In their latest Law360 column examining noteworthy IP decisions at the Federal Circuit, Knobbe Martens partners Sean Murray and Jeremiah Helm discuss VDPP LLC v. Volkswagen Group of America Inc.
The case focused on patent marking, a practice that can determine whether a patentee can recover presuit damages during patent infringement litigation. The Federal Circuit examined what happens if a patentee has licensed their patented technology, and how the licensee’s products are treated when determining whether the patentee complied with the marking requirement. The court ultimately affirmed the dismissal of VDPP’s infringement because it had not shown it made reasonable efforts to ensure its licensees marked the licensed products.
“The VDPP decision leaves several questions unanswered,” Murray and Helm write, including uncertainties around the extent of a patentee’s responsibility to enforce licensees’ contractual obligations to mark their products. The decision also has implications for the false marking statute, which subjects patentees to potentially substantial damages and penalties for marking a product that is not covered by the patent. The authors maintain: “If the patentee is not entirely certain a licensee’s product is covered, it must weigh the risk of falsely marking an unpatented product against the risk of failing to mark a patented product and forfeiting past damages in future lawsuits.” However, Murray and Helm conclude, “A patentee that performs a reasonable, good faith infringement analysis and documents it, will greatly reduce its risk of running afoul of either [the patent marking or false marking statute].”
Read the full Law360 article, “The Patent Circuit: Marking Duties For Licensed Tech,” here.
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