As explained by the district court, Zadro Products, Inc. ("Zadro") sued Feit Electric Company ("Feit") for patent infringement alleging that Feit infringed on two of Zadro's patents: United States Patent No. 8,162,502 ("the '502 Patent") and United States Patent No. 8,356,908 ("the '908 Patent"). Zadro alleged that one of Feit's products, the Enhance Rechargeable LED Vanity Mirror (model number VRM-1), infringed at least claims 1–9, 18, and 22–23 of the '502 Patent under 35 U.S.C. § 271(a). Zadro also alleged that the Enhance Rechargeable LED Vanity Mirror infringed at least claims 28–32 of the '908 Patent under 35 U.S.C. § 271(a).
In its summary judgment motion, Feit asserted that the Zadro mirrors that practice the '502 Patent do not have marks on them that comply with the requirements of § 287(a). Both parties agreed that Zadro practices the '502 Patent. The parties also agreed that Zadro does not mark the practicing mirrors themselves. Instead, Zadro contended that marks on the packaging of the practicing products satisfy § 287(a).
The district court explained that § 287(a) requires that a product itself be marked unless "from the character of the article, this can not be done." "[S]ubstantial compliance may be found to satisfy the [marking] statute." Global Traffic Technologies LLC v. Morgan, 620 Fed. Appx. 895, 905 (Fed. Cir. 2015) (alteration in original) (quoting Maxwell v. J. Baker, 86 F.3d 1098, 1111 (Fed. Cir. 1996)). No set list of factors can be used to determine whether the "character" of the product makes marking the packaging of the product permissible. Id. at 905-906. Some factors might include the size of the product, whether what is patented is a machine or a multi-part system, and whether the product is immediately installed out of public view once unpackaged. Id. at 905.
The district court concluded "that no reasonable jury would find that Zadro properly marked the products that practiced the '502 Patent. Feit's strongest argument that Zadro did not adequately mark products that practice the '502 Patent is that some of them are marked with 'patent pending' on the base of the mirror, molded into the battery case cover. Indeed, Feit calculates that as many as 85% of the mirrors sold in 2019 that Zadro admits practice the '502 Patent were marked 'patent pending' on the battery case cover."
The district court found this admission highly significant, stating that "[l]abeling a product with 'patent pending' makes it readily apparent that the character of the product does not make it so that a proper mark 'can not' be affixed to the product. 35 U.S.C. § 287(a). A 'patent pending' mark also indicates that a patent has not yet issued, and 'gives one no knowledge whatsoever.' State Industries, Inc. v. A.O. Smith Corp., 751 F.2d 1226, 1236 (Fed. Cir. 1985). It is therefore insufficient that Zadro marked the packaging for its products with the patent number, for the products could be marked themselves, and marks on the products even suggested that they were not patented."
The district court also rejected Zadro's argument that "all that Zadro needed to do was to mark the packaging" as insufficient because the products could be used around the home. "Consider the mirrors at issue in this case. Zadro's advertising encourages consumers to use its vanity mirrors 'in any room of the house.' Zadro Holidays: Gift for Her. It[s] easy to imagine that a guest to a house might see this product in a friend's living room, bathroom or 'even [on] the kitchen table' and decide she wants to replicate it. Alternatively, a consumer might decide that she wants to replicate a patented product well after having opened the product's package. Having a mark on the package alone in such circumstances is substantially less effective, or possibly wholly ineffective, in providing notice to the potential infringer."
Accordingly, the district court granted the summary judgment motion with respect to the products that practiced the '502 Patent.
Zadro Products, Inc. v. Feit Electric Company, Inc., Case No. SACV 20-101 JVS (DFMx)
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