GPSolo Magazine - September 2006

Intellectual Property Law
Why Website Operators Must Comply with the Patent Marking Statute

As services offered through websites have become more common and profitable, companies have increasingly sought patent protection for website features. This has resulted in more website operators becoming targets of patent infringement suits regarding website activities. With the ever-increasing number of e-commerce, website, and Internet-related patents, a question is raised whether patent owners are complying with the “patent marking” provision of the patent statute.

Marking 101. The patent marking provision, codified at 35 U.S.C., Section 287, requires that whenever a patentee or its licensee makes, sells, offers to sell, or imports a “patented article,” one of two types of notice must be given to trigger damages: either “constructive notice” to the world by marking the patented article or “actual notice” of an infringement allegation to the alleged infringer. Thus, failure to provide constructive notice by marking precludes any damages for infringement that occurred before actual notice was given. To determine whether Section 287 applies, two questions need to be answered in the affirmative: (1) Does the patentee or any of its licensees practice any claims of the patent in the United States? (2) Does the patent include any product, apparatus, or system claims (i.e., claims that are not directed to a method)? If the answer to either of these questions is no, then Section 287 does not apply and marking is not required.

By its own terms, Section 287 can be triggered when a patentee makes, sells, offers to sell, or imports a patented article within the United States. A patentee that does not practice its patent therefore may be exempted from the requirements and need not provide notice. However, if a patent owner chooses to exercise its patent rights by licensing its technology instead, the patent owner is also subject to compliance with the marking provision. Specifically, Section 287 also applies to persons who make, sell, offer to sell, or import “for or under” the patentee. The courts have interpreted this “for or under” language to mean that marking is also required by those who are authorized by the patentee to practice the patent, whether this authority is granted through an express license, an implied license, a covenant not to sue, or some other instrument.

When a patent contains method claims only, Section 287 does not apply; marking and actual notice are not required. “The reason that the marking statute does not apply to method claims is that, ordinarily, where the patent claims are directed to only a method or process there is nothing to mark.” In contrast to a method-only patent, a patent containing method claims as well as claims to an apparatus, product, or system triggers Section 287, and marking will be required if there is something tangible that can be marked: “Where the 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 Section 287(a).”

Application of Section 287 to website operators. In the 2005 case Soverain Software, LLC v. Amazon.com, Inc., 383 F. Supp. 2d 904 (E.D. Tex. 2005), a district court in Texas held that in certain situations, a web page on a website must be marked with a patent number in order to comply with the patent statute. Although Soverain Software is apparently the first decision expressly dealing with the marking of a website, the decision was based on a line of federal appellate decisions that are equally applicable to the website scenario. Furthermore, the Soverain Software decision has just been followed by a similar decision in Delaware. These decisions should serve as a wake-up call to patentees who practice their patents on their websites (or who license others to do so) and as a reminder to those website operators who are targets of patent infringement lawsuits to consider whether failure to mark may provide a defense.

However, even before that decision, some patent owners who have patents covering features of their websites had already started marking. For example, A9.com, a subsidiary of Amazon.com that operates the www.a9.com search engine website and owns a number of patents relating to its search technology, has placed the following notice on the “Conditions of Use” page of its website: “PATENTS: One or more patents apply to this site and to the features and services accessible via the site, including without limitation: US Patent Nos. 6,006,225; 6,144,958; 6,185,558; 6,401,084; and all corresponding foreign counterparts.”

In contrast to those websites that appear to comply with Section 287, a number of well-known websites operated by patentees or licensees appear to be running afoul of this rule, which may prove damaging to the patent owner’s ability to collect presuit damages from infringers. For example, Google has been issued patents for many of the features of its search engine technology provided through its website. Many of these patents include both apparatus and method claims, so marking should be required. However, a recent review of Google’s website shows no apparent marking of the patent number on any of the website’s pages.

Practice tips for owners of patents or patent applications involving websites. If the owner of the patent itself practices the patent by operating a website, the easiest option is to mark a page of the website. The marking should include the patent number as well as an indication that the patent protects, or otherwise is related to, features of the website. Many possibilities exist for where the marking can occur on the website (e.g., at the bottom of every web page, on the homepage, or on a web page where other legal notices are placed). When a number of patents may be involved, one should consider stating that “one or more” of a list of the patents may apply to the features or services on the website.

Those who choose to license their web-focused patents to website operators must take reasonable steps to ensure that the licensees mark the licensed websites. If the license includes the right to practice future patents that might issue, the marking provision in the license agreement should also require that the licensee update its marking to include new patents whenever notified by the licensor. Of course, the licensor should provide such notice to all licensees whenever a new patent issues and should follow up to make sure that the licensee complies. To ensure that there is documentary evidence of compliance with Section 287 in case litigation later ensues, a licensor should establish a system for documenting its efforts to monitor compliance, such as logging dates and results of checking licensees’ websites.

 

J. Christopher Carraway is a partner in the Portland, Oregon, office of Klarquist Sparkman, LLP. He was one of the lawyers representing Amazon.com in the case of Soverain Software, LLC v. Amazon.com, Inc., discussed in this article. He can be reached at christopher.carraway@klarquist.com. The article reflects the thoughts of the author and should not be attributed to Klarquist Sparkman, LLP, or any of its past, current, or future clients.

For More Information about the Section of Intellectual Property Law

- This article is an abridged and edited version of one that originally appeared on page 15 of IPL Newsletter, Winter 2006 (24:2).

- For more information or to obtain a copy of the periodical in which the full article appears, please call the ABA Service Center at 800/285-2221.

- Website: www.abanet.org/intelprop.

- Periodicals: IPL Chair’s Bulletin, a monthly update of Section activities and timely intellectual property issues; IPL Newsletter, a quarterly newsletter with current developments and Section news; Annual Report, a comprehensive summary of committee activities.

- Books and other recent publications: Fundamentals of Intellectual Property Valuation: A Primer for Identifying and Determining Value; The Intellectual Property Handbook: A Practical Guide for Franchise, Business and IP Counsel; Patent Litigation Strategies Handbook, 2d ed. Pamphlet series intended for clients, including Marketing Your Invention, Submitting an Idea, What Is a Patent?, What Is a Trademark?, and What Is a Copyright? Extensive course materials in connection with CLE programs are also available.

 

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