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Our attorneys stay on top of changes in legislation, agency regulations, case law, and industry trends—then craft timely legal alerts to keep clients up to date on legal developments important to their business.

May 21, 2018

Federal Circuit Addresses Patent Marking Burden

Proper patent marking can be crucial to maximizing the potential damages a patent owner may seek in an infringement lawsuit. Marking products that are covered by a US patent with "patent" or "pat." alongside a patent number or website where patent numbers may be found is required under 35 U.S.C. § 287 to put potential infringers on constructive notice of infringement. Proper marking may further entitle a patent owner to certain damages for infringement prior to the start of a patent lawsuit. However, because it may not be practical or feasible to mark some patented articles, the statute does not address every possible instance of proper marking.

Recently, in Arctic Cat Inc. v. Bombardier Recreational Products, Inc., 876 F. 3d 1350 (Fed. Cir. 2017), the Federal Circuit addressed patent marking issues in the licensing context. Arctic Cat sued Bombardier for patent infringement, claiming its Sea-Doo personal watercraft infringed on a number of Arctic Cat's patents relating to controlled thrust steering systems. Though Arctic Cat prevailed at trial, Bombardier appealed the case to the Federal Circuit, claiming that a licensee of the Arctic Cat patents failed to mark its products covered by the licensing agreement. As a result, and given Arctic Cat's failure to require patent marking in its licensing agreement, it did not comply with the marking statute. Accordingly, Bombardier contended that it should not be responsible for pre-suit infringement damages.

Recognizing that the only dispute between the parties centered on whether the licensee's unmarked products were covered by the patent claims at issue, the court remanded the case on the issue of patent marking to allow Arctic Cat an opportunity to argue its compliance with 35 U.S.C. § 287. In doing so, the Federal Circuit addressed a split among district courts regarding the respective evidentiary burdens on each party in a dispute over patent marking, reiterating its longstanding precedent that responsibility for "proving compliance with marking is and at all times remains on the patentee."

The court then held that in a patent litigation, the accused infringer challenging marking compliance need only articulate which products it believes practice the patents-in-suit and must be marked with "patent" or "pat." alongside the patent numbers or a website displaying the same in order to put potential infringers on notice of a patent. Once accomplished, the burden of persuasion remains on the patent owner to establish compliance with the marking statute. Thus, Bombardier satisfied its burden of production obligation through expert testimony identifying several products, leaving the burden on Arctic Cat on remand to prove its licensee's products were covered by the asserted patents.

As noted above, compliance with 35 U.S.C. § 287 is essential to providing constructive notice to potential infringers and the ability to seek pre-suit infringement damages, in addition to damages tolling from the beginning of a lawsuit. Given the complexity of the marking statute, legal guidance in determining when, where, and how to mark provides the best guarantee that these objectives can be met.


For more information. Please contact either Peter Bilinski, Chair of the Patents & Prosecution Practice Area, at pbilinski@barclaydamon.com, Doug Nash, Chair of the Intellectual Property Litigation Practice Area at dnash@barclaydamon.com, or Michael Oropallo at moropallo@barclaydamon.com.

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