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Virtual Patent Marking: Does It Work? One District Court Says It Might

National Products, Inc. (“NPI”) filed a patent infringement action Akron Resources, Inc. (“Akron”), among others.  The parties filed several cross motions for summary judgment, including a motion for summary judgment based on the failure to mark.

As explained by the district court, the parties did not dispute that:

“1) NPI sells products that practice the ’212 Patent;

2) NPI marks at least some of those products with the word “PATENTED” and the URL of NPI’s website,;

3) any person can access the website, but has to additionally navigate to a “Patents and Trademarks” page of the website to see a listing of NPI’s patents;

4) the “Patents and Trademarks” page lists over 100 patents, and does not identify specific patents as associated with specific NPI products.”

The parties disputed the difficulty in navigating to NPI’s “Patents and Trademarks” page. The parties also disputed whether the “Patents and Trademarks” page is sufficient to demonstrate compliance with the patent marking statute, regardless of how prominent the page is.

In their summary judgment motion, Akron claimed that the issue of virtual patent marking is a question of first impression.  In response, NPI asserted that Akron failed to respond to NPI’s caselaw referencing the Supreme Court’s “long-standing focus on the notice effected by the method of marking the patented article rather than on the precise mechanistic compliance with the statute.” Rutherford v. Trim-Tex, Inc., 803 F. Supp. 158, 161 (N.D. Ill. 1992).

In analyzing what the district court called an “intriguing issue” and citing to Report to Congress on Virtual Marking, September 2014, the district court concluded that the current record could not support granting a motion for summary judgment.  “Defendants have failed to meet their burden of adequately raising the issue for summary adjudication. Particularly if the issue truly is one of first impression, placing legal limits on what constitutes marking would be inappropriate on such a significantly limited record.”  The district court also acknowledge that the question of marking is generally a question of fact.

As a result, the district court denied the motion for summary judgment on the issue of virtual marking.

National Products, Inc. v. Akron Resources, Inc., Case No. CV 18-02936 AG (SSx) (C.D. Cal. Jan. 9, 2019)

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