Don’t Damage your Patent Infringement Damages Case
by: Jake Mace | October 29, 2017
Damages for patent infringement can extend back up to six years under 35 U.S.C. § 286. This “retroactive” infringement can be limited for a couple reasons: if the patent issued less than 6 years ago or if the patentee failed to mark a “patented article.”
A patentee that is given the chance to constructively put all would-be infringers on notice by marking a “patented article.” This marking can either be the patent number itself or a reference to a website where the patent number is associated with the article. If the patentee fails to mark, then they must provide actual notice to an infringer instead. The repercussion for failing to mark is the forfeiture of damages associated with “retroactive” infringement. 35 U.S.C. § 287 states that if a patentee failed to mark when he, or someone under his direction, made, sold, offered for sale, or imported a “patented article” then damages can only be collected after an infringer was given actual notice that they infringed the patent.
There are two situations in which marking, and consequently notice, become irrelevant.
First, if there was never any patented article, then 35 U.S.C. § 287 doesn’t apply because there was never anything to mark. Second, if the patent only contains method claims, then, again, 35 U.S.C. § 287 doesn’t apply because a method cannot be marked. In these situations, damages can extend back up to the full six years allowed by 35 U.S.C. § 286.
A complex situation arises when a patentee, who made/sold/offered for sale/imported a “patented article” asserts only method claims of a patent that has both apparatus and method claims. Despite seemingly clear Federal Circuit precedent, some district courts have started to deny past damages to patentees for failing to mark “patented articles” because of the presence of apparatus claims in the patent even though the patentee is only asserting the infringement of method claims in a case.
Below is a reference table that summarizes the current state of marking requirements:
* 35 U.S.C. § 287 (“Patentees, and persons making, offering for sale, or selling within the United States any patented article for or under them, or importing any patented article into the United States, may give notice to the public that the same is patented, either by fixing thereon the word “patent” or the abbreviation “pat.”, together with the number of the patent, or by fixing thereon the word “patent” or the abbreviation “pat.” together with an address of a posting on the Internet, accessible to the public without charge for accessing the address, that associates the patented article with the number of the patent, or when, from the character of the article, this can not be done, by fixing to it, or to the package wherein one or more of them is contained, a label containing a like notice. In the event of failure so to mark, 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. Filing of an action for infringement shall constitute such notice.”)
** ActiveVideo Networks v. Verizon Commc’ns, 694 F.3d 1312, 1335 (Fed. Cir. 2012) (“Our prior decisions that patents which contain only method claims are not subject to the section 287 marking requirements have a sound basis. And we reaffirm the bright-line easy to enforce rule: if the patent is directed only to method claims, marking is not required.”)
*** See E.g., Huawei Techs. Co. Ltd. v. T-Mobile US, Inc., 2:16-CV-00052-JRG-RSP (E.D. Tex. 2017) (Report and Recommendation by Mag. J. Payne) (“If the patentee fails to mark any article with the patent then later asserts a claim that encompassed the unmarked article, the patentee should not be entitled to bypass § 287(a)’s constructive notice requirement. Thus, because Huawei is asserting claims, including device claims, that encompass its unmarked products, the marking statute applies.”)
**** Crown Packaging Tech., Inc. v. Rexam Beverage Can Co., 559 F.3d 1308, 1316 (Fed. Cir. 2009) (“Accordingly, a party that does not mark a patented article is not entitled to damages for infringement prior to actual notice. Although Rexam asserted only the method claims of the ‘839 patent against Crown, the district court dismissed Rexam’s counterclaim because the ‘839 patent also includes unasserted apparatus claims. The district court erred. The law is clear that the notice provisions of § 287 do not apply where the patent is directed to a process or method. Bandag, Inc. v. Gerrard Tire Co., 704 F.2d 1578, 1581 (Fed.Cir.1983). In Hanson, 718 F.2d at 1082-83, we held that 35 U.S.C. § 287(a) did not apply where the patentee only asserted the method claims of a patent which included both method and apparatus claims. Hanson is factually identical to this case, and we are therefore bound by the rule of Hanson.”)