Marking & Back Damages

by Dennis Crouch

Lubby Holdings v. Chung (Fed. Cir. 2021)

Lubby’s US9750284 covers a vape-pen (“personal vaporizer”). Lubby sued Henry Chung for patent infringement and won at trial with a jury verdict of almost $1 million. On appeal though the Federal Circuit has reversed-in-part — holding that the pre-suit damages were not available under 35 U.S.C. § 287.

In general, the patent laws bar a remedy for any infringement that occurred more than six years prior to the filing of the lawsuit.  “[N]o recovery shall be had for any infringement committed more than six years prior to the filing of the complaint or counterclaim for infringement in the action.” 35 U.S.C. § 286.  Back damages are further limited in by the patent marking statute of Section 287.  That provision calls for a patentee to to mark any “patented article” that it sells or licenses-for-sale with the patent number.  If the patentee sells/licenses-to-sell a product covered by the patent without so marking, then back damages can only be recovered for infringement after the infringer is “notified of the infringement and continues to infringe thereafter.” Id.; See also 35 U.S.C. § 287(a) (“Filing of an action for infringement shall constitute . . . notice.”).

Here, the patent covers an article (a personal vaporizor) and Lubby sells articles that appear to be covered by the patent (the J-Pen).  In this case, Lubby did not disclose its damages computations until the day before trial, and those computations included request for back damages.  The court’s approach is actually to assume marking unless the defense objects with at least some minimal evidence of the lack of marking.  Here, Chung objected on that same day and pointed to the J-Pen’s lack of marking of the patent number.  At that point, Lubby should have presented its evidence of marking. However, Lubby did not present any such evidence at trial.  As such, Lubby “can only recover damages for the period that it provided actual notice,” which is the date that it notified Chung of the infringement.

Chung did have notice that the patent existed, but that is also different than notice of infringement under the statute.  “[T]he actual notice requirement of § 287(a) is satisfied when the recipient is informed of the identity of the patent and the activity that is believed to be an infringement, accompanied by a proposal to abate the infringement, whether by license or otherwise.” SRI Int’l, Inc. v. Advanced Tech. Labs., Inc., 127 F.3d 1462 (Fed. Cir. 1997).

The appellate court ordered a new trial on remand to calculate the post-filing sales numbers that will serve as the appropriate damages award.

= = =

Chung also appealed on the merits of the infringement case.  However, Chung did not file a R.50(a) JMOL motion on the issue and therefore lost his primary right to appeal.  Chung did request a new trial under R.59, and the court does have power to hear an appeal of a denial of new trial. However, that standard is much higher — requiring an “absolute absence of evidence to support the jury’s verdict.”  Here, the court found some evidence supporting infringement and thus upheld the verdict.

9 thoughts on “Marking & Back Damages

  1. 3

    Textbook pyrrhic victory for Lubby.

    But hey, maybe that $500,000+ you wasted is tax deducible.

    (And to think you probably could have settled the matter for $25,000.)

  2. 2

    Recent events in the eternally disgusting state of Texas reminded me of the old “bounty collecting” statute for enforcing patent marking.

    That bit of fun didn’t last long. We’ll see how long this nonsense lasts but my goodness what a bunch of Repukkke creeps y’all have pulling your strings in Texas. Nobody could have predicted …

    1. 2.1


      Are you back to inserting your feeling-based political rants and confusing those with matters of patent law?

      Ah well, that 15 months or so hiatus was enjoyable while it lasted.

    2. 2.2

      I mean, this isn’t the place, but you brought it up:

      The Texas bill will fail (and so did the attempt to injunct it for that matter) due to really basic standing doctrine which, if I recall, isnt exactly a liberal concept.

      And it’s not like California doesn’t pass blatantly unconstitutional bills all the time, knowing full well they will get struck down, for the purposes of making a point. See the gender quotas bill, or any one of the many California laws the Supreme Court has reversed in recent years.

      Texas passed a Bill, it will get struck down. The only reason the Supreme Court didn’t is, if you read the majority opinion, no one had any idea who they were actually suing. You can’t sue a piece of paper.

      So why is it only bad when Texas does it?

      For the record, the second someone tries to enforce this, it will be enjoined. This is entirely performative.

    3. 2.3

      The news of your demise appears to have been greatly exaggerated, Malcolm. Too bad for all of us.

      I suppose if my parents named me Malcolm, I would go through life mean and miserable, like you. Thankfully, they did not give me a doofus first name like you were given.

      1. 2.3.1

        Pointing out the fact that Texas is ruled by a minority of dominionist misogynist creeps who fetishize guns and deny basic health care to its own citizens somehow seems to trigger a class of patent attorneys. Could it be that these same patent attorneys are from Texas and share these same “values”? Could these facts be related to Texas being a notorious host state for the worst patent attorney and judge behavior?



          deny basic health care to its own citizens somehow seems to trigger a class of patent attorneys

          You really are quite de lose s1onal.

          For ALL of the patent n0n sense of “Ends justifies the Means” that we have seen from the Supreme Court – THIS current Texas “health” issue is you getting what you have been clamoring for (and celebrating).

          Enjoy getting what you celebrate (when the majority in that Court happen to choose a different Ends).

    4. 2.4

      Prophet, your comment obviously has nothing to do with the Lubby case, even indirectly, as the underlying case was tried in California. There are plenty of other sites where you can engage in political flame wars, Prophet. Can we please have just one website where politics are kept out of the comments?

  3. 1

    Re: “In this case, Lubby [the patent owner] did not disclose its damages computations until the day before trial.” That seems strangely untypical.

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