03/18/2020

February 19, 2020 – Mere Cessation of Sales of Unmarked Patented Products Does Not Fulfill or Discharge 35 U.S.C. § 287’s Marking Requirements and Willfulness Does Not Constitute Actual Notice Under the Statute

Arctic Cat Inc. v. Bombardier Recreational Products Inc., 950 F.3d 860 (Fed. Cir. 2020), involved a scenario where Arctic Cat licensed the asserted patents to a third party and expressly stated in the license that marking pursuant to 35 U.S.C. § 287 was not required.  The licensee stopped making/selling unmarked patented products sometime before Arctic filed its infringement complaint against Bombardier.  No action was undertaken to remedy the prior noncompliance with § 287 or provide notice that the licensee’s products were actually patented.  Arctic Cat argued entitlement to pre-suit damages under § 287 based on its view that the statute only applies while a patentee or licensee is actively making, selling, or using the unmarked patented products.  Arctic Cat alternatively argued entitlement to damages under § 286 for the entire six-year period preceding the complaint’s filing date, including the period during which the licensee was selling unmarked patented products, because a finding of willful infringement is sufficient to demonstrate actual notice under § 287.  The Federal Circuit agreed with the district court that pre-suit damages were barred in this case because of Arctic Cat’s failure to comply with § 287.  The Court held that § 287 bars recovery of any damages in an infringement action brought after a failure to mark patented products unless the patentee takes corrective action and discharges its obligation under § 287 by providing constructive or actual notice to an alleged infringer.  The Court further held that the mere cessation of sales of unmarked patented products does not fulfill or discharge obligations required under § 287 and explained that the notice requirement of § 287 “cannot be switched on and off as the patentee or licensee starts and stops making or selling its product.” 950 F.3d at 865.  The Court also rejected Arctic Cat’s alternative theory for recovering pre-suit damages based on a finding of willful infringement.  The Court explained that actual notice under § 287 requires performance by the patentee, not knowledge of the accused infringer, and held that willful infringement does not serve as actual notice under § 287. Id. at 866-67.