The Federal Circuit reaffirms that when asserting only method claims of a patent, the marking requirements of 35 U.S.C. § 287 do not apply.

Rexam argued that the dismissal of their infringement counterclaim was improper because their failure to mark products covered by the asserted patent did not implicate 35 U.S.C. § 287 because the asserted claims were directed to method claims and not the apparatus claims.

The marking statute, 35 U.S.C. § 287, requires that patentees of any patented article give notice to the public that the product is patented. Section 287 can be satisfied by fixing the word “patent” or the abbreviation “pat.” with the patent number on to the product. Failure to satisfy § 287 results in the surrender of damages until the infringer is notified of the infringing act. Upon notification the patentee can only obtain damages for infringement continued after notice is provided to the infringer.

However, relying on Hanson (718 F.2d 1075 (Fed. Cir. 1983)), the Federal Circuit held that the dismissal of Rexam’s counterclaim was inappropriate because only method claims were asserted against Crown. Hanson holds that when a patentee asserts only method claims of a patent, which also includes apparatus claims, marking is not required for the product invoking the method claims.