I can think of several reasons, but learned of another after reading the Federal Circuit’s decision in Crown Packaging Technology v. Rexam Beverage Can (08-1284). The district court had dismissed the defendant’s infringement counterclaim for failure to comply with the marking requirement of 35 U.S.C. § 287(a). The Federal Circuit reversed the dismissal on appeal, though, explaining that the marking statute was not applicable because the defendant had asserted only the method claims of a patent that included both method and apparatus claims:

“In this case and Hanson, the patentee only asserted method claims despite the fact that the patent contained both method and apparatus claims. In American Medical, in contrast, both apparatus and method claims of the ‘765 patent were asserted. Because Rexam asserted only the method claims of the ‘839 patent, the marking requirement of 35 U.S.C. § 287(a) does not apply. Consequently, we reverse the district court’s grant of Crown’s motion for summary judgment dismissing Rexam’s counterclaim for infringement of the ‘839 patent.” (emphasis added, internal quotations omitted, citation omitted)

A method claim, then, might preserve your ability to file an infringement claim when your marking practices have been less than perfect.

Reading the Crown Packaging Technology opinion gives you the sense that this might not always be the case. Judge Moore, the author of the opinion of the court, phrased the court’s holding – both in the opinion’s introduction and in the conclusion of the section relating to the marking issue – as one that is mandated by precedent:

“[B]ecause we are bound by our holding in Hanson v. Alpine Valley Ski Area, Inc., 718 F.2d 1075 (Fed. Cir. 1983)—that the marking requirement of 35 U.S.C. § 287(a) does not apply when only method claims are asserted—we reverse the district court’s grant of summary judgment dismissing Rexam’s counterclaim based on a failure to mark.” (emphasis added)

Judge Moore’s disagreement with the rule of Hanson is clear.

Read the PTP review of Crown Packaging Technology for a detailed analysis of the court’s opinion.