Sep 2, 2021Legal
A General Warning Against Infringement Is Not Actual Notice of Infringement


Before Dyk, Newman, and Wallach.  Appeal from the Central District of California.

Summary:  Specific charges of infringement by a specific accused product are required to provide actual notice under 35 U.S.C. § 287 and thereby support an award of pre-suit damages.

Patent owner Lubby Holdings LLC and its licensee Vaporous Technologies, Inc. (collectively, “Lubby”), sued Henry Chung for infringement.  After a jury awarded damages, Chung moved for judgment as a matter of law arguing that Lubby was not entitled to damages for any infringement prior to the lawsuit because it failed to show marking of its own patented products or actual notice to Chung of his infringement, as 35 U.S.C. § 287 requires.  The district court denied the motion and Chung appealed.

The Federal Circuit held that Lubby had not carried its burden to show marking or actual notice under § 287.  Although the evidence at trial showed that Chung was aware of the patent’s issuance, and received a general warning not to infringe, Lubby provided no evidence that it communicated specific charges of infringement by a specific accused product prior to the lawsuit.  Thus, the Federal Circuit held that Lubby was not entitled to pre-suit damages, and remanded for a new trial to determine the number of infringing products sold after the lawsuit was filed.

Editor: Paul Stewart

Written by: Jeremy Anapol

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