Under US Patent Marking Statute, patentees may give constructive notice to the public by indicating on the product the word “patent” or “pat.” together with the number of the patent. If the patent number cannot be marked on the product itself, then such marking may be provided on the insert or label associated with the product. By doing so, damages can be calculated from the start of infringement, instead of from actual notice (e.g., receipt of a cease and desist letter or service of a complaint).
In Soverain Software LLC v. Amazon.com Inc., 79 USPQ2d 1208 (E.D. Tex. 2005), the patents at issue were directed to (1) methods for controlling and monitoring access to network servers through the use of a session identifier, and (2) a network-based sales system including a shopping cart. The patents all contained an apparatus claim and a method claim. During litigation, Amazon submitted a motion to the court that damages should be calculated from the date the lawsuit was filed. Amazon contends that that Soverain failed to comply with the patent marking statute since the patent marking was inserted in the software code and the accompanying document. The Court denied Amazon’s motion since this is a question of fact and cannot be decided on summary judgment.
Amazon also moved the court to hold that Soverain’s licensees failed to comply with the marking statute. In response, 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., .
Updated November 11, 2011, America Invents Act enables virtual patent marking.
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