Good news! You've been granted a patent on a novel product—now what? Perhaps you've already heard that in order to maximize damages in the case of infringement, you should mark your product with the patent number. But what if your product is software or application rather than a physical product? The answer is not so straightforward. 

Patent Marking Generally
When a patent owner places a patent number on a product, notice is given to potential consumers (and society at large) that a patent protects the product. This practice is known as patent marking. Under 35 U.S.C. § 287(a), if a patent owner fails to mark a patented item, they will generally be prevented from recovering pre-suit money damages from an infringer.¹ Pre-suit damages cannot be collected unless notice of a patent is provided, either directly (i.e., in the form of a cease-and-desist letter or filing a complaint) or constructively, by marking a product with the patent number.

Do Software-Based Products Need to be Marked? 
It depends. The relevant statute states that patent owners should mark the article itself unless “from the character of the article, this cannot be done…” 35 U.S.C. § 287 (a). In interpreting the patent marking statute, Courts have held that method claims create no marking obligation because it is not possible to mark a step or action performed in accordance with a patented method. See Crown Packaging Technology, Inc. v. Rexam Beverage Can Co., 559 F.3d 1308, 1317 (Fed. Cir. 2009). (“The law is clear that the notice provisions of § 287 do not apply where the patent is directed to a process or method.”) While software-based products solely protected by method claims likely do not need to be marked, it is also possible to protect software-based inventions using apparatus or system claims. If software is covered by apparatus or system claims, the software should be marked, to the extent there is a tangible item to mark. See Am. Med. Sys., Inc. v. Med. Eng'g Corp., 6 F.3d 1523, 1538–39 (Fed. Cir. 1993).  

Common Software Claim Types
Typical claim types for software include (1) apparatus/system, (2) process/method, and (3) computer-readable medium (CRM) claims. A software invention related to touch-screen gestures, for example, may be protected by system, method, and/or a computer-readable medium (CRM) claims. A system claim may cover “a computer system for detecting touch-screen gestures, said system comprising: memory, touch screen, and a processor in communication with the memory and the touch screen, wherein the processor is configured to execute instructions in memory to cause display of an interface and detect gestures on the touch screen.” Alternatively, a method claim related to the same invention might be drafted to cover “a method for detecting touch-screen gestures, said method comprising: memory, touch screen, and a processor in communication with the memory and the touch screen, wherein the processor executes instructions in memory to cause display of an interface and detect gestures on the touch screen.” While marking would be required for the system claim, no marking would be required for the method claim directed to the same software product.  For patents containing both apparatus and method claims, a patentee can still avoid marking requirements by asserting only method claims in litigation. Core Optical Techs., LLC v. Juniper Networks Inc., 562 F. Supp. 3d 376, 379 (N.D. Cal. 2021); see also Crown Packaging Technology, Inc. v. Rexam Beverage Can Co., 559 F.3d 1308, 1317 (Fed. Cir. 2009). (“The law is clear that the notice provisions of § 287 do not apply where the patent is directed to a process or method.”) This makes sense because there is nothing to physically mark in a product embodied 100% as a method.

In addition to traditional apparatus and method claims, software inventions may be protected by CRM claims. The CRM claim type is a hybrid of the apparatus and the method claim types, having properties of both. CRM claims are authored in the form of a computer-readable medium (e.g., CD ROM) that stores instructions. For example, software related to gesture detection discussed previously may be covered by “a non-transitory computer-readable storage medium for detecting touch-screen gestures containing a set of instructions executable by at least one processor to cause the at least one processor to perform a method, said method comprising: memory, touch screen, and a processor in communication with the memory and the touch screen, wherein the processor executes instructions in memory to cause display of an interface and detect gestures on the touch screen.”

Some courts have treated CRM claims like apparatus claims, and as a result, marking may be required. In Finjan v. Secure Computing Corp., for example, the Federal Circuit held that the defendant’s security appliances infringed the plaintiff ’s CRM claim even though the defendant’s products were sold with its respective software disabled (separate activation key was sold to activate it). Finjan v. Secure Computing Corp., 626 F.3d 1197, 1203-1204 (Fed. Cir. 2010). The court reasoned that, “to infringe a claim that recites capability and not actual operation, an accused device need only be capable of operating in the described mode.” Id. at 1204. 

Although there is limited guidance on how to best mark a software product covered by CRM patent claims, a court will likely categorize the product, based on its underlying claim language. Id. If CRM claims are more akin to apparatus or system claims, marking will be required, and if CRM claims are more akin to method claims, marking will not be required. Because it may not be entirely clear how a court may interpret a CRM claim, treating it as an apparatus claim and complying with all marking obligations minimizes risk.

Although courts have provided limited guidance on where a patent owner can mark a software-based product (related to non-method claims), there is at least one way found to be appropriate. In Limelight Networks, Inc., the district court found a particular website relating to a patented product was not subject to the marking requirement. Limelight Networks, Inc. v. XO Commc’ns, LLC, 241 F. Supp. 3d 599, 608 (E.D. Va. 2017). In this case, the patented technology in question was Limelight’s content delivery network (CDN) which managed traffic to and from websites. In considering whether Limelight’s patented CDN needed to be marked, the Court found that “Limelight's website is in no way intrinsic to its [patented] CDN system.” Id. In distinguishing other software technologies where the patented features are embedded in the website itself, the Court stated that Limelight’s website “is not a portal to access the [patented] CDN system nor do Limelight's customers download [patented] software from the site.”

In Soverain Software LLC v. Amazon.com, Inc., the court held that although the patent owner marked its “software product by including all three patent numbers in the software code and accompanying documentation,” it was nonetheless improper because the licensees of the patented software product did not mark their websites, which were found to be tangible items embodying the patent claims. See Soverain Software LLC v. Amazon.com, Inc., 383 F. Supp. 2d 904, 909 (E.D. Tex. 2005) (“[T]he Court does not divorce an item's status as tangible or intangible from its ability to be marked, but rather defines “tangible item[s],” as used in American Medical Systems, as those items that can be marked and intangible items as those that cannot be marked.)

By clearly indicating that the product is patented on the website, the user of the patented product will be put on constructive notice regardless of if they read the respective screen or not. 

Virtual Marking
Since there is limited guidance regarding how to best mark software products, virtual marking may constitute an easier way to properly comply with the marking statue. Prior to the America Invents Act (AIA), patent owners were required to affix their patented products by physically marking it with “patent” (or “pat.”), and its patent number, on the product or its packaging. The amendment to § 287(a) took software-based patents into consideration by allowing patent owners to virtually mark their patented products. See USPTO, Report to Congress: Report on Virtual Marking (Sept. 2014). Patent owners can place a link on the product’s user interface which redirects to a webpage address containing all of patent owner’s patents and the respective products to which the patents apply. Virtual marking is ideal in situations where putting the patent number on the product itself may not be straightforward, as with software. For example, the product can be marked, “Pat.: https://www.ExampleVMWebsite.com/en/legal/patents.” Such a link provides a convenient, direct link to all of the owner’s patents.

Virtual marking provides additional benefits for both software-based and traditional products. If a patent owner employs virtual marking, they’ll have the ability to update the status of their patents as new patents issue or expire. This way, the patent owner can save on the cost of physically modifying the patent markings on each individual product. It is also convenient for a patent owner to be able to provide a singular patent label that covers multiple products. 

Virtual Marking: Case Law
If a patent owner decides that virtual marking is the best option for them, it is imperative that they follow the proper guidelines. A patent owner should make it easy for a user to locate the link to the virtual markings page. In VLSI Tech. LLC v. Intel Corp., the court held that a URL to the company’s homepage, as opposed to a direct link to the virtual markings page, was inadequate. VLSI Tech. LLC v. Intel Corp., No. 1:19-CV-977-ADA, 2021 U.S. Dist. LEXIS 74833 at *15 (W.D. Tex. Apr. 12, 2021). They reasoned that it was improper for a user to have to navigate to the “patents” webpage like some sort of “research project.” Id. They went further by stating, “even if the user stumbled upon the patents page, they would find no statement that the [patents in suit] were practiced by the [products in suit] or any others. Rather, they would find a 15x4 cell datasheet listing numerous patents.” 

In the case of Egenera, Inc. v. Cisco Sys., Inc., the court held that “the substance of Egenera's constructive notice [was] . . . defective.” See Egenera, Inc. v. Cisco Sys., Inc., 547 F. Supp. 3d 112, 127–28 (D. Mass. 2021). The court reasoned that Egenera’s attempt at providing virtual notice was defective because “Egenera's webpage [for virtual marking] displays only a table of patent numbers and titles, and does not include the [respective] product information…” Id. at 128. The court expounded further by stating “nothing on Egenera's webpage informs a visitor which of its products practice the listed patents (or a subset thereof), and which do not.” Id.  

Conclusion
Although it may be possible to mark patented software products on the user interface, it may be worthwhile for a patent owner to take a moment and set up a webpage containing all owned patents and the respective products which they relate to, for convenience. By doing this, any confusion related to whether the software-based product needs to be marked, and where, will be alleviated. It’s important to note that any ambiguity on the webpage containing the virtual marks may render the markings improper. If there are any updates related to a patent (e.g., it expires), it should be timely noted on the virtual markings webpage. Failure to properly mark could open the door for potential infringers and force patent owners to forego past damages. Following by these guidelines will ensure that a patent owner will be able to successfully assert their patent rights and recover maximum damages. 

[1] This article only relates to US patent marking and foreign counsel should be consulted on requirements for marking in other countries/jurisdictions.  

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