U.S. Patent Marking Guide

By Austen Zuege

What follows is the ultimate guide to patent marking in the United States.  Marking is optional but can provide significant benefits to the patent owner in the event there is infringement.  Not only are there practical burdens associated with marking patent products, there can also be questions about the legal requirements for proper patent marking notices.  This patent marking guide aims to address both legal requirements and practical considerations for patentees.


Table of Contents


Basic U.S. Marking Requirements

Patent marking can be important for obtaining full recovery of infringement damages.  When enforcing a patent against an infringer in the United States, damages for infringement of a patented article can usually be recovered only from the date the infringer had actual or constructive notice of the patent(s), whichever comes first.[1] 

The statutory marking requirement comes from § 287(a) of the patent laws, which provides:

“Patentees, and persons making, offering for sale, or selling within the United States any patented article for or under them, or importing any patented article into the United States, may give notice to the public that the same is patented, either by fixing thereon the word ‘patent’ or the abbreviation ‘pat.’, together with the number of the patent, or by fixing thereon the word ‘patent’ or the abbreviation ‘pat.’ together with an address of a posting on the Internet, accessible to the public without charge for accessing the address, that associates the patented article with the number of the patent, or when, from the character of the article, this can not be done, by fixing to it, or to the package wherein one or more of them is contained, a label containing a like notice. In the event of failure so to mark, 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. Filing of an action for infringement shall constitute such notice.

35 U.S.C. § 287(a)

These statutory marking requirements apply to all types of U.S. patents: utility, design, and plant.

Explanations of what constitutes actual notice and how to properly mark patented articles to provide constructive notice are provided below. 

Policy Behind the Marking Requirement

The marking requirement is meant to protect the public’s ability to exploit an unmarked product’s features without liability for damages until a patentee provides either constructive notice through marking or actual notice.[2]  More specifically, marking requirements serve three related purposes: 1) helping to avoid innocent infringement; 2) encouraging patentees to give notice to the public that the article is patented; and 3) aiding the public to identify whether an article is patented.[3]

Actual Notice: An Alternative to Marking

Actual notice requires the affirmative communication of a specific charge of infringement, such as in a demand or cease-and-desist letter.[4]  In this sense, actual notice (pre-suit) requires proactive communication by the patentee to the accused infringer to enable “proof that the infringer was notified of the infringement and continued to infringe thereafter.”[5]  The marking statute also explicitly provides that “[f]iling of an action for infringement shall constitute such [actual] notice.”[6]  So, at a minimum, the commencement of an infringement lawsuit will cause damages to accrue going forward. 

Constructive Notice Established Through Patent Marking

Marking patented articles provides constructive notice to the public that an article is patented.  This is called “constructive” notice because it does not matter whether or not an infringer actually saw the patent marking notice, only that the patentee marked patented articles appropriately.  To be sufficient to establish constructive notice, the patentee must be able to establish that substantially all of the patented articles being distributed were marked, and that once marking was begun, the marking was substantially consistent and continuous.[7]  If marking is defective at first, curing those defects going forward is possible.  But full compliance with marking requirements sufficient to provide constructive notice to infringers is not achieved until the time the patentee “consistently marked substantially all” of the patented products, and was no longer distributing unmarked products.[8] 

Possible Exceptions to Marking Requirements

The most important exception to the marking requirement is where the patentee has not sold any patented articles. When there are no products to mark, there is no failure to mark and therefore no bar to recovery of pre-suit damages.[9] A patentee who has not sold anything under a patent can still recover back damages despite having not literally marked any products.

Additionally, because the marking statute refers only to a “patented article”, patents with method or process claims are treated differently.  Courts have said that neither marking (constructive notice) nor actual notice is required to obtain back damages for infringement of asserted patents having only method or process claims.[10]  For patents having both apparatus and method claims, marking may still be required to establish constructive notice depending on which claims are asserted in an infringement lawsuit.[11]  In light of that standard, it is recommended to mark products whenever a relevant patent contains an apparatus claim.

Lastly, there is a “rule of reason” exception of sorts that may apply to a failure of a licensee or other authorized third party to substantially consistently and continuously mark despite reasonable efforts by the patentee, as discussed below.

Licensee(s) and Other Authorized Parties Must Mark Too

Marking requirements apply not only to the patentee but anyone making, selling, or offering for sale the patented article “for or under” the patentee or importing it into the U.S.[12]—essentially all the types of things that can constitute direct infringement 35 U.S.C. § 271(a) except for mere “use”.  Where a patent is licensed to another, expressly or impliedly, the other entity is required to mark as well.[13]  Authorized activities by an outsourced manufacturer or authorized seller are treated as if they are by the patentee in terms of marking requirements in this respect.  Failure of a licensee to consistently mark substantially all licensed products will frustrate efforts to establish constructive notice.  However, because third parties are implicated, this requirement is subject to a rule of reason.[14]  A court can excuse some instances of omitted marking by others and still find constructive notice satisfied if the patentee made reasonable efforts to ensure compliance with marking requirements.[15] 

Care should be taken whenever there are other entities involved with making, selling, offering for sale, or importing into the U.S. a patented article intended to be marked.  It is recommended that any license for a U.S. patent obligate the licensee to comply with marking requirements.[16] 

How to Implement Patent Marking: Two Possibilities

There are two ways to mark patented articles in accordance with U.S. law: physical or virtual marking.

Physical Marking

Physical (or conventional or traditional) patent marking involves fixing notices on the patented articles themselves in a way that associates the patented article with the number of the patent.[17]  Such a notice must include the word “patent” or the abbreviation “pat.”, together with the number of the patent(s).[18]  If the nature of the patented article makes means such a notice cannot be fixed to the patented article itself, such as due to size constraints or where the article is a fluid, the notice can instead be placed on a label fixed either to the patented article or to a package containing one or more of the patented articles.[19] 

An example of a proper physical patent marking notice (for the fictitious U.S. Pat. No. 00,000,000) is the following fixed directly on an article covered by the claims of the indicated patent:

Pat. 00,000,000

If multiple patents apply to the same patented article, they can be listed together.  It is not necessary to repeat the word “patent” or abbreviation “pat.” before each patent number in such a list.  Court decisions are often unconcerned with the word “patent” being pluralized in the notice, as well as with the addition of a word or abbreviation, such a saying “patent number 00,000,000” or “pat. nos. XX,XXX,XXX and YY,YYY,YYY” in a marking notice.  After all, the point is to provide public notice not simply the unthinking repetition of certain words and numbers in isolation.  The use of “U.S. patent” or “U.S. pat.” is acceptable, and might be worthwhile for products sold or shipped internationally. Though the text of the notice should be in English, because the statute explicitly uses English words and does not explicitly permit translations.

Virtual Marking

The Basics of Virtual Patent Marking

Virtual patent marking is an acceptable alternative to physical marking.  It can be useful in situations where all the patent information required to provide constructive notice cannot easily fit on the patented article or even its label, such as where there are multiple patents that apply to a given article or the article itself is very small.  As the number of digits in patent numbers increase, this sort of difficulty increases.  Virtual marking can also be helpful in situations where different patents are associated with different products but having product-specific labels is burdensome—a single label might be used listing a URL for a web page with patent association information for multiple products.  Virtual marking can also minimize the need to replace or modify molds used to create a patent marking notice directly on molded articles as new patents issue or existing patents expire.

Implementing virtual patent marking involves fixing notices on the patented articles themselves in a way that associates the patented article with the number of the patent.[20]  Such a virtual marking notice must use the word “patent” or the abbreviation “pat.” together with an address of a posting on the Internet (that is, a web page URL), accessible to the public without charge for accessing the address.[21]  If the nature of the patented article makes means such a notice cannot be fixed to the patented article itself, the virtual marking notice (indicating “patent” or “pat.” together with a URL) can instead be placed on a label fixed either to the patented article or to a package containing one or more of the patented articles.[22]

An example of a proper virtual patent marking notice fixed to a patented article or its label is the following:

Pat. example.com/patents

The main feature of virtual marking—the part that makes it “virtual”—is that the information associating the patented article with the number(s) of the patent(s) that cover it appears on a freely-accessible web page rather than directly on the article or its label.  There is still a requirement for a notice on the patented product or its label.  A marking web page, alone, is insufficient unless there is also a proper notice on the patented product or its label to direct people to that web page’s address.[23] 

The difference between physical and virtual marking really involves the manner of conveying the required association between the patent number(s) and the patented article.  With traditional physical patent marking, the association is implicit in terms of which patent numbers are including in or omitted from a notice fixed to a particular product or its label.  In virtual marking, the notice fixed to the product or its label merely directs the public to a web page but the web page must further provide an association between given patent(s) and the specific product(s) that practice those patent(s). 

Courts have said that virtual patent marking does not allow a patentee to avoid the traditional burden of determining which patent(s) apply to specific products and indicating that patent-to-product association.[24]  The patentee cannot shift that burden to the public.[25]  Any web page that fails to create the required “association” between specific patent(s) and patented article(s) means that such attempted marking is ineffective and fails to provide constructive notice—unless and until the virtual marking web page is revised to cure the lack of patent-to-product association defect(s). 

Minimum Requirements for Virtual Marking Web Pages

Virtual marking is relatively new compared to physical marking.  Only a few courts have addressed questions about what does or does not constitute sufficient virtual marking, and those few decisions are not necessarily definitive.  But what courts have said to date is that a virtual patent marking web page must make an association between specific product(s) and specific patent(s) in order to be effective.  The virtual marking web page must be as specific and detailed as was always required with physical marking.[26] 

Courts have repeatedly emphasized that a virtual marking web page cannot create a “research project” for the public that requires visitors to investigate and determine on their own which patent(s) are associated with which patented article(s).[27]  Merely listing all patents that could possibly apply to a product or all patents owned by the patentee (without further identifying patent-to-product associations) is insufficient, even if that list involves only a relatively small number of patents, as is a general statement that “one or more” patents in a list of patents applies to given product(s).[28]  Also, associating patent(s) with broad categories of products rather than specific patented products has been found insufficient.[29]  One court has even said that a web page linking to documents about legal proceedings that visitors would have to read and interpret to determine which patent(s) cover which product(s) is still an impermissible “research project”.[30]  In reaching these decisions, courts have noted prohibitions on false patent marking,[31] which is discussed below

One court found that virtual marking was substantially continuous despite unavailability of the web page over a three-month period during a web site update.[32]  But the fact that the court had to rule on that issue at all means that patentees should minimize the length of downtime due to maintenance, cosmetic redesigns, and the like.

Some Practical Considerations for Virtual Marking

Virtual marking implicitly requires that reliable records be kept and retained to prove that relevant information actually appeared on the Internet at particular times—in addition to evidence that the patented articles bore a notice.  If a patent is enforced and the patentee wishes to rely on constructive notice provided by virtual marking, there will be a need to provide evidence that the Internet address (URL) in the notice fixed to the patented article or its label was substantially continuously “accessible to the public without charge for accessing the address” and that the content of that web page “associate[d] the patented article with the number of the patent”.  That evidence must be correlated with provable date(s). 

One way to provide such evidence is testimony from information technology (IT) staff and/or a webmaster knowledgeable about the creation of the virtual marking web page and any modifications or changes to it over time.  But depending on how a web site is set up and managed, logs or other records of changes might not be automatically kept, and IT staff and webmasters might not recall the history of any given page.  These concerns are significant when the page appears on a large and complex web site, where there is a large team of IT/webmaster personnel with diffuse responsibilities, or when there is significant personnel turnover over the enforcement period of a patent (potentially more than 20 years). 

Another, and more consistently reliable, way to provide evidence to support virtual patent marking is to create a verifiable record (i.e., archive) of the virtual patent marking web page.  If such records are kept in the ordinary course of business, they may fall in an exception to hearsay and be self-authenticating under federal evidentiary rules applied by courts,[33] which may avoid the need to produce a witness to authenticate them.  Similarly, archived copies of the virtual patent marking web page can be periodically created.  There are third-party digital evidence authentication services that could be used for this purpose.  Though the Internet Archive’s “Wayback Machine” (archive.org) is a free, open-access archive service that can be used to create a verifiable archive.  But the ability of some tools to archive a given web page will depend on web site settings and permissions allowing “bots” to crawl the site.  In any event, under this approach, the virtual marking web page should be affirmatively submitted to a desired archive provider when first created and at least following each and every substantive modification. 

Make sure that the patent marking web page URL remains static and unchanged, that the web page at that URL remains substantially continuously available and functional, and that the notice accurately lists the web page URL.  Typos in the URL carried on the patented article or its label are potentially problematic here.  Also, notices that list a dead URL will not satisfy marking requirements.  This could arise, for instance, arise from prolonged web server malfunctions or the like.  It could also arise if the URL for the actual web page is changed but labels on patented products that have already been distributed cannot be altered.  Loss of rights to the domain name that forms part of the URL in virtual marking notice in previously-distributed products could be a problem.  But mergers and acquisitions or the sale of a patent might also make it difficult to maintain a static URL for virtual marking purposes.  So, before implementing virtual marking, it is recommended to confirm that the relevant URL used in a marking notice can remain static for the enforceable life of the relevant patents (which is up to six years after the expiration of the last of those patent(s)).  In M&A and patent acquisition scenarios, it may be desirable to secure access to existing virtual marking URLs, or at least to provide for a redirect from that URL. 

Consider whether the URL of the virtual marking web page is for a domain that may not be readily recognized as an Internet address, such as an IP address without a domain name or using an uncommon top-level domain.  If the public is unlikely to recognize such an address as an Internet address in a shortened form, make sure that a full address including “http://” and/or “www.” Is included.  Though for URLs at familiar top-level domains like “.com”, it appears adequate to list a shortened address so long as typical web browsers will direct visitors to the site by typing only the shortened address. 

While a scannable QR code or the like may seem helpful for virtual marking, use of such a scannable but not human-readable code on the patented article or its label may not alone satisfy the “address of a posting on the Internet” requirement for virtual marking.  If used at all, any QR code or the like should appear in addition to an Internet address (URL) in alphanumeric characters. 

Use of complex user interfaces on a virtual patent marking web page may present problems.  If the complexity of a web page, such as requiring the use of highly uncommon or unreliable web browser plug-ins, raises questions about whether it is really “accessible to the public”, then it may not provide constructive notice.  Use of menus on a virtual marking landing page and/or redirects may or may not satisfy the constructive notice requirements.  The sufficiency may depend on the specific circumstances and context.  On the one hand, the statue refers to “an address of a posting on the Internet”, which does not explicitly prohibit interactive features or redirects.  And an effective redirect or simple menu to select a particular product would seem to reasonably provide public notice without any meaningful restriction, and therefore seems acceptable to provide constructive notice.  On the other hand, redirects or complex menus that mean the “posting on the Internet” is not actually at the “address” provided in the notice fixed to the patented article or its label might not satisfy constructive notice requirements under a strictly literal reading.  It is recommended to use caution in establishing a virtual patent marking web page and to use the simplest and least complex technical implementation possible.  Consider separate virtual patent marking web pages for different products or categories of products rather than a single, complex page, if doing so will avoid the need for potentially problematic complexity. 

Also consider the accessibility of the format in which virtual marking information is displayed or rendered on a web page from a disability access perspective.  Displaying a graphical image without alternate text information or complex “flyout” interactive displays tied to precise cursor hovering actions may not be able to be conveyed by a braille or audio reader for a visually-impaired site visitor.  It is recommended that accessibility issues be considered, with virtual patent marking information presented in text that is more likely to be readable by common visual impairment browser tools.  Such considerations also apply to any menus that must be navigated to access specific patent-to-product association information. 

Use of visitor tracking features on virtual patent marking web pages presents a few questions.  Patent owners may wish to verify whether the page has been visited, and who visited, through tracking.  The thought may be that this could provide evidence that an infringer visited the page.  However, constructive notice for the accrual of damages does not require that the infringer actually saw a patent marking notice or actually knew about the asserted patent(s).  So that sort of evidence is not necessary to establish constructive notice—although it might be usable to establish willful infringement.  Additionally, the use of online tracking (“cookies”, etc.) is subject to increasing scrutiny and regulation.  The U.S. marking statute says that the virtual marking web page must be “accessible to the public without charge for accessing the address.”  Whether or not visitor tracking effectively constitutes an access “charge” has not yet been addressed or settled by courts. 

Pre-Grant Marking

“Patent Pending”

The statutory patent marking requirements discussed above apply only to granted/issued patents.  There is no requirement to mark products as “patent pending” or in any other way while a patent application is pending.  However, it is permitted and recommended to mark products as “Patent Pending” or “Pat. Pending” when a patent application has been filed but not patent granted yet. This serves as a “copy at your own risk” warning.

Sometimes there will be one or more granted patents plus one or more pending patent applications that apply to a given product. It is possible to list all patents granted to date in a marking notice and further indicate “other patents pending” or the like. Sometimes notices of this sort may indicate that foreign patents exist or are pending as well. This sort of information is extraneous to U.S. patent marking requirements but might be helpful, so long as it is accurate.

There is no consequence to having sold products with no marking or only “patent pending” marking before a patent is granted. It is not necessary to recall or modify markings on products that were sold before an applicable patent issued. But there may be difficult decisions to be made if a considerable inventory of articles is being held at the time an applicable patent issues, given that the subsequent sale of those unmarked products from inventory will generally trigger the limit on damages for selling unmarked products. Marking notices would need to be added to inventoried products or their packages in such a scenario in order to satisfy marking requirements.

Publication Number Marking

Marking a pre-grant patent publication number could possibly help support later damages recovery for infringement, in theory.  One anomaly of U.S. patent infringement damages law is that under certain circumstances reasonable royalty damages can accrue before a patent is granted.[34]  These are referred to as “provisional rights”.[35]  They are available only if the invention as claimed in the granted patent is “substantially identical” to the invention as claimed in a published version of the underlying patent application.[36]  An infringer who “had actual notice of the published patent application” can be liable for pre-grant “provisional rights” reasonable royalty damages in addition to traditional infringement damages.[37]

Provisional rights for pre-grant reasonable royalty damages are not subject to any marking requirement.  There is no statutory requirement that an article later patented be marked as “patent pending” or the like before a patent is granted in order to obtain reasonable royalty provisional rights damages—provided all other requirements are satisfied.  Courts have interpreted “actual notice of the published patent application” for pre-grant provisional rights to be based only on the infringer’s actual knowledge (i.e., state of mind), without requiring affirmative action by the applicant or eventual patentee.[38] 

However, because “actual knowledge” of a published patent application may give rise to provisional rights damages, marking the patent application publication number on articles subject to a pending patent application could potentially support a claim of such knowledge by the infringer—provided there is evidence that the infringer actually saw that notice. At the least, marking a publication number could support an inference of actual knowledge if there is evidence that the infringer saw a marked product.  This may be an incentive to mark a published patent application number on relevant goods, beyond merely a generic “patent pending” notice. 

But provisional rights are rarely available in typical real-world scenarios.  Opportunities to assert them rarely materialize.  So this sort of enhanced pre-grant publication number marking may be of marginal practical value.  The burden of doing this may outweigh the potential benefit.  Certainly, this approach will be less effective than affirmatively communicating with a potential infringer to provide knowledge of a published patent application via a letter or the like, when possible. 

False Patent Marking Prohibited

An important related concept is false patent marking.  False marking generally involves marking products as patented when they are not, or marking products as “patent pending” when no patent application has been filed.  It also applies to counterfeiting.  Penalties apply in the U.S. to false marking to deceive the public, which are applied on a per article basis.[39]  However, the patent laws exclude from the scope of false marking the indication of an expired patent that once applied to the marked product.[40]   Also, there is no liability for honest mistakes about whether or not a patent applies.[41]  A reasonable belief that the articles were properly marked (i.e., covered by the indicated patent) avoids false marking liability.[42]

Currently, either the U.S. Government or “a person who has suffered a competitive injury as a result of a violation” can sue for false marking.[43] Government action fines are “not more than $500 per offense[.]”[44] Private actions are “for recovery of damages adequate to compensate for the injury[,]” meaning there is no fixed limit on potential damages for a competitive injury suit by a competitor or certain potential competitors.[45]

False marking is prohibited for a number of reasons.  It misleads the public into believing that a patentee controls the article in question (as well as like articles), externalizes the risk of error in that determination (shifting it to the public from the manufacturer or seller of the article), and increases the cost to the public of ascertaining whether a patentee in fact controls the intellectual property embodied in an article.[46] 

It is important to only use patent marking where there is a reasonable basis to believe that the product is covered by the indicated patent(s) (or by a pending patent application if “patent pending” is marked).  Patents that do not apply to a given product must not be marked on it.  In the virtual marking context, patent-to-product associations must be specific enough to avoid false marking.  Blanket statements on virtual marking web pages implicating multiple patents and multiple products might give rise to false marking if done for purposes of deceiving the public about which patents, if any, apply to particular products.

Falsely listing an incorrect patent number on a product is not the only ground for false marking liability. Falsely marking something as “patented” without giving a patent number, or indicating alphanumeric characters that look like a patent number without the word “patent” or “pat.”, are prohibited as well.

To Mark or Not to Mark?

There is no affirmative requirement for patentees to mark patented articles.  It is optional.  A failure to mark only limits one of two ways to recover pre-suit damages.  In the end, there is no right or wrong answer to the question of whether a patentee should mark or not. 

In fact, many patentees consciously make the decision not to mark.  This may simply be because the burdens are considered too high.  For instance, it may be too burdensome to mark a product sold internationally but only in limited quantities in the U.S. Or the patentee may feel that the likelihood of a contentious infringement lawsuit where constructive notice matters is too remote.  In some industries, competitors may be generally aware of the patents they each hold, and that may satisfy the patentees.  And for “paper” patents that are not being actively practiced, marking is a moot point.

But in many situations, infringement might begin well before the patentee becomes aware of it.  In those situations, a significant amount of infringement may occur before a letter can be sent to communicate a charge of infringement or a lawsuit initiated.  In those situations, the potential damages that arise before the patentee can affirmatively act may be significant.  That is perhaps the best reason to mark.  Patent marking is a way to preserve the ability to recover all or nearly all damages from infringement. 

Photo of Austen Zuege

Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.


Endnotes:

[1] Am. Med. Sys., Inc. v. Med. Eng’g Corp., 6 F.3d 1523, 1536 (Fed. Cir. 1993). Additionally, back damages are only available for the period six years prior to commencing a lawsuit or raising a counterclaim. 35 U.S.C. § 286.

[2] Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 162 (1989).

[3] Nike, Inc. v. Wal-Mart Stores, Inc., 138 F.3d 1437, 1443 (Fed. Cir. 1998); cf. Lans v. Digital Equip. Corp., 252 F.3d 1320, 1327 (Fed. Cir. 2001) (“knowledge of the patentee” through notice requirements “facilitates avoidance of infringement with design changes, negotiations for licenses, and even early resolution of rights”).

[4] Amsted Indus. Inc. v. Buckeye Steel Castings Co., 24 F.3d 178, 187 (Fed. Cir. 1994).

[5] 35 U.S.C. § 287(a).

[6] Id.

[7] Nike, 138 F.3d at 1446.

[8] Am. Med. Sys., 6 F.3d at 1538; see also Arctic Cat, Inc. v. Bombardier Recreational Prods., Inc., 950 F.3d 860, 861,864-66 (Fed. Cir. 2020) (merely ceasing sales of unmarked products does not cure a failure to mark and back damages are precluded until sales resume with proper marking or actual notice is provided).

[9] Tex. Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1219-20 (Fed. Cir. 2002) (“The recovery of damages is not limited where there is no failure to mark, i.e., where the proper patent notice appears on products or where there are no products to mark.”) (citing Wine Ry. Appliance Co. v. Enterprise Ry. Equipment Co., 297 U.S. 387, 398 (1936)).

[10] Bandag, Inc. v. Gerrard Tire Co., 704 F.2d 1578, 1581 (Fed. Cir. 1983)(citing Wine, 297 U.S. at 395).

[11] Crown Packaging Tech., Inc. v. Rexam Beverage Can Co., 559 F.3d 1308, 1316-17 (Fed. Cir. 2009) (while assertion of both method and apparatus claims triggers the obligation to mark under 35 U.S.C. § 287(a), the assertion of only the method claims of a patent containing both method and apparatus claims does not) (citing Am. Med. Sys., 6 F.3d at 1538-39 and Hanson v. Alpine Valley Ski Area, Inc., 718 F.2d 1075, (Fed. Cir. 1983)).

[12] 35 U.S.C. § 287(a).

[13] Amsted Indus., 24 F.3d at 185 (“A licensee who makes or sells a patented article does so ‘for or under’ the patentee, thereby limiting the patentee’s damage recovery when the patented article is not marked.”) (citing Devices for Med., Inc. v. Boehl, 822 F.2d 1062, 1066 (Fed. Cir. 1987)).

[14] Maxwell v. J. Baker, Inc., 86 F.3d 1098, 1111-12 (Fed. Cir. 1996) (“with third parties unrelated to the patentee, it is often more difficult for a patentee to ensure compliance with the marking provisions. A ‘rule of reason’ approach is justified in such a case and substantial compliance may be found to satisfy the statute.”  “When the failure to mark is caused by someone other than the patentee, the court may consider whether the patentee made reasonable efforts to ensure compliance with the marking requirements.”).

[15] Id.

[16] See Amsted Indus., 24 F.3d at 185; Arctic Cat, 950 F.3d at 861,864-65.

[17] 35 U.S.C. § 287(a).

[18] Id.

[19] Id.

[20] Id.

[21] Id.

[22] Id.

[23] Engera, Inc. v. Cisco Sys., Inc., 547 F. Supp. 3d 112, 126-27 (D. Mass. 2021).

[24] Mfg. Res. Int’l, Inc. v. Civiq Smartscapes, LLC, 397 F. Supp. 3d 560, 577 (D. Del. 2019); accord Engera, 547 F. Supp. 3d at 128; VLSI Tech. LLC v. Intel Corp., No. 1:19-CV-00977 (W.D. Tex. April 12, 2021).

[25] Id.; see also Clontech Labs., Inc. v. Invitrogen Corp., 406 F.3d 1347, 1356-57 (Fed. Cir. 2005).

[26] Mfg. Res. Int’l, 397 F. Supp. 3d at 577; Engera, 547 F. Supp. 3d at 128; VLSI Tech., No. 1:19-CV-00977 (W.D. Tex. April 12, 2021).

[27] Id.

[28] Mfg. Res. Int’l, 397 F. Supp. 3d at 576-77 [screenshots of the insufficient virtual patent marking web pages are available in Exhibit EEEE to the patentee’s brief]; Engera, 547 F. Supp. 3d at 128 (“that a smaller number of patents entails a less time-consuming research project does not alter the fact that the webpage does not provide the statutorily required association between a patented product and the applicable patents.”).

[29] Mfg. Res. Int’l, 397 F. Supp. 3d at 576-77.

[30] VLSI Tech., No. 1:19-CV-00977 (W.D. Tex. April 12, 2021).

[31] Id.; Mfg. Res. Int’l, 397 F. Supp. 3d at 576-77; Engera, 547 F. Supp. 3d at 128; cf. Clontech Labs., 406 F.3d at 1356-57 (discussing problems raised by false marking).

[32] Engera, 547 F. Supp. 3d at 126 and n. 15.

[33] Fed. R. Evid. 803(6)-(7) and 902(11)-(14)

[34] 35 U.S.C. § 154(d)

[35] Id.

[36] 35 U.S.C. § 154(d)(2).  Additionally, provisional rights damages are only available in infringement suits brought within six years of the issuance of the patent.  35 U.S.C. § 154(d)(3).

[37] 35 U.S.C. § 154(d)(1).

[38] Rosebud LMS Inc. v. Adobe Sys. Inc., 812 F.3d 1070, 1073-75 (Fed. Cir. 2016).

[39] 35 U.S.C. § 292; The Forest Group, Inc. v. Bon Tool Co., 590 F.3d 1295, 1304 (Fed. Cir. 2009) (“§ 292 requires courts to impose penalties for false marking on a per article basis”) abrogated in part on other grounds by statute as recognized by Sukumar v. Nautilus, Inc., 785 F.3d 1396, 1399-1402 (Fed. Cir. 2015) (AIA amendment to § 292 replaced qui tam standing with “competitive injury” standing requirement for private false marking claims).

[40] 35 U.S.C. § 292(c); see also Hall v. Bed Bath & Beyond, Inc., 705 F.3d 1357, 1373 (Fed. Cir. 2013) (marking “patent pending” on articles after the patent has issued is not false marking).

[41] Clontech Labs., 406 F.3d at 1352-53.

[42] Id.

[43] 35 U.S.C. §§ 292(a) and (b).

[44] 35 U.S.C. § 292(a).

[45] 35 U.S.C. § 292(b); see also Sukumar, 785 F.3d at 1402 (standing to sue for a “competitive injury” is present only if the alleged injury “results from competition, and a potential competitor is engaged in competition if it has attempted to enter the market, which includes intent to enter the market and action to enter the market. And, for the sake of completeness, an entity has standing under § 292(b) if it can demonstrate competitive injury that was caused by the alleged false marking.”)

[46] Clontech Labs., 406 F.3d at 1256-57.

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