as guilty of infringement as any third party that engages in such conduct.
It was therefore wholly irrelevant to defendants' course of action that Strom continued to hold title to the `474 Patent up to a point, with Barnett then acquiring that ownership interest and retaining it thereafter. And it is equally irrelevant that defendants have since changed the instructions and packaging to eliminate reference to the `474 Patent, because THE ZIPPER product that is the target of the present infringement action has remained the same.
As a shorthand label, a good deal of the caselaw that addresses the type of argument now advanced by plaintiffs uses the term "marking estoppel." That is potentially somewhat misleading, because those cases typically do not involve conduct as blatant as that presented here. Even though defendants characterize a portion of the lengthy opinion in SmithKline Diagnostics, Inc. v. Helena Labs. Corp., 859 F.2d 878 (Fed. Cir. 1988) as casting a cloud on the use of that doctrine, what SmithKline actually did was first to "note the line of cases sometimes called `marking estoppel' cases, in which, under some circumstances, a party that marks its product with a patent number is estopped from asserting that the product is not covered by the patent" (id. at 890 n. 9, citing cases), but it then went on to distinguish the situation before the court by stating that the defendant there "did not place an erroneous patent number on its lead acetate product" (id. at 890), but instead "erroneously identified the catalyst used on its product" (id.).
By contrast, here defendants specifically announced to the world that THE ZIPPER product is covered by the `474 Patent. C & S did so in unambiguous terms and in several ways: (1) by placing the patent number in a prominent position just before the caption of its Instruction Sheet document, which then proceeded to explain and illustrate the steps for using and installing its product, (2) by placing in equally prominent letters, all in capitals, the phrase "DESIGNED AND PATENTED BY WILLARD STROM" in the same position on another Instruction Sheet and (3) by placing the patent number on the packaging for THE ZIPPER product. And C & S admittedly did so not only to promote its own product but also to warn off and discourage potential competitors.
Most of the caselaw listed under the "marking estoppel" rubic goes back a good many years — thus the first citation in the SmithKline footnote was to Gridiron Steel Co. v. Jones & Laughlin Steel Corp., 361 F.2d 791, 796-97 (6th Cir. 1966). But that does not, as defendants would have it, undercut the position advanced by plaintiffs here.
To the contrary, the post-SmithKline discussion of that doctrine and of its scope (as well as its limitations) in Boyd v. Schildkraut Giftware Corp., 936 F.2d 76, 79 (2d Cir. 1991) commends itself to this Court as both demonstrating its continued viability and its square applicability to the conduct involved here. After Boyd, id., referred to the criminal offense defined in 35 U.S.C. § 292 (a) that prohibits placing a patent number on a product without the consent of the patentee (here, of course, that means the exclusive licensee) "with the intent . . . of deceiving the public and inducing them to believe that the thing was made or sold by or with the consent of the patentee [again, here the exclusive licensee]," Boyd, id. (citations omitted) went on to refer to prior holdings that "placing a patent number on a product will estop a manufacturer from denying that his product embodies the patent for purposes of liability for both patent infringement damages and patent license royalties." Then Boyd, id. went on to say:
We think that marking estoppel, like other varieties of
estoppel, should arise only when a consideration of all
aspects of a defendant's pertinent conduct makes it
inequitable for him to take a position contrary to his
prior statements or actions. The act of impermissibly
placing a patent number on a product, if limited in
time and quantity, does not inevitably have such
adverse effects for the patentee or the consuming
public as to bar the mismarker from establishing that
his product does not use the patent. Though a patentee
or licensor normally will understandably have evidence
only of sporadic instances of mismarking and need not
identify widespread mismarking to raise a claim of
estoppel, the accused mismarker should be able to
defeat the claim by showing how inadvertent and limited
the mismarking was, of course, deliberate mismarking
of even a limited nature or inadvertent mismarking over
a prolonged period would justify an estoppel.*fn8
That last "of course" sentence could well have been written for this case. It is beyond question that the multiple instances of identifying THE ZIPPER product as embodying the `474 Patent were deliberate, as confirmed by Strom's own sworn testimony during his deposition. And for the inventor himself to have done so — to have flouted the express grant of an exclusive license to another — is particularly egregious. Whether the 1995 License Agreement remains in effect or whether it was somehow superseded by the 1996 License Agreement (a question that need not be decided for present purposes) is irrelevant, for in neither of them did Strom as licensor reserve any right to practice the art of the `474 Patent.*fn9
One final issue should be explored: defendants' contention that this Court should go behind defendants' express acknowledgment that THE ZIPPER is covered by the `474 Patent (and hence that it necessarily infringes the `474 Patent) to determine the infringement issue independently. At least two considerations compel a negative answer to that position.
For one thing, who is in a better position to say whether his own product embodies (and hence infringes) his own invention than the inventor himself? When the inventor and his company have expressly said so, and have said so to obtain a competitive advantage (with the acknowledged intent to warn off other prospective competitors), it would represent the height of irony to ignore that representation in favor of prospectively rewarding those parties with a free pass.
Relatedly, the effect of any estoppel is always to bar the estopped party from obtaining a court review of the issue involved in the estoppel. This situation is no different. To be sure, most estoppel situations involve detrimental reliance by the other party. But here the same result is called for by defendants' motivation to benefit themselves by warning of if prospective competition through identifying their own product as patent-covered. This is entirely analogous to the doctrine of consideration in the law of contracts, where consideration for a promise may be found either in detriment to the promisee or in benefit to the promisor.
Because there is no dispute as to the facts that bear upon the current issue, it is capable of resolution as a matter of law. This Court grants plaintiffs' motion for a determination that defendants are estopped to deny infringement of the `474 Patent, and this Court so holds. This action is set for a status hearing at 8:45 a.m. June 12, 2003 to discuss the further steps needed to bring the case into a posture of readiness for trial.