Divided Over Damages: Courts Split On Whether Failure to Mark Precludes All, or Only Some, Pre-Suit Damages

Only a few district courts have addressed this question in recent years — but they’ve reached directly opposing conclusions. This article analyzes the conflicting authorities and their reasoning, and it provides guidance to litigants on best practices given the conflict between district courts.

Introduction

A patentee’s failure to comply with its patent marking obligations under 35 U.S.C. §287 provides defendants with a potent, yet sometimes overlooked, defense that can drastically reduce (if not completely eliminate) damages in a patent infringement case. A patentee is ordinarily entitled to recover pre-suit damages for a period between after a patent issues and up to six years before suit is filed. 35 U.S.C. §286. But under §287, “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 such notice.” A patentee also cannot recover pre-suit damages if its patents are not marked on patent-practicing products sold by companies licensed under those patents. Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 950 F.3d 860, 864 (Fed. Cir. 2020). Thus, as the Federal Circuit has well established, if a patentee or its licensee was obligated to mark from the start of the six-year pre-suit damages period, but never did, the patentee cannot recover any pre-suit damages, which could be tens or even hundreds of millions of dollars in some cases. Packet Intel. LLC v. NetScout Sys., Inc., 965 F.3d 1299, 1314 (Fed. Cir. 2020).