The Federal Circuit may enforce a settlement agreement that resolves patent infringement claims as long as the proceedings are still ongoing.256-5. Finding of Willful Infringement Insufficient to Show Actual Notice to Recover Pre-Complaint Damages Under Section 287 Where Patentee Failed to Mark Patented ProductThe Federal Circuit recently affirmed a district court decision denying pre-complaint patent infringement damages to patentee Arctic Cat Inc. (“Arctic Cat”) because it did not comply with 35 U.S.C. § 287 to sufficiently notify Bombardier Recreational Products, Inc. (“Bombardier”) that the infringing articles at issue were patented prior to filing the Complaint.See Arctic Cat Inc. v. Bombardier Rec. Prods., No. 2019-1080, 2020 U.S. App. LEXIS 5023 (Fed. Cir. Feb. 19, 2020) (Before Lourie, Moore, and Stoll,Circuit Judges) (Opinion for the Court, Lourie,Circuit Judge).Section 287(a) provides in relevant part: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 . . . by fixing thereon the word “patent” . . . .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 suc

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.35 U.S.C. § 287(a) (emphasis added).Case LawSeveral courts have considered whether a failure to mark cuts off pre-suit damages even where the patentee previously complied with the marking statute and found that it does.This issue was squarely addressed in Horatio Wash. Depot Techs. LLC v. Tolmar Inc., Civil Action No. 17-1086-LPA (D. Del. Nov. 1, 2018), in which court addressed a fact pattern involving an earlier period of non-compliance with the statute.

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.35 U.S.C. § 287(a) (emphasis added).Application of § 287 to settlements and licensesMarking under the statute is permissive (“Patentees . . . may give notice to the public that the same is patented”), not mandatory.

It is settled law under 35 U.S.C. § 287 that when the patent owner sells or authorizes the sale of a patented product, it must comply with the statute’s marking requirement to obtain the benefit of constructive notice or else damages do not begin to accrue until actual notice is given to the infringer. In Arctic Cat Inc. v. Bombardier Rec. Prods.,[1](Arctic Cat II), the Federal Circuit held that § 287 limits damages even after a patentee or its licensee ceases sales of unmarked products and that a finding of willful infringement does not establish actual notice under § 287.The pertinent factual circumstances of the case are as follows.

Earlier this month in Lubby Holdings LLC et al. v. Chung, No. 2019-2286 (Fed. Cir. Sept. 1, 2021), the Federal Circuit overturned a damages award stemming from a finding of patent infringement because the plaintiff did not show that the defendant had sufficient notice of infringement of the asserted patent under 35 U.S.C. § 287. In doing so, the Federal Circuit reiterated the importance of § 287’s marking requirement in assessing patent infringement damages, making this opinion an important read for any patent owner.The appeal was taken from an action for patent infringement before the U.S. District Court for the Central District of California in which Lubby Holdings, the owner of the asserted ’284 patent relating to personal vaporizers, accused the defendant, a collaborator in connection with the invention claimed in the patent, of making, offering to sell, and selling personal vaporizer devices that allegedly infringed the ’284 patent.

The patent marking statute, codified at 35 U.S.C. § 287(a) appears straightforward: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.

Lubby Holdings and Vaporous Technologies (together, Lubby) sued Mr. Chung for infringement of the ’284 patent.Mr. Chung unsuccessfully moved for judgment as a matter of law as to damages, contending that Lubby did not prove that it satisfied 35 U.S.C. § 287’s marking requirement. The jury found Mr. Chung personally liable for direct infringement of the ’284 patent.Mr.

The Court further rejected Packet Intelligence’s argument that NetScout’s infringement of method patents could serve as a basis for recovery of pre-suit damages. It concluded that a patentee cannot circumvent 35 U.S.C. § 287 and include unmarked products in its royalty base by simply arguing that infringement of related method claims drove sales of such unmarked products.Appellants NetScout Systems, Inc. and NetScout Systems Texas, LLC (“NetScout”) appealed from a judgment of the U.S. District Court for the Eastern District of Texas after a jury verdict and bench trial found, inter alia, that NetScout willfully infringed certain claims of U.S. Patent 6,665,725 (“the ’725 patent”), U.S. Patent 6,839,751 (“the ’751 patent”) and U.S. Patent 6,954,789 (“the ’789 patent”).

The Court explained that the district court erred in placing the burden on Bombardier to prove that Honda’s products practiced the patent. The Court held that once an alleged infringer identifies products that it believes are unmarked patented articles subject to the notice requirement of 35 USC § 287, the patentee bears the burden of proving that the products do not practice the invention.On remand, Arctic Cat could not show that Honda’s products did not practice the asserted claims, but nonetheless argued that it was entitled to receive pre-complaint damages.

PATENT CASE OF THE WEEK Arctic Cat Inc. v. Bombardier Recreational Products Inc., Appeal No. 2019-1080 (Fed. Cir. Feb. 19, 2020)In this week’s Case of the Week, the Federal Circuit addresses issues relating to the notice requirement of the patent marking statute, 35 U.S.C. § 287. The patents relate to thrust steering systems for personal watercraft (“PWCs”).