In a recent case from the United States District Court for the Eastern District of Virginia, the district court granted defendants' motion to limit damages for failure to mark for all but one of the patents-in-suit. Pursuant to 35 U.S.C. §287(a), a patentee must either mark a patented product or provide actual notice of infringement in order to recover damages. Section 287 can be satisfied either by constructive notice, accomplished by marking a product or packaging with the applicable patent number, or actual notice, such as sending a cease and desist letter or providing the alleged infringer with actual notice of infringement through another affirmative act.

Defendants filed a motion for judgment as a matter of law asserting that the plaintiff had failed to introduce sufficient evidence to support a finding that it was entitled to recover pre-suit damages because it failed to comply with the marking requirements of Section 287. Plaintiff argued that Section 287 did not apply because the defendants were aware of the patents and, therefore, had actual knowledge regardless of plaintiff's failure to mark. The plaintiff also argued that with respect to one of the patents Section 287 did not apply because the plaintiff was only asserting method claims and not apparatus claims.

In analyzing whether defendants had notice under Section 287, the district court noted that "[t]he
inquiry into whether the actual notice requirement has been satisfied focuses on the actions of the
patentee rather than the knowledge of the accused infringer." As a result, the district concluded that
the plaintiff could not rely on allegations of willful infringement, i.e., that defendants knew of the
patents regardless of plaintiff's failure to mark or otherwise put defendants on notice, to satisfy the
notice requirement. Rather, plaintiff had to demonstrate it took an affirmative action to put
defendants on notice prior to filing the lawsuit.

The district court then found that the plaintiff had produced no evidence that it had marked its
products nor that it had provided defendants with explicit notice of infringement prior to filing the
lawsuit. Accordingly, the district court barred plaintiff from seeking pre-suit damages for three of
the four patents-in-suit based on Section 287.

With respect to the fourth patent, the district court noted that it only included method claims and, therefore, there was no requirement to mark. "Established Federal Circuit case law is clear that
where a patent contains only method claims, the patentee has not duty to mark." Accordingly, the
district court found that Section 287 did not bar pre-suit damages for one of the patents because it
only contained method claims.

* * *

The case highlights the importance of the marking requirements of the Patent Act. For plaintiffs, it
is important to make sure that you mark your products (assuming you intend to assert more than
just method claims) or put infringers on notice of their infringement. For defendants, the failure to
mark or provide notice, can be a significant defense to limit or dramatically reduce damages in a
patent case where apparatus claims are asserted. Accordingly, it is a defense that should not be

Activevideo Networks, Inc. v. Verizon Communications, Inc., Case No. 2:10cv248 (E.D. Va. July 27,