Patent Marking

35 U.S.C. § 287(a) and the Burdens of Providing Notice for Pre-Suit Damages: Packet Intelligence LLC, v. Netscout Systems, Inc.

In Packet Intelligence LLC, v. Netscout Systems, Inc. the Federal Circuit reversed a jury determination for pre-suit damages, and vacated an enhancement of such damages, for Netscout’s infringement of U.S. Patent 6,665,725, U.S. Patent 6,839,751, and U.S. Patent 6,954,789, all owned by Packet Intelligence. The patents at issue were all directed to monitoring packets exchanged over a computer network. The ‘798 patent includes system claims, and the ‘725 and ‘751 patents include method claims. It was important in this case that infringement of the various system and method claims have different requirements to qualify for pre-suit damages. Pre-suit damages for the system claims are controlled by the marking requirements of 35 U.S.C. § 287(a), whereas pre-suit damages for the method claims are not. With respect to the method claims of the ‘725 and ‘751 patents, Packet Intelligence argued that evidence of direct infringement of the ‘725 and ‘751 patents was sufficient to merit an award of damages for pre-suit activities. Direct infringement would require the method of the patent claims to actually be practiced, i.e., the steps of method actually performed. However, NetScout’s primary activity was to sell and license software, and, as the Federal Circuit pointed out, method claims… Read More »35 U.S.C. § 287(a) and the Burdens of Providing Notice for Pre-Suit Damages: Packet Intelligence LLC, v. Netscout Systems, Inc.

Patent Marking Makes Patent Owner’s Allegation of Practicing Invention a Double-Edged Sword

After alleging that its product practiced the invention claimed in its patent, and having failed to properly mark that product, a patent owner found itself unable to pursue damages for alleged infringement before the date when the accused infringer received actual notice of the patent.  Bed Bath & Beyond, Inc. v. Sears Brands, LLC, No. 08-5839 (SDW)(MCA) (D. N.J. June 4, 2012). Under 35 U.S.C. § 287(a), where a patent owner has a product covered by its patent claims, patent marking may be used to provide constructive notice of those claims to potential infringers.  Further, where the marking requirements have not been met, a potential infringer may only be liable for damages from the date on which it received actual notice of patent claims (unless the claims are method claims). In this case, the patent owner, Sears, had marked its in-store registry system and its web site with the patent number, but the marking had fallen off the in-store system.  Sears’ in-house counsel directed that the marking be restored, but this was not done.  Although the court did not explain why, it noted that the “basis” of Sears’ infringement claim was “that it practices the [claimed] invention.”  (Presumably Sears was… Read More »Patent Marking Makes Patent Owner’s Allegation of Practicing Invention a Double-Edged Sword