UNITED STATES DISTRICT COURT FOR THE 

DISTRICT OF NEW HAMPSHIRE

Hypertherm, Inc.

v. Civil No. 05-cv-373-JD

American Torch Tip Company

O R D E R

American Torch Tip Company (“ATTC”) moves for summary

judgment that certain of its products do not infringe Hypertherm,

Inc.’s United States Patent No. 5,977,510 (“‘510 patent”), and

that Hypertherm cannot show that it marked its products covered

by the ‘510 patent in the statutorily required manner. ATTC

argues that because of a lack of notice of the ‘510 patent, due

to failure to mark patented products, any damages it would owe

for infringement would be limited to amounts accrued after

November of 2004. Hypertherm objects to the motion.

Standard of Review

Summary judgment is appropriate when “the pleadings,

depositions, answers to interrogatories, and admissions on file,

together with the affidavits, if any, show that there is no

genuine issue as to any material fact and that the moving party

is entitled to a judgment as a matter of law.” Fed. R. Civ. P.

56(c). The party seeking summary judgment must first demonstrate

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the absence of a genuine issue of material fact in the record. 

See Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). A party

opposing a properly supported motion for summary judgment must

present competent evidence of record that shows a genuine issue

for trial. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242,

256 (1986). All reasonable inferences and all credibility issues

are resolved in favor of the nonmoving party. See id. at 255. 

Any procedural issues that are not unique to patent law are

reviewed under the standard applied by the regional circuit,

which is the First Circuit here. See Dominant Semiconductors

SDN. BHD v. Osram GMBH, 524 F.3d 1254, 1260 (Fed. Cir. 2008). 

Federal Circuit law, however, controls patent issues. Id.

Discussion

ATTC seeks summary judgment of non-infringement of the ‘510

patent by certain ATTC products. It also seeks summary judgment

that the date it had notice of the infringement was in November

of 2004. Hypertherm agrees that certain versions of the listed

ATTC parts do not infringe the ‘510 patent but objects to summary

judgment on non-infringement as to other products and challenges

ATTC’s argument as to marking its products.

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A. Infringement of the ‘510 Patent

Hypertherm initially accused ATTC General Parts Nos. 120518,

120518-ATTC, 120518_ATTC, 120578, 120606, 120882, 120882_ATTC,

and 220007 of infringing asserted claims of the ‘510 patent.

Hypertherm admits that its expert witness, E. Smith Reed, later

gave his opinion that the version of ATTC General Part No.

120518_ATTC (as depicted in the drawing at ATTC005487) and the

version of 120882_ATTC (as depicted in the drawing at ATTC00033)

do not infringe the asserted claims of the ‘510 patent. ATTC’s

expert witness, James K. Sprague, gave his opinion that the most

recent versions of ATTC General Parts Nos. 220007, 120882,

120606, 120578, and 120518 do not infringe the asserted claims of

the ‘510 patent. Reed then agreed with Sprague that ATTC General

Parts No. 220007 (as depicted in the drawing at ATTC056855), No.

120882 (as depicted in the drawing at ATTC000033), and No. 120518

(as depicted in the drawing at ATTC056853) did not infringe the

asserted claims of the ‘510 patent.

In response to ATTC’s motion for summary judgment,

Hypertherm represents that it no longer accuses ATTC General

Parts No. 220007 (as depicted in the drawing at ATTC056855), No.

120882 (as depicted in the drawing at ATTC000033), or No. 120518

(as depicted in the drawing at ATTC056853) of infringing any of

the asserted claims of the ‘510 patent. Based on the experts’

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opinions and Hypertherm’s concessions, ATTC contends that it is

entitled to summary judgment that ATTC General Parts No. 220007

(as depicted in the drawing at ATTC056855), No. 120882 (as

depicted in the drawing at ATTC000033), and No. 120518 (as

depicted in the drawings at ATTC056853 and ATTC005487) do not

infringe the asserted claims of the ‘510 patent. Hypertherm

argues that the motion should be denied as moot as to those parts

that it no longer accuses of infringement. 

Based on Hypertherm’s representation that it no longer

accuses ATTC General Parts No. 220007 (as depicted in the drawing

at ATTC056855), No. 120882 (as depicted in the drawing at

ATTC000033), and 120518 (as depicted in the drawing at

ATTC056853) of infringing the ‘510 patent, Hypertherm has waived

those claims. The record shows no dispute of material fact that

the version of ATTC General Parts No. 120518_ATTC (as depicted in

the drawing at ATTC005487) does not infringe the asserted claims

of the ‘510 patent. Therefore, ATTC is entitled to summary

judgment that the version of ATTC General Parts No. 120518_ATTC

(as depicted in the drawing at ATTC005487) does not infringe the

asserted claims of the ‘510 patent. In addition, because

Hypertherm has waived its ‘510 patent infringement claims as to

ATTC General Parts No. 220007 (as depicted in the drawing at

ATTC056855), No. 120882_ATTC (as depicted in the drawing at

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ATTC000033), and No. 120518 (as depicted in the drawing at

ATTC056853), those claims are dismissed with prejudice.

B. Marking and Notice

If a patent owner fails to provide notice to the public that

an article is patented, by marking the applicable patent number

on the product or its label, “no damages shall be recovered by

the patentee in any action for infringement, except on proof that

the infringer was notified of the infringement and continued to

infringe thereafter, in which event damages may be recovered only

for infringement occurring after such notice.” 35 U.S.C. §

287(a). “Constructive notice is provided when the patentee

consistently marks substantially all of its patented products.” 

Sentry Protection Prods., Inc. v. Eagle Mfg. Co., 400 F.3d 910,

918 (Fed. Cir. 2005) (internal quotation marks omitted). The

patentee bears the burden of proving compliance with the marking

statute by a preponderance of the evidence. Nike, Inc. v. WalMart Stores, Inc., 138 F.3d 1437, 1446 (Fed. Cir. 1998).

ATTC contends that Hypertherm cannot show that it

consistently marked substantially all of its products protected

by the ‘510 patent. In particular, ATTC points to labels from

six Hypertherm products, which Hypertherm identified in response

to interrogatories as products covered by at least one claim of

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the ‘510 patent, that are not marked with the ‘510 patent. 

Further, ATTC represents that Hypertherm identified three other

products as being covered by the ‘510 patent but failed to

produce labels for those products. 

In response, Hypertherm admits that it identified the labels

for the patented products, as ATTC represents, but contends that

other documents in the record “show the manner in which

Hypertherm’s products are marked.” Obj. at 7. Hypertherm also

contends that the labels ATTC references are undated and that

ATTC has not shown that those labels were intended to mark

products that were actually sold. Hypertherm provides evidence

that it had general processes and procedures in place for marking

its products with its patents. The only evidence Hypertherm

references that specifically pertains to marking its products

with the ‘510 patent is an internal email, dated June 6, 2000,

which states that old labels for three of the products, whose

labels were produced to ATTC and did not include the ‘510 patent,

were destroyed and new labels were marked with the ‘510 patent.

Hypertherm appears to misunderstand the burden of proof. 

ATTC has raised an issue as to whether Hypertherm can sustain its

burden of proving compliance with § 287(a). ATTC points to some

evidence that Hypertherm has not complied with § 287(a). 

Hypertherm’s criticisms of ATTC’s evidence, which was produced by

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Hypertherm on the issue of marking, is immaterial. To avoid

summary judgment, Hypertherm must at least show a factual dispute

as to whether it has complied with § 287(a). 

Hypertherm has not provided evidence that it consistently

and continuously marked its patented products with the ‘510

patent. Its general practices and procedures for marking do not

address the specific evidence presented by ATTC that products

were not marked with the ‘510 patent. For example, Hypertherm

did not augment its evidence about its marking practices with

specific evidence of products actually marked with the ‘510

patent. Cf. Ceeco Mach. Mfg., Ltd. v. Intercole, Inc., 817 F.

Supp. 979, 984 (D. Mass. 1992) (bolstering evidence of a “strong

and strict company policy regarding patent marking” with “various

declarations by Ceeco employees and the photographs and customer

declaration proving marking”). Hypertherm did not submit

affidavits from its employees or principals that its products

were marked, as statutorily required, with the ‘510 patent. Cf.

Sentry, 400 F.3d at 918. Based on the record presented here,

Hypertherm has failed to show a factual dispute as to whether it

continuously and consistently marked substantially all of its

patented products with the ‘510 patent, as required by § 287(a).

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Conclusion

For the foregoing reasons, the defendant’s motion for

summary judgment (document no. 202) is granted as follows:

ATTC General Parts No. 120518_ATTC (as depicted in the

drawing at ATTC005487) does not infringe the ‘510 patent.

To the extent ATTC may be found liable for infringement

of the ‘510 patent, Hypertherm will be limited to recovering

damages that accrued after the date of actual notice of

infringement of the ‘510 patent in November of 2004.

Hypertherm has waived its claims that ATTC General Parts No.

220007 (as depicted in the drawing at ATTC056855), No.

120882_ATTC (as depicted in the drawing at ATTC000033), and No.

120518 (as depicted in the drawing at ATTC056853) infringe the

asserted claims of the ‘510 patent. Therefore, those claims are

dismissed with prejudice.

SO ORDERED.

____________________________

Joseph A. DiClerico, Jr.

United States District Judge

January 7, 2009

cc: Jill C. Anderson, Esquire

Jacob K. Baron, Esquire

Steven M. Bauer, Esquire

Lucas M. Blower, Esquire

Colin G. Cabral, Esquire

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Seth M. Cannon, Esquire

Joseph A. Capraro, Jr., Esquire

Christopher J. Carney, Esquire

Jeffery M. Cross, Esquire

Joseph T. Dattilo, Esquire

Ami D. Gandhi, Esquire

Maia H. Harris, Esquire

Marc H. Kallish, Esquire

Rhett R. Krulla, Esquire

Jonathan A. Lax, Esquire

Richard C. Nelson, Esquire

W. Scott O'Connell, Esquire

Jeremy P. Oczek, Esquire

Richard D. Rochford, Jr., Esquire

David W. Ruoff, Esquire

John T. Shapiro, Esquire

John M. Skeriotis, Esquire

Benjamin M. Stern, Esquire

Wayne Tang, Esquire

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