Defendants Caught Red-Handed In Patent Infringement Case Get Five Months Of Damages Wiped Out For Patentee's Failure To Mark Its Products

• Published date: 14 December 2021
• Subject Matter: Intellectual Property, Patent
• Law Firm: Stites & Harbison PLLC
• Author: Mr Samuel (Sam) Raque

In early September of 2021, the Court of Appeals for the Federal Circuit clarified the notice requirement of 35 U.S.C. ' 287. Patentee's seeking to recover damages on unmarked goods must ensure their notice to a potential infringer is an actual notice of infringement and not merely notice of a patent.

In relevant part, 35 U.S.C. ' 287 (the marking and notice statute) provides that a patentee or her assignee, if she makes or sells an article patented, cannot recover damages against infringers of the patent unless she has given notice of her right, either by marking the article patented, or by informing the particular defendants of her patent and their infringement of it.¹ The purpose of the marking and notice statute is to act as a safety net against innocent infringement. The statute incentivizes patentees to mark their patented product, aids the public in identifying patented articles, and effectively places the world on notice of the existence of a patent.²

As a result, patentees are encouraged to mark their products in the marketplace, so that any potential infringers know of the rights associated with a particular product. The effect of failing to mark a patented article is a prohibition from receiving any damages in a subsequent action for infringement, rather than merely a reduced amount of damages.³ However, noncompliant patentees may begin marking their products and recover damages for the products sold thereafter.⁴ Section 287 also provides an alternative to marking products by allowing the patentee to individually provide notice of infringement to potential defendants and recover damages for any infringement after such notice. Importantly for patent owners, the notice required is actual notice such as an affirmative communication from the patent owner of a specific charge of infringement.⁵ A clear example of such notice is the filing of an action for infringement as explicitly provided for in Section 287(a). However, most patentees will want the calculation of their damages to begin well in advance of filing of an infringement action in order to capture the largest award possible.

Enter Lubby Holdings LLC v. Chung.⁶ Lubby Holdings owns U.S. Patent No. 9,750,287 (the "'284 patent") directed to personal vaporizers that resist leaking while not in use. Lubby Holdings and a non-exclusive licensee, Vaporous Technologies, (collectively "Lubby") sued Mr. Chung for infringement of the '284 patent and were awarded damages of $863,936.10 by the United...