In Philippi-Hagenbuch v. Western Technology Service International, the Central District of Illinois made mixed findings as to whether patent infringement notice letters sent by Plaintiff’s counsel were sufficient under 35 U.S.C. § 287. The found that that the 2004 letter was sufficient to provide actual notice for damages for patent infringement of the 091 patent, but not the ‘507 patent. The court found that the 2010 letter was sufficient to provide actual notice for damages for patent infringement for the ‘507 patent. The patent infringement sample notice letters are reproduced below, along with the court’s analysis.
Letter 1:
May 20, 2004
Re: U.S. Patent …091 &
U.S. Patent Application Publication No. …585-A1
Dear Mr. …:
[This firm] represents [Plaintiff] in connection with its intellectual property rights. We have recently become aware that [Defendant] is offering for sale water tanks that may incorporate features similar to those found in [Plaintiff’s] water tanks.
With this letter we are putting you on notice that [Plaintiff] has intellectual property rights relating to its proprietary water tank design. U.S. Patent …091 (“the ‘091 patent”) relates to some of the features incorporated in [Plaintiff’s] water tanks. A copy of this ‘091 patent is enclosed for your review.
[Plaintiff] also has patent applications pending in both the U.S. and foreign countries covering additional features of its water tanks. One of these applications has been published as U.S. Patent Application Publication No. …585-A1. A copy of this published application is also enclosed.
[Plaintiff] intends to enforce its patent rights and any patent rights it obtains from pending U.S. and foreign patent applications. You may want to consider carefully [Plaintiff’s] patent rights in connection with your water tank products.
[Plaintiff] believes that in the past [Defendant] has encroached on [Plaintiff’s] proprietary designs including, a tailgate actuation system for trucks and roll-off containers (and, for at least two of [Defendant’s] customers, this has resulted in protracted legal issues.)
Please note that by providing you with actual notice of the published application, [Plaintiff] gets provisional rights to obtain damages if you make, use, sell, offer for sale, or import into the United States the invention claimed in the published application. In other words, after the date that a patent issues on that application, you could be liable for your actions that occurred before that date.
It is expected that [Defendant] will ensure that its water tank products are clear of any infringement from the *091 patent and all other patents that may issue from the pending patent applications.
Once you have had the opportunity to review the ‘091 patent and the published U.S. patent application, we ask that you provide a written response reporting on the results of your investigation. We ask that you provide your response no later than June 11, 2004.
Very truly yours,
…
The Court found that the 2004 letter was sufficient to provide actual notice as to the ‘091 patent. “[T]he actual notice requirement of § 287(a) is satisfied when the recipient is informed of the identity of the patent and the activity that is believed to be an infringement, accompanied by a proposal to abate the infringement, whether by license or otherwise.” “When applied to the May 2004 letter, the first two requirements are satisfied by the identification of the `091 patent, pending application, and the reference to [Defendant’s] water tanks.” “The satisfaction of the third requirement is a closer question, as there is no threatened suit or offer of a license.” “The statement of awareness that [Defendant] is selling tanks that ‘may incorporate’ protected features and assertion of intellectual property rights standing alone bears similarity to the letters found to be insufficient in Gart and Amsted. The letter then conveys a suspicion of infringement rather than a direct accusation of infringement, stopping short of the language found to be sufficient in Funai and Gart.” “When these facts are considered in the context of the case precedent, the Court must conclude that the letter falls closer to the line of cases finding that actual notice has been given and sufficiently conveys an objective understanding that [Defendant] may be infringing the `091 patent.” “Accordingly, the Court [found] that the May 2004 letter was sufficient to provide actual notice with respect to the `901 patent.”
The Court found that the 2004 letter was insufficient to provide notice as to the ‘507 patent. “With respect to the reference to the pending application that later became the `507 patent, …[t]he record simply does not support a conclusion that the claims in the patent application are substantially the same as the claims that ultimately issued in the `507 patent.” “The Court therefore conclude[d] that its findings with respect to actual notice for the `091 patent do not carry over to apply to the pending application that became the `507 patent, and the May 2004 letter was insufficient to constitute actual notice as to the `507 patent.”
Letter 2
December 1, 2010
Re: Certain [Plaintiff] Patents for Water Tanks
Dear Mr. …:
We represent [Plaintiff] in connection with intellectual property matters. As you may know, [Plaintiff] manufactures water tanks for off-highway trucks. The following patents owned by [Plaintiff] relate to features of the water tanks manufactured by [Plaintiff].
Country Patent/Application No. Filing/Issue Date US Patent No… 091 4/XX/03 US Patent No… 507 6/XX/10 US Pending Application No. … 061 6/XX/10 Australia Patent No… 671 8/XX/07 Australia Patent No… 781 12/XX/05 Australia Pending Application No. … 369 5/XX/02 Chile Pending Application No. … 003 4/XX/03 Chile Pending Application No. … 003 5/XX/02 In that case they need effective medication that may enable them to purchase branded discount brand viagra . Therefore, you can include coconut in your pdxcommercial.com order generic cialis daily diet to enhance sex hormones naturally. This drug works in 2 to 3 days, and could relieve your BPH symptoms especially online cialis urinary retention in 2 to 3 weeks of continuous use. A spe viagra cheap usat in the field of human sexual problems can help you select best of these remedies to choose from.
From observation of one of [Defendant’s] water trucks located at … in Wyoming, it appears your company’s water trucks have copied features of the [Plaintiff] water tanks, including access hatches on the front and rear walls of the tanks. These features are protected by one or more of the above identified patents and pending applications.
We direct your attention, for example, to US Patent No. …507. A copy is enclosed for your convenient reference. Claims 1 and 35 are reproduced below as illustrations of the features protected by this US patent.
1. A tank for transporting liquid comprising: ….
35. A method of performing maintenance on a tanker vehicle that …
Based on the information at hand, [Defendant] is infringing at least [Plaintiff’s] ‘507 patent. To remedy this situation, we require [Defendant] to agree to immediately stop any future manufacturing of infringing tanks and agree to pay [Plaintiff] damages of $5,000.00 (USD) per unit for all water tanks already made that infringe one or more of the patents. In this regard, we also require [Defendant] to provide an accounting of its water tanks sold in the last six (6) years and their features relating to external access hatches and personnel openings in the internal baffling.
We are agreeable to providing Westech with a reasonable amount of time to respond. However, we believe the situation is clear and resolution should be completed before the end of the calendar year.
We would welcome a request for a meeting if it helps to resolve this matter. However, [Plaintiff] is prepared to enforce his patent rights and will do so if [Defendant] appears to not consider this a serious matter requiring immediate attention.
Very truly yours,
…
The Court found that the 2010 letter was sufficient to provide actual notice as to the ‘507 patent. The Defendant “concede[d] that this letter constituted actual notice with respect to the `507 patent. The Court therefore conclude[d] that any damages established for infringement of the `507 patents may not be recovered for any period prior to December 1, 2010, the first time that [Defendant] received actual notice pursuant to § 287(a).”