By James Juo.

Damages for patent infringement may be limited to the period after the alleged infringer is notified of the infringement and continues to infringe thereafter, unless the patentee marks any “patented article” that it sells or licenses with the patent number. 35 U.S.C. § 287. Filing a patent infringement lawsuit will provide such notice on the accused infringer for purposes of calculating damages. Id. Absent actual notice of the alleged infringement, however, pre-suit damages may not be available if the requirements of the patent marking statute are met for constructive notice.

In Lubby Holdings LLC v. Chung, No. 2019-2286 (Fed. Cir. Sept. 1, 2021), the Federal Circuit held that specific allegations of patent infringement against a specific accused product are required to provide actual notice under Section 287 if the patentee's patented article is not marked with the patent number. The patent-in-suit covered personalized vaporizers or e-cigarette devices.

When Lubby disclosed its damages computations before trial, Chung objected and pointed to the lack of patent marking on Lubby's J-Pen product. After the defendant articulates that specific patented products were unmarked, the patentee then bears the burden to prove the identified unmarked products do not practice the patented invention, or that the patented products were marked. Lubby, however, presented no evidence at trial that the identified product did not practice the patent or that the patented products were marked. Thus, Lubby could recover damages  only “for the period that it provided actual notice,” which was the date its lawsuit against Chung was filed. Although there was evidence that Chung was aware of the patent's issuance, there was no evidence at trial that Lubby had communicated specific charges of infringement by a specific accused product to Chung prior to the lawsuit. Citing SRI Int'l, Inc. v. Advanced Tech. Labs., Inc., 127 F.3d 1462 (Fed. Cir. 1997), the Court noted that “the actual notice requirement of § 287(a) is satisfied when the recipient is informed of the identity of the patent and the activity that is believed to be an infringement, accompanied by a proposal to abate the infringement, whether by license or otherwise.” The focus is on the action of the patentee, not the knowledge or understanding of the infringer. Without actual pre-suit notice by Lubby, it could only recover damages for products sold after the filing of the lawsuit against Chung.

The dissent by Judge Newman, however, noted “Chung's admitted knowledge, for these parties had been collaborators in connection with this invention” and trial testimony that when the collaboration ended, Chung was told not to infringe and “Chung acknowledged this warning.” But this general warning was not enough for the majority of the Court's panel to find actual notice under Section 287.