Kimberly-Clark Worldwide, Inc. v. First Quality Baby Prods., LLC

To be entitled to pre-complaint damages for patent infringement, the patent-holder must provide the accused infringer with either actual or constructive notice. A contractual requirement that obligates a licensee to mark implementing products with the patent number provides sufficient evidence that the patent-holder made reasonable efforts to ensure compliance with the marking requirement such that the patent-holder can survive a motion for summary judgment.

Opinion (CALDWELL): As part of a larger dispute, Kimberly-Clark sued First Quality seeking damages for the infringement of four patents. First Quality moved for summary judgment, alleging that Kimberly-Clark did not comply with the patent marking statute and therefore was not entitled to seek pre-complaint damages for any infringement. Damages for patent infringement are limited to infringement that occurred after the infringer received notice of the infringement. Notice can be either actual or constructive—by marking the number of the patent on substantially all of the products implementing the patent. Kimberly-Clark did not provide actual notice of infringement until it filed its complaint. Accordingly, to claim any pre-complaint damages it was required to prove constructive notice. First Quality argued that Kimberly-Clark could not show constructive notice because it permitted several licensees to implement the patents without marking the patents. When a patent is implemented by someone other than the patent-holder, a court considers whether the patent-holder made reasonable efforts to ensure compliance with the marking requirements. The patent-holder bears the burden of showing compliance. For two patents, however, the Court found that although the patent numbers were not always marked on licensees' products, Kimberly-Clark had contractually required the licensees to mark the patents, which provided evidence a reasonable fact finder could credit to conclude that Kimberly-Clark had made reasonable efforts to ensure compliance, which defeated the motion for those patents. For the other two of the patents at issue, Kimberly-Clark did not present any evidence that it had required (with the exception of one licensee) licensees to mark the patent on their products. Accordingly, the court GRANTED First Quality's motion for summary judgment for the other two patents.