Under the U.S. Patent Marking Statute, patent holders can provide constructive notice of their patent rights by marking their products with the word “patent” or “pat.” along with the patent number. This marking can appear directly on the product, or, if the product cannot physically carry the mark, on an insert or label that accompanies it. By providing constructive notice, patent holders are eligible to recover damages from the start of infringement. Without this notice, damages can only be calculated from the date of actual notice, such as through a cease-and-desist letter or the filing of a lawsuit.
Case Study: Soverain Software LLC v. Amazon.com Inc.
In Soverain Software LLC v. Amazon.com Inc., 79 USPQ2d 1208 (E.D. Tex. 2005), Soverain’s patents covered two main technologies:
- Methods for controlling and monitoring access to network servers using session identifiers.
- A network-based sales system with a shopping cart feature.
These patents included both apparatus and method claims, which raised questions about the applicability of the marking statute to both types of claims.
Amazon’s Argument for Limiting Damages to Filing Date
During litigation, Amazon argued that any potential damages should be calculated only from the date the lawsuit was filed, contending that Soverain failed to comply with the marking statute. Amazon claimed that Soverain’s patent markings, located within the software code and on accompanying documentation, did not constitute sufficient notice to the public. The Court denied Amazon’s motion on this issue, deeming it a factual question that could not be resolved through summary judgment.
Amazon’s Motion Regarding Licensee Compliance
Amazon also argued that Soverain’s licensees failed to comply with the marking statute and that this non-compliance should prevent Soverain from recovering damages prior to actual notice. Soverain countered, arguing that the marking statute was inapplicable because the patents related primarily to methods. Relying on Am. Med. Sys., Inc. v. Med. Eng’g Corp., 6 F.3d 1523, 1538 (Fed. Cir. 1993), Soverain asserted that only tangible items require marking. Since a website executing a patented method is not a “tangible” item, they contended, it should not require marking for damage recovery.
The Court’s Ruling on Tangibility and Marking Compliance
The Court disagreed with Soverain’s interpretation, clarifying that whether an item is tangible or intangible does not automatically exempt it from the marking statute. Instead, the Court defined “tangible” as any item capable of being marked, noting that websites can display patent numbers in compliance with the statute. Amazon provided examples of websites displaying patent numbers, demonstrating that websites can indeed provide sufficient marking. Consequently, the Court ruled in Amazon’s favor, holding that Soverain’s licensees did not meet the marking requirements.
Virtual Patent Marking and the America Invents Act
With the passage of the America Invents Act on September 16, 2011, virtual patent marking became permissible. Patent holders can now provide constructive notice by listing patent numbers on a dedicated webpage linked directly from the product, which is especially helpful for businesses with intangible assets or software products. For more information on virtual marking, visit the USPTO’s Virtual Patent Marking webpage.
If you have further questions about patent marking or other patent-related matters, feel free to contact me at (949) 433-0900 or [email protected]. Please share this article with colleagues or friends who may find it useful. As an Orange County Patent Attorney, I serve clients throughout Orange County, Irvine, Los Angeles, San Diego, and surrounding areas.