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District Court Grants Summary Judgment of No Damages for Failure to Mark

Plaintiff Juno Manufacturing, LLC (“Plaintiff” or “Juno”) filed a patent infringement complaint against Defendant Nora Lighting, Inc. (“Defendant” or “Nora”). The complaint alleged that Defendant infringed Plaintiff’s patent, No. 5,505,419 (the “‘419 Patent”), entitled Bar Hanger for a Recessed Light Fixture Assembly. Nora filed a motion for summary judgment seeking a judgment that Juno was barred from recovering damages on the ground that Juno failed to properly label its products.

In its motion, Nora asserted that Juno failed to provide proper notice of the ‘419 Patent. As explained by the district court, the requisite notice can be actual or constructive.

In terms of constructive notice, section 287(a) provides that notice to the public that a “patented article” is patented may be provided “by fixing thereon the word ‘patent’ or the abbreviation ‘pat.’, together with the number of the patent . . . .” 35 U.S.C. § 287(a). “[W]hen, from the character of the article, this can not be done,” notice may be given “by fixing to [the patented article], or to the package wherein one or more of them is contained, a label containing a like notice.” Id. If the patentee failed to provide constructive notice, “no damages shall be recovered by the patentee in any action for infringement” unless the patentee provided actual notice, in which case the patentee may recover damages only for infringement occurring after actual notice was provided. Id.

The district court found that Juno never fixed the words “patent” or “pat.” along with the patent number to any of its bar hangers, either directly (such as by stamping them) or by applying labels. “Instead, beginning in November 2009, Juno began applying labels containing this information to one of two locations on its light fixture products: (1) the junction box, and (2) the inside of the light fixture housing.”

The district next concluded that “Juno does not demonstrate that the light fixture product as a whole qualifies as the “patented article” for purposes of the fixation requirement. To the contrary, the Second Circuit’s opinion in Lichtenstein v. Phipps, 168 F. 61 (2d Cir. 1909), indicates that ‘patented article’ refers to the individual patented component, rather than the broader unpatented product of which the component is a part.”

As a result, the district court held that “placing a label containing the ‘419 Patent number on the junction box or inside the light fixture housing did not indicate which component of the light fixture was patented. The most natural assumption would be that the patent number applied to the component to which the label was affixed, though that assumption would have been wrong. Thus, the Court finds that, as in Lichtenstein, fixing the label to a component of the product other than the one which is patented does not comply with the constructive notice provision of 35 U.S.C. § 287(a).”

Accordingly, the district court found that Juno failed to provide constructive notice of the ‘419 Patent.

The district court also analyzed whether actual notices was provided (a patentee may provide actual notice, which requires “an affirmative act on the part of the patentee which informs the defendant of infringement.” Lans v. Digital Equipment Corp., 252 F.3d 1320, 1327-28 (Fed. Cir. 2001)).

Juno did not contest Nora’s assertion that it did not receive actual notice until Juno filed the complaint. It was also undisputed that the ‘419 Patent expired prior to the filing of the complaint. “Thus, Juno did not provide Nora with actual notice during any period of Nora’s infringing activity.”

As a result, the district court granted the motion for summary judgment.

Juno Manufacturing, LLC v. Nora Lighting, Inc., Case No. 6546-RGK (PJWx) (C.D. Cal. Aug. 13, 2015)

The authors of are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Stan Gibson at 310.201.3548 or