No Marking, No Damages, No Case: A Hidden Defense to Patent Troll (NPE) Litigation

PDF

Our December 2025 article identified seven strategies to consider when your client is sued for alleged infringement by a patent troll – Patent Trolls: Seven Steps to Stop Them and How They Are Contributing to the 20% Uptick in Patent Litigation in 2025. This article examines in more detail, inter alia, a particular defense to patent damages that arises in circumstances in which products sold by third-party licensees of the asserted patent are not properly marked with the patent as required by 35 U.S.C. § 287.

Who should read this article?

Counsel for companies sued or vulnerable to suit for alleged infringement by patent trolls (NPEs)^[1]—and specifically companies in the following industries in which NPEs are active and there is a likelihood that third-party licensees of NPEs are not marking their products with the licensed patents:

• Logistics companies that monitor data or even tangible goods or persons (through, for example, GPS or related technologies).
• Financial service providers including banks.
• Software companies – managing and displaying data through more efficient means, especially where that data is being manipulated, encoded, and transmitted between devices within a network.

2. Introduction – Typical Circumstances for an NPE Patent suit

It is not uncommon for NPE entities to assert a patent that is nearing expiration or has already expired.

However, where an expired patent was not marked—and the first notice of alleged infringement is the filing of the complaint—35 U.S.C. § 287 may preclude any recovery of damages. In such circumstances, the plaintiff may be unable to plead a legally cognizable remedy. Because damages are generally the only available remedy for infringement of an expired patent, the absence of recoverable damages can be fatal to the claim. Accordingly, an NPE that fails to adequately plead compliance with § 287, or otherwise establish entitlement to damages may fail to state a claim upon which relief can be granted, warranting early dismissal under Federal Rule of Civil Procedure 12(b)(6).

3. On a Rule 12(b)(6) Motion, the Patentee Bears the Burden To Plead and Prove Compliance with § 287(a)’s Marking Requirement

A patentee seeking damages “bears the burden of pleading and proving [it] complied with § 287(a)’s marking requirement.” Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 876 F.3d 1350, 1366 (Fed. Cir. 2017); see also Dunlap v. Schofield, 152 U.S. 244, 248 (1894) (“[T]he duty of alleging, and the burden of proving, either [actual notice or constructive notice] is upon the [patentee].”). Failure to satisfy § 287’s marking requirements—including any failure by the patentee’s licensees—can bar recovery of damages for periods preceding actual notice.

If a patentee fails to mark its patented products, “no damages shall be recovered by the patentee, 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.” 35 U.S.C. § 287(a). Therefore, a plaintiff seeking damages must do more than merely cite § 287 in its complaint. The patentee must plausibly allege facts showing compliance with the statute’s marking requirements or, alternatively, facts establishing when and how the defendant received actual notice of the alleged infringement. Absent sufficient allegations demonstrating entitlement to damages—notice—under § 287, the complaint fails to adequately plead a necessary element of relief. This is also consistent with the purposes of 35 U.S.C. § 287—

(1) helping to avoid innocent infringement;

(2) encouraging patentees to give notice to the public that the article is patented; and

(3) aiding the public to identify whether an article is patented.

Rembrandt Wireless Techs., LP v. Samsung Elecs. Co., Ltd., 853 F.3d 1370, 1383 (Fed. Cir. 2017).

4. § 287(a)’s Marking Requirement also Applies to Licensees

Under § 287(a), the marking requirement applies not just to a patentee, but also its licensees and other authorized parties as well. See, Maxwell v. J. Baker, Inc., 86 F.3d 1098, 1111 (Fed. Cir. 1996) (“[L]icensees, such as Target, and other authorized parties, such as Target’s manufacturers, must also comply” with the marking requirement). Thus, a “licensee’s failure to mark does bear consequences for a patent owner seeking damages for infringement.” Id.

Some courts have further observed that voluntary dismissal of litigation is the “functional equivalent” of a license, thus triggering the patent marking statute. Trutek Corp. v. BlueWillow Biologics, Inc., No. 21-10312, 2024 WL 180851, at *5 (E.D. Mich. Jan. 17, 2024) (“In accordance with these principles, the Federal Circuit has construed the ‘for or under’ language of Section 287(a) to apply to both express and implied licensees.”) (citing Amsted Indus. V. Buckeye Steel Castings Co., 24 F.3d 178, 185 (Fed. Cir. 1994)).

5. Takeaways

Several points are worth noting:

• Patent assertion entities frequently file suit on patents that are nearing expiration or have already expired. When the asserted patent has expired, the plaintiff cannot recover damages for future infringement, leaving past damages as the only potential remedy.
• To recover past damages, the patentee bears the burden of pleading and proving compliance with the patent-marking requirements of 35 U.S.C. § 287(a). A complaint must, therefore, contain sufficient factual allegations demonstrating either compliance with the marking statute or entitlement to damages based on actual notice.
• Failure to adequately plead compliance with § 287(a) can be dispositive where the asserted patent has expired. Without compliance with the marking statute, the patentee may be barred from recovering pre-notice damages. Because an expired patent cannot support future damages, the absence of recoverable past damages may leave the plaintiff without any available monetary remedy. In those circumstances, dismissal under Rule 12(b)(6) is appropriate.
• The marking obligation extends beyond the patentee to the patentee’s licensees. Licensees and other authorized sellers or manufacturers practicing the patent must also comply with § 287(a). Consequently, a plaintiff seeking damages should plead facts showing not only its own compliance but also the compliance of its licensees and other authorized parties.
• A failure to adequately plead compliance by licensees can be just as consequential as a failure to plead the patentee’s own compliance. Because noncompliance by a licensee may foreclose recovery of pre-notice damages, a complaint that omits allegations regarding licensee compliance may fail to establish entitlement to damages—making a Rule 12(b)(6) motion a critical early mechanism for dismissal on the merits (with prejudice) or to encourage settlement.

^{[1] NPEs means non-practicing entities.}