Patentee Denied Pre-suit Damages for Failing to Comply with Marking Requirement

In Packet Intelligence LLC v. NetScout Sys., Inc., No. 2019-2041 (Fed. Cir. July 14, 2020), the Federal Circuit affirmed the district court’s holdings on infringement, invalidity, and willfulness, but reversed the pre-suit damages award because Packet Intelligence’s licensees did not mark their patent‑practicing products as required under 35 U.S.C. § 287. The Court reversed the award of pre-suit damages because the apparatus claims were subject to the marking requirement under § 287. The Court found that NetScout satisfied its preliminary burden of identifying an unmarked product it believed practiced the patent, but Packet Intelligence failed to meet its burden to prove the unmarked product did not practice the patent. Packet Intelligence contended that pre-suit damages could alternatively be supported by infringement of method claims. The Court rejected the argument, holding that method claims are not “directly infringed by the mere sale of an apparatus capable of performing the claimed process,” and Packet Intelligence failed to prove the claimed method was used and infringed. Packet Intelligence, the Court held, “cannot circumvent [the marking requirement under] § 287” to include sales of the accused products in its damages claim “simply by arguing that NetScout’s infringement of related method claims drove sales.”