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Keywords

damagesstatuteappealpatentcompliance

statutepatent

Related Cases

Nike, Inc. v. Wal-Mart Stores, Inc., 138 F.3d 1437, 46 U.S.P.Q.2d 1001

Facts

Nike, Inc. held a design patent for the 'Air Mada Mid' athletic shoe and filed an infringement action against Wal-Mart and Hawe Yue, who imported and sold unmarked copies of the shoe. The district court found the patent valid and infringed, awarding profits to Nike. The case raised issues regarding compliance with the patent marking statute, which requires patentees to mark their products to recover damages for infringement. The court's ruling was appealed, focusing on the applicability of the marking requirement to design patents.

Nike introduced these shoes into the marketplace in April 1994. Significant numbers of shoes had already been manufactured and sold, or were already in the distribution chain, at the time of patent issuance; these shoes were unmarked with the patent number.

Issue

Whether the marking requirement of the patent statute applies to design patents and affects the recovery of infringer's profits.

Rule

The patent statute's marking requirement applies to limit recovery of infringer's profits in the context of design patents, as well as recovery of damages generally. The patentee bears the burden of proving compliance with the marking statute by a preponderance of evidence. The focus is on whether the patentee's actions provided sufficient notice in rem, not on the infringer's actual knowledge.

Analysis

The court analyzed the statutory language and historical context of the marking requirement, concluding that it applies to both damages and profits. The court emphasized that the patentee must demonstrate compliance with the marking statute to recover profits, and factual issues regarding compliance must be determined by the district court. The district court's accounting methodology for calculating profits was affirmed, as it was not found to be erroneous.

Conclusion

The court affirmed the district court's ruling on the accounting methodology but reversed the finding that the marking statute does not apply to recovery of profits under design patent infringement, remanding for further findings on compliance.

Who won?

Nike, Inc. prevailed in part as the court upheld the validity of its design patent and the infringement finding. However, the court also recognized the need to address the marking compliance issues, which could affect the extent of recovery. The court's decision reinforced the importance of the marking requirement in patent law, ensuring that patentees must adhere to statutory obligations to recover profits for infringement.

Nike, Inc. prevailed in part as the court upheld the validity of its design patent and the infringement finding.

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Keywords

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