The opinion of the court was delivered by: JOHN A. NORDBERG
This matter is before the court for a motion to compel discovery under Fed. R. Civ. P. 37(a) in an action for an accounting of damages to be awarded pursuant to 35 U.S.C. § 284. In the prior history of this case, the court granted a motion for summary judgment for the plaintiff, Barry Rutherford, holder of U.S. Patent No. 4,047,478 entitled "Drywall Bead Accessory," finding that the '478 patent was valid and that the defendant, Trim-Tex, Inc., literally infringed claims 1, 2, 3, and 5 of the patent.
During the discovery stage, Rutherford sought information relevant to the accounting of damages, but Trim-Tex refused to identify the sales of its infringing product prior to December 1988. Trim-Tex contends that Rutherford did not adequately mark the patented product and thus is not entitled to damages prior to Trim-Tex receiving actual notice of the infringement pursuant to 35 U.S.C. § 287, therefore pre-December 1988 information would not be admissible.
In response, Rutherford contends that marking the product's packaging is sufficient compliance with § 287, entitling him to damages as far back as August 18, 1983, when he began to mark all of the product's cartons with the patent notice and patent number. Rutherford seeks a motion to compel discovery of the relevant information from 1983 up to the end of 1988. For the reasons stated, the court grants the plaintiff's motion.
A brief description of the patented product is necessary for the resolution of the pertinent issues. Rutherford is the president of Flannery, Inc. which manufactures the FastMask Drywall Trim. The '478 patent is embodied in this product which is a metal drywall casing bead ten feet long with a T-shaped cross section. The vertical portion of the "T" is about 1 1/2 inches high and has holes punched at regular intervals along its length. The horizontal portion, or top cross bar of the "T", is about 7/8 of an inch across. The horizontal portion is scored lengthwise along the entire ten foot length next to the "T" intersection so that one side of the "T" cross bar may be torn away leaving the remainder in an upside down "L" cross section.
The FastMask is typically installed in the gap between drywall and the ceiling during the construction of the walls. One side of the "T" cross bar fills that gap, with the other side exposed against the ceiling and the vertical portion against the drywall. When drywall mud is applied over the vertical portion of the casing bead, the exposed "T" bar protects the ceiling from excess splash-over. Afterwards, the tear-away half of the "T" cross bar is removed to leave a clean ceiling and neat drywall-ceiling junction. The installed portion of the product is completely covered with drywall mud and is not visible.
This product is sold in ten food lengths, 30 to a carton. The carton is marked with a patent notice reading "PATENT #4,074,478" that is clearly visible below the product's name. There is no such similar marking on the product itself. Neither, for that matter, is there a marking of any sort on the product.
The issue before the court is whether marking of a patented article's packaging, where the article itself was not marked, sufficiently complies with 35 U.S.C. § 287 to entitle the plaintiff to damages for infringement prior to actual notice to defendant of infringement. Section 287(a) provides:
(a) Patentees, and persons making or selling any patented article for or under them, may give notice to the public that the same is patented, either by fixing thereon the word "patent" or the abbreviation "pat.", together with the number of the patent, or when, from the character of the article, this can not be done, by fixing to it, or the package wherein one or more of them is contained, a label containing a like notice. In the event of failure so to mark, no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice. Filing of an action for infringement shall constitute such notice.
Based on Title 35, U.S.C., 1946 ed. § 49 (R.S. 4900, amended Feb. 7, 1927 ch. 67, 44 Stat. 1058).
The Supreme Court recently noted the primary purpose of § 287 is to provide information to the public concerning "the status of the intellectual property embodied in an article of manufacture or design." Bonito Boats, Inc. v. ThunderCraft Boats, Inc., 489 U.S. 141, 168 (1989). This is consistent with the 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. In Sessions v. Romadka, 145 U.S. 29, 36 L. Ed. 609, 12 S. Ct. 799 (1892), a manufacturer of trunk clasps did not put the patent marking on its smallest size trunk clasp, but rather put the patent marking on the package. The Court did not feel compelled to debate the standards at which point an article becomes too small to mark. The Court held that complying with the alternate provision of the statute, marking of the package, is sufficient compliance because "in a doubtful case, something must be left to the judgment of the patentee." Id. at 50. Thus, the Court shows that its primary concern lay not with the standards under which a package may be marked instead of the article, but rather on whether any notice was given to the public by either method of marking listed in the statute.
Likewise, the Seventh Circuit has de-emphasized the conditions precedent to allowing a patentee to comply with alternate package marking. In a case involving a design patent for an ampule, the Seventh Circuit acknowledged that "notice to the public generally is provided by affixing upon the article 'the word "patent", together with the number of the patent,' or by affixing to the package enclosing such article 'a label containing the like notice.'" Smith v. Dental Products Co., Inc., 140 F.2d 140, 152 (7th Cir. 1944). The Seventh Circuit confirmed this relaxed attitude toward compliance in a later case, stating that § 287 "provides that patentees may give notice to the public ...