Under 35 U.S.C. 287(a), patentees must give constructive notice to the public by indicating on the product or associated documentation the word “patent” or “pat.” together with the number of the patent. If marking on the product is not possible, then such marking may be provided on the associated packaging or label. Otherwise, damages for infringement will be calculated from actual notice.
The patents at issue were directed to (1) methods for controlling and monitoring access to network servers through the use of a seession identifier, and (2) a network-based sales system including a shopping cart. The patents all contained an apparatus claim and a method claim.
On Amazon’s motion for partial summary judgment that it did not have notice of alleged infringement until suit was filed, the Court granted the motion in part and denied the motion in part. On the issue of whether Soverain Software LLC (patentee) personally complied with the marking statute, the Court held that Soverain presented evidence that raises a fact issue. In particular, Soverain brought forth evidence that they included the patent number in their software code and accompanying document. Hence, the Court denied Amazon’s motion that Soverain failed to comply with the marking statute.
As to whether Soverain’s licensees complied with the marking statute, Soverain contended that they could not comply with the marking statute because the patents were directed to a method. Under Am. Med. Sys., Inc. v. Med. Eng’g Corp., 6F.3d 1523, 1538 (Fed. Cir. 1993), the Court held that a tangible item that can be marked is required to be marked to comply with the marking statute. Soverain contended that the websites employing the patented method is not a tangible item, and thus, need not comply with the marking statute for Soverain to be awarded damges prior to actual notice. The Court disagreed and held that an item’s status of tangible or intangible is not divorced from its ability to be marked, but rather the Court defined “tangible items” as those items that can be marked and “intangible items” as those that cannot be marked.
Amazon brought forth examples of various websites that have included patent numbers to show that websites can be marked. Hence, the Court granted Amazon’s motion that Soverain’s licensees failed to comply with the marking statute. Soverain Software LLC v. Amazon.com Inc., 79 USPQ2d 1208 (E.D. Tex. 2005).
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