Failure To Mark By Licensee Not Excused After It Stopped Making The Products

In Artic Cat Inc. v. Bombardier Recreational Products Inc., No. 2019-1080 (Fed. Cir. Feb. 19, 2020), the Federal Circuit addressed the issue of how far back Artic Cat could collect damages where its licensee failed to mark but then stopped selling covered products before suit was filed. The Court held that damages would only go back to the date of the complaint’s filing since licensed products had been sold but not marked by the licensee.  Thus, the patentee was not entitled to damages during the pre-suit time period between the cessation of the licensee’s sales and the filing of the complaint.  The Court noted that § 287 prohibited receiving any damages, as opposed to a reduction in damages, after a failure to mark and that the obligation to mark is excused only by proving actual or constructive notice.  The Court also reiterated that “willfulness, as an indication that an infringer knew of a patent and of its infringement, does not serve as actual notice as contemplated by § 287.”  This is because while willful infringement turns on the knowledge of the infringer, proper notice under § 287 “is directed to the conduct of the patentee.”

The Court’s opinion may be found at