tennisracketOn March 15, 2013, the U.S. Court of Appeals for the Federal Circuit decided Jack L. Frolow v. Wilson Sporting Goods Co. __ F.3d __ (Fed. Cir. 2013). Although the court declined to adopt the Doctrine of Marking Estoppel, it held that a party’s marking a product with a patent number is an extrajudicial admission that is relevant to the issue of patent infringement.

Wilson Sporting Goods Co. (“Wilson”) had sued Jack L. Frolow in the United States District Court for the District of New Jersey. Previously, Wilson had entered into a licensing agreement with Mr. Frolow that required the company to pay royalties for tennis rackets covered by Mr. Frolow’s US Patent RE 33372.  After conducting an audit, however, Mr. Frolow found that Wilson was not paying royalties for all of the Licensed Articles. At trial, Mr. Frolow alleged breach of the Licensing Agreement and patent infringement. The asserted claims describe a tennis racket with an inertia of 80 ounces inches squared or greater. The primary dispute was whether the racket models were Licensed Articles that fell within the asserted claims of the patent.

Wilson moved for summary judgment that 37 racket models were not Licensed Articles. The company introduced test data that indicated that these models had an inertia of 80 ounce inches squared or less. Mr. Frolow argued that, under the Doctrine of Marking Estoppel, Wilson’s admission that it had marked 14 of the models with the patent number precluded it from challenging whether the rackets were Licensed Articles. The district court held that the marking was irrelevant and granted Wilson’s motion for summary judgment. Mr. Frolow appealed to the Federal Circuit.

The Federal Circuit held that the district court erred in granting summary judgment for Wilson because marking a product with a patent number is an extrajudicial admission that precludes summary judgment in this case. In its decision, the Federal Circuit explained that summary Judgment is appropriate when the moving party shows that there is no genuine issue of material fact. A party’s marking a product with a patent number is an extrajudicial admission that can be used as evidence by the opposing party that the product falls within the patent claim. It is thereby relevant to the issue of infringement and might be used to raise a genuine issue of material fact.

In this case, summary judgment was inappropriate considering all of the evidence. Mr. Frolow’s evidence of marking tended to show that the  rackets were Licensed Articles and Wilson’s expert report tended to show that its rackets were not Licensed Articles.

According to the Federal Circuit, however, the marking of a product does not preclude the party from asserting that the product is not covered by the patent. The doctrine of marking estoppel is explained in SmithKline Diagnostics Inc. v. Helena Labs Corp. 659 F.2d 878 (Fed. Cir. 1989). It is recognized in some circuits, but has not been approved by the U.S. Supreme Court. Congress, moreover, has already provided a remedy for false marking in 35 U.S.C. § 292 and the amendments in the American Invents Act.

 In sum, the Federal Circuit held that a genuine issue of material fact had been raised by the patent marking in this case and reversed the district court’s grant of summary judgment.

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