Amsted v. Buckeye Steel Castings was decided on April 18, 1994 on appeal from the Northern District of Illinois. The case involved many issues but this post will only focus on actual notice under § 287(a). Plaintiff Amsted brought suit against defendant Buckeye on February 25, 1991. In 1986, Amsted sent Buckeye and other companies a letter purporting to notifying them of Amsted’s patent. In 1989, Amsted sent Buckeye another letter notifying Buckeye of its alleged infringement. Both parties agreed that the 1989 letter was proper notice. The jury found willful infringement, awarded damages, finding that the 1986 letter constituted notice. The district court ruled on JMOL that Amsted’s damage recovery was limited under § 287(a) because the patented products were unmarked. Moreover, the court denied Buckeye’s motion for JMOL, holding that “the jury permissibly concluded that the 1986 letter notified Buckeye of its infringement.” Both parties appealed.
The Federal Circuit affirmed the determination that Amsted’s recovery of damages is limited under § 287(a), but held the 1986 letter was not actual notice under § 287(a), thus vacating the jury award and remanding.
Under Section 287(a), “[p]atentees, and persons making or selling any patented article for or under them, may give notice to the public” by marking the article (emphasis added). The section further provides that “[i]n the event of failure so to mark, no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice.”
The district court held that “section 287 limited Amsted’s recovery of damages because Amsted’s customers, to whom Amsted sold one element of the patented combination with the expectation that they would use that element to make and sell the patented invention, were implied licensees who were ‘making or selling the patented article for or under Amsted’ within the meaning of section 287.” The Federal Circuit agreed. “A licensee who makes or sells a patented article does so “for or under” the patentee, thereby limiting the patentee’s damage recovery when the patented article is not marked.” This marking requirement applies both to express and implied licensees
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Here there was “no dispute that Amsted impliedly authorized its customers to make, use, and sell the patented article.” The record showed that “Amsted manufactured and sold [elements] for use in the patented combination, and that Amsted provided its customers with installation drawings which instruct how to assemble the [elements], along with other components, according to the teachings of the patent.” Since there was “no dispute that the patented articles sold by Amsted’s customers were never marked,” Amsted was “precluded from recovering damages prior to the date that Buckeye, the accused infringer, was notified of the infringement.”
Notice under § 287(a) “must be an affirmative act on the part of the patentee which informs the defendant of his infringement.” The notice must be of “the infringement” by a specific accused product or device, “not merely notice of the patent’s existence or ownership.” “It is irrelevant… whether the defendant knew of the patent or knew of his own infringement.” The inquiry focuses “on the action of the patentee, not the knowledge or understanding of the infringer.”
The district court erred in holding that Amsted’s 1986 letter constituted notice. This letter was sent to a number companies, including Buckeye, advising them that Amsted had acquired a number of properties, including the asserted patent. The letter did not explicitly charge Buckeye with infringement of Amsted’s patent. This was not sufficient. “The 1986 letter was merely informational, of the kind that companies often send to others without intending to charge infringement. Just as such letters tend not to be threats sufficient to justify a declaratory judgment action, they also are not charges of infringement for notice purposes.” The Federal Circuit thus vacated the jury award based on the 1986 letter, and remanded for a recalculation of damages from the date of the 1989 letter.