A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.
Arctic Cat, Inc., v. Bombardier Recreational Products, Inc., et al., No. 2019-1080 (Fed. Cir. (S.D. Fla.) Feb. 19, 2020). Opinion by Lourie, joined by Moore and Stoll.
Addressing the issue of “whether the cessation of sales of unmarked products excuses noncompliance with the notice requirement of [35 U.S.C.] § 287 such that a patentee may recover damages for the period after sales of unmarked products ceased but before the filing of a suit for infringement,” the Federal Circuit held “that it does not.”
Arctic Cat owns two patents directed to thrust steering systems for personal watercrafts (PWCs). Arctic Cat licensed the patents to Honda. The license agreement expressly stated that Honda had no marking obligations. Honda then began making and selling unmarked PWCs, but eventually stopped. Afterward, Arctic Cat sued Bombardier for infringement of the patents. Bombardier moved for summary judgment that Arctic Cat cannot receive any pre-complaint damages, arguing that Honda’s PWCs were unmarked patented articles and that Arctic Cat failed to provide actual or constructive notice under § 287. The district court granted the motion, and Arctic Cat appealed.
The Federal Circuit affirmed. The court agreed with Bombardier that, “to begin recovering damages after sales of unmarked products have begun, § 287 requires that a patentee either begin marking its products or provide actual notice to an alleged infringer; cessation of sales of unmarked products is not enough.” The Federal Circuit 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.” Thus, because Arctic Cat never complied with the notice requirement before filing suit, it cannot recover pre-complaint damages.
Arctic Cat argued that, regardless of its failure to mark, it should nevertheless recover pre-suit damages because the jury found that Bombardier willfully infringed the asserted claims, which should be sufficient to establish actual notice under § 287. The Federal Circuit rejected that argument as foreclosed by precedent. The court “reiterate[d] the conclusion 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.” “While willfulness turns on the knowledge of the infringer, § 287 is directed to the conduct of the patentee.” Only the patentee is capable of discharging those obligations, and Arctic Cat failed to do so.