Virtual Marking Tips
Setting aside the issue of where to mark for a moment, patentees may want to consider affixing a virtual mark to their practicing products. In 2011, the LeahySmith America Invents Act (AIA) introduced virtual marking as an alternative to physical marking. See USPTO, Report to Congress: Report on Virtual Marking (Sept. 2014). Under the marking statute, patent owners are entitled to damages for infringement occurring prior to filing a lawsuit as soon as they actually notify the infringers or provide constructive notice by marking their “patented article.”1 See (2019). Updated § 287 provides two ways patentees can mark their products, by either affixing the patented article with (1) a physical mark (i.e., “pat.” together with the patent number) or (2) a virtual mark (i.e., “pat.” together with an internet address that provides the patented numbers).2 Id.
Virtual marking offers several advantages over physical marking for patent owners and users. A virtual mark tends to take up less space and provides a cleaner aesthetic than a long list of patents. Updating the internet address and associated webpage listing the practicing patents is often easier than updating marks on product packaging or literature. If the mark appears in several locations—for example, if the patents cover a feature that appears in several different products, or the product is marked in multiple locations—a virtual mark centralizes the patent list to a single webpage. Virtual marking may capture and provide updates regarding pending or recently issued patents. Patent owners can notify past purchasers of a newly issued patent by updating the webpage without having to change the mark on the product itself. Virtual marking is uniquely suited for digital products, such as apps. Patent owners may provide an active link that immediately directs users to an updated list of patents with one click.
A Review of Software Marking in the Courts
Before discussing some of the various options for marking the user interface of a patented app, we start by reviewing some of the relevant case law on digital marking. Patented software applications have been around for quite some time, yet there is surprising scarcity of legal decisions that specifically consider marking locations for software. At least one district court decision confirms that certain software products are “patented articles” subject to the marking requirement. See, e.g., Lexos Media IP, LLC v. Jos. A. Bank Clothiers, Inc., No. 17‑1317‑LPS‑CJB, 2018 WL 2684104, at *3 (D. Del. June 5, 2018) (“[The products] are software products, and there is legal support for the proposition that software can be subject to the marking requirement.”). In addition, some district courts have found that patent owners must mark their website when the website is “intrinsic to the patented device or where the customer downloads patented software from the website.” However, none of these decisions analyze a scenario where the patented software has user interface. See Limelight Networks, Inc. v. XO Commc’ns, LLC, 241 F. Supp. 3d 599, 608 (E.D. Va. 2017); see also IMX, Inc. v. Lendingtree, LLC, No. Civ. 03‑1067‑SLR, 2005 WL 3465555, at *4 (D. Del. Dec. 14, 2005) (“The website is intrinsic to the patented system and constitutes a tangible item to mark by which notice of the asserted method claims can be given.” (internal quotations omitted)); Soverain Software LLC v. Amazon.com, Inc., 383 F. Supp. 2d 904, 909 (E.D. Tex. Aug. 8, 2005).3
Based on this line of cases, software patent owners may want to consider at least marking their websites associated with the patented software. However, the question remains whether just marking the website will suffice in instances where the patented software includes a markable user interface, such as many of the applications running on mobile phones. While there are no district court decisions that squarely address this issue, there is a line of decisions that may be instructive. This line of decisions, discussed in more detail below, weighs the issue of marking the packaging of a patented article against marking the patented article itself, and may be helpful for patent owners assessing the risk of virtually marking the user interface as compared to virtually marking the website for their patented products.
The most recent Federal Circuit decision on this issue tells us that “substantial compliance” can satisfy the marking statute. In Global Traffic Techs. LLC v. Morgan, the Federal Circuit held that marking the packaging of patented GPS hardware provided adequate public notice, even though it was physically possible to mark the patented components themselves. Global Traffic Techs. LLC v. Morgan, 620 Fed. App’x 895, 906 (Fed. Cir. 2015) (citing Maxwell v. J. Baker, Inc., 86 F.3d 1098, 1111 (Fed. Cir. 1996)). The court reasoned that depending on the “character of the article,” marking the packaging of a patented article instead of the article itself may be sufficient to serve the marking requirement’s underlying public notice function. Id.; . The court further reasoned that the packaged article represented the only occasion when “all of the components that made up the patented system were together and in full view of the public,” and therefore it was reasonable for a jury to conclude that marking the packaging served the marking statute’s public notice function. Id. at 906.
The key takeaways from Global Traffic are: (1) Determining whether “substantial compliance” is satisfies the marking statute involves a case‑by‑case analysis contingent on the unique character of the patented article; and (2) The test for “substantial compliance” ultimately asks whether the mark placement provides adequate notice of patented article to the public. Id. Based on the courts’ flexible interpretation of the marking statute, patent owners who wish to increase their likelihood of collecting pre‑suit damages may want to consider marking their user interface in addition to marking their websites.
Location Considerations for Marking Software
Marking software entails unique considerations. Unlike smaller, more physically restricted items, software applications present limitless space for marking. Thus, one danger with software applications is that the mark will be buried under so many digital layers that it will fail serve its purpose of providing sufficient notice to the public. And while there is plenty of space to place a mark, patent owners and their software developers strive to preserve a clean aesthetic. If marking is necessary, it should be unobtrusive as possible.
The ideal marking placement must therefore strike the right balance between providing notice while not interfering with user experience. In this section, we briefly consider several potential marking locations in light of this careful balance. This brief review of potential marking locations is by no means an exhaustive list of the possible locations to mark software products, and, as explained above, it is not certain whether any of all of these suggestions would amount to compliance with the marking statute in any specific case. Rather these suggestions simply illustrate some of the various considerations that arise when a patentee with their attorney about marking their digital products.
Even though legal guidance on marking software is limited, it is important for patent owners to come prepared against marking challenges before they decide to assert their patents in court. For a more efficient means of marking and to preserve a cleaner aesthetic, patentees may want to consider virtually marking their patented software products. As for marking location, due to the flexible application of the marking statute, unfortunately we cannot know for sure what marking locations on a website or user interface will satisfy § 287(a). It will likely depend on the particular character of the patented article at issue. Until courts provide us with more direction through character analyses of various patented articles, patentees may even consider pursuing a combination of marking locations to preserve pre‑suit damages.
1 § 287(a) provides:
, and persons making, offering for sale, or selling within the any patented article for or under them, or importing any patented article into the , may give notice to the public that the same is patented, either by fixing thereon the word “patent” or the abbreviation “pat.”, together with the number of the patent, or by fixing thereon the word “patent” or the abbreviation “pat.” together with an address of a posting on the Internet, accessible to the public without charge for accessing the address, that associates the patented article with the number of the patent, or when, from the character of the article, this can not be done, by fixing to it, or to the package wherein one or more of them is contained, a label containing a like notice. In the event of failure so to mark, no damages shall be recovered by thein 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. Filing of an action for infringement shall constitute such notice. 35 U.S.C. § 287(a) (2019).
2 It should also be noted that under § 287(a), the internet address associated with the virtual mark must meet two additional conditions. The address must (1) be freely accessible to the public; and (2) associate the patented article with the patent number. Id.
3 These decisions stem from Am. Med. Sys., Inc. v. Med. Eng’g Corp., which held, where a patent contains both apparatus and method claims, “to the extent that there is a tangible item to mark by which notice of the asserted method claims can be given, a party is obliged to do so if it intends to avail itself of the constructive notice provisions of 287(a).” Am. Med. Sys., Inc. v. Med. Eng’g Corp., 6 F.3d 1523, 1538 (Fed. Cir. 1993).
4 For a more detailed discussion on this topic, see Paul A Ragusa & Eric Faragi, Practical Strategies for Patent Marking of Software‑Related Inventions, Baker Botts (Aug. 11, 2011), http://www.bakerbotts.com/news/2011/08/ip-litigator-strategies-for-patent-marking-softw__.
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