Recent Court Decisions Regarding Actual Notice of Patent Infringement

The understanding of what constitutes notice in regard to damages for patent infringement has evolved considerably over the years. Federal statutes have been interpreted to require varying degrees of notice in determining damages for patent infringement. 35 U.S.C. '287(a) limits damages and remedies available through the requirement of either constructive or actual notice. “The purpose of actual notice is met when the recipient is notified, with sufficient specificity, that the patent holder believes that the recipient is an infringer.” SRI Int'l v. Advanced Tech. Lab, Inc., 127 F.3d 1462, 1470 (Fed. Cir. 1997). Customarily, actual notice is achieved: 1) by sending the recipient a cease and desist letter identifying a patent and a specific activity believed to be infringing, along with a proposal to remedy the situation; or 2) by the filing of a complaint. However, recent rulings by the Court of Appeals for the Federal Circuit (“CAFC”) have accepted district court findings of actual notice (eg, to support determination that infringement was willful) based on a more expansive understanding of this term. Offers of, or requests for, licenses have been considered sufficient and actual notice has been found without specific knowledge of an infringement problem. In addition, actual notice has been found even when communications were made to someone other than the alleged infringer.