Oribel Pte. Ltd. v. Carter’s Retail — Inadequate Patent Marking Bars Pre-Suit Damages

Background

Oribel accused Carter’s Retail, The William Carter Company, and Skip Hop of infringing a patent involving children’s activity-center products. Before trial, the defendants sought summary judgment on infringement, pre-suit damages, willfulness, and lost profits. Oribel separately asked the court to remove several affirmative defenses.

The damages dispute focused on patent marking—the statutory requirement that patented products be marked so the public receives notice. Oribel had told its manufacturer, Meiban, to instruct a separate packaging company to mark the products, but Oribel offered no evidence of a contract, follow-up communication, or continuing verification.

The Court’s Holding

The court held that Oribel could not recover pre-suit damages. Its single instruction passed through a manufacturer did not establish reasonable efforts to ensure substantial compliance with the marking statute. The problem was significant: the record showed that sixty-one percent of patent-practicing units sold from 2021 through 2023 were not properly marked.

Because the marking failure barred pre-suit damages, the court also granted judgment against Oribel’s theory of pre-suit willful infringement. But it declined to eliminate lost-profit damages altogether, leaving both Oribel’s own lost-profit theory and its theory involving nonparty Oribel Inc. for trial.

The court also denied summary judgment of noninfringement on the remaining asserted claims and rejected a disclaimer defense. It explained that prosecution disclaimer was not an affirmative defense to be presented to the jury where no live claim-construction dispute remained.

Key Takeaways

• A patent owner must do more than give an initial marking instruction; it should monitor whether products actually remain substantially compliant.
• A sixty-one-percent noncompliance rate, combined with little evidence of oversight, defeated pre-suit damages.
• Losing pre-suit damages does not necessarily eliminate post-suit damages or all lost-profit theories.
• Prosecution disclaimer ordinarily concerns claim scope and cannot simply be repackaged as a jury-facing affirmative defense.

Why It Matters

Patent marking is an operational compliance task, not merely language for packaging specifications. Businesses that license manufacturing or packaging to others should use contracts, audits, and documented follow-up to confirm that patented articles carry the required notice. Otherwise, years of otherwise recoverable damages may disappear even if infringement is later proved.

The ruling is also a reminder that pretrial orders can sharply change settlement value. Oribel kept its live infringement and lost-profit claims, but the loss of the entire pre-suit period narrowed the available recovery before the jury heard the case.

Full Opinion