Inline Connection v. AOL Time Warner D. Delaware, Dec. 5, 2006 Magistrate Judge Thynge WL 3495979 Asyst Techs., Inc. v. Empak, Inc. N.D. California, Nov. 14, 2006 Judge Fogel LEXIS 85681 Section 287(a) states that all patentees must mark their products, or packaging, with the word ââ?¬Å?patentââ?¬Â? or ââ?¬Å?pat.ââ?¬Â? along with the number patent they have obtained. In the event this does not happen:

[N]o damages shall be recovered by the patentee in 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.

The Defendant�s motion for summary judgment was granted in Inline Connection v. AOL. Although Inline argued it had no product to mark because it was providing a service (highspeed internet), Magistrate Judge Thynge asserted the Federal Circuit has consistently held:

[W]here there are both product and method claims being claimed infringed, the patentee must mark the product pursuant to �§ 287(a) in order to recover damages.

Judge Thynge determined the wall jack should have been marked and granted AOLââ?¬â?¢s motion for summary judgment on the issue of pre-suit damages. In the Northern District of California, Judge Fogel held against the Defendantââ?¬â?¢s motion on pre-suit damages. The Plaintiff showed substantial evidence for there to be a triable issue of material fact as to constructive notice. However, the Judge did side with the Defendants on the issue of actual notice. Plaintiff sent out a vague letter, Iââ?¬â?¢m sure weââ?¬â?¢re all familiar with, basically stating, as the court put it, ââ?¬Å?we understand that you are entering the SMIF pod field, we have patents in that field, donââ?¬â?¢t infringe our patents.ââ?¬Â?

This kind of generalized warning does not suffice for actual notice under �§ 287(a).

Isnâ��t this interesting? This kind of warning does not cut it for actual notice under �§ 287(a), yet it may open up the defendant to willful infringement charges. Does this result seem correct or am I missing something?

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