintiffs' damages for their failure to mark their orthotic devices. "Plaintiffs concede that they do not print the patent marking on the patented product itself; rather, they print the marking on the outside of the product’s packaging. . . . [T]he bright line physical-possibility test advocated by Defendants and a handful of district court opinions is not the correct standard. To the contrary, the Federal Circuit has made clear that courts must apply a much more flexible test that asks whether the method of marking effectuates the statutory purpose of § 287, namely, placing the public on notice that the product is the subject of a patent. . . . [T]he question before the Court is not whether it is physically feasible to include a patent marking on [plaintiffs'] product. . . . Plaintiffs’ evidence is sufficient for a reasonable jury to conclude that 'the public may be better notified with marking on the packaging, as opposed to [on] the article itself.'"

Denneroll Holdings Pty Limited et al v. ChiroDesign Group, LLC et al, 4-15-cv-00740 (TXSD February 23, 2016, Order) (Ellison, J.)