Arctic Cat Inc. v. Bombardier Recreational Products Inc., et al.

The Patent Act’s “marking” statute, 35 U.S.C. §287(a), provides that when patent owners and licensees make, sell, or offer to sell patented goods, they “may give notice to the public that the same is patented” by marking the goods as patented. Section 287(a) further provides that “[i]n the event of failure so to mark,” the patent owner can collect damages only “on proof that the infringer was notified of the infringement,” and “only for infringement occurring after such notice.” (emphasis added). In this case and others, the Federal Circuit has held that “such notice”—i.e., “proof that the infringer was notified of the infringement”—can only come from the patent owner. App. 10. “It is irrelevant … whether the defendant knew of the patent or knew of his own infringement.” Id. (quoting Amsted Indus. Inc. v. Buckeye Steel Castings Co., 24 F.3d 178, 187 (Fed. Cir. 1994)). As a result, even the most culpable willful infringers—who knew full well that they were infringing, and were “notified of the infringement” by their own attorneys, employees, or third parties—are immune from paying any damages for as long as they have not been “notified of the infringement” by the patent owner. The question presented is: Whether the court of appeals erred in holding that “notified of the infringement” and “such notice” under §287(a) refer only to communications from the patent owner.