VDPP v. Volkswagen: Your Licensees Have to Mark

Read from the decision; quotations on this page verified against its text.
CourtFederal Circuit
Decided19 August 2026
CitationNo. 2024-2226 (Fed. Cir. Aug. 19, 2026), precedential
In one lineIf you licensed your patent and your licensees did not mark, your damages may start on the day you sued.
Holding

A patentee seeking pre-suit damages must plead compliance with the marking statute, including compliance by its licensees. Licences granted through settlement agreements are not special, and silence in the complaint is fatal.

Marking is the cheapest way to lose money in patent law. Nothing about it is technical, and it can erase years of damages.

The statute is blunt. "In the event of failure so to mark, no 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". And the backstop is not much of one: "Filing of an action for infringement shall constitute such notice." Your damages can start on the day your complaint lands.

The word people miss is persons. The obligation reaches patentees and "persons making, offering for sale, or selling within the United States any patented article for or under them". That is your licensees.

What Happened

The chain from licence to lost damages, from the opinion's marking discussion. As of 29 September 2026.
StepWhat the court found
The licences"VDPP entered into eleven settlement agree[ments]" licensing the patent to various parties
The pleading"the proposed amended complaint does not allege facts showing compliance with 35 U.S.C. § 287 by any of VDPP's licensees"
The burdenSeeking pre-suit damages, "VDPP had a bur[den] to plead compliance with the notice provision of 35 U.S.C. § 287(a), including compliance by VDPP's licen[sees]"
The argument that failed"there is nothing special about its licenses that excuses VDPP from alleging it made" "reasonable efforts to ensure" compliance

The obligation is affirmative. It is not enough that nobody disproved compliance; the patentee has to allege the efforts it made. Silence is what lost this.

Why Settlements Are the Trap

A licence granted to end a dispute quietly enlists a new party in your damages case. The settling defendant may never have conceded that its products practise the patent. That does not matter: once it is licensed, its conduct bears on what you can recover from someone else.

This bites hardest on a patentee with no products of its own, which may reasonably assume a marking statute about marking articles has nothing to say to it. The court's answer, quoting Arctic Cat, is that "[a] patentee's licensees must also comply with § 287."

The practical consequence is that marking becomes a licence term. The obligation stays with the patentee, so the licence is the only place to address it.

What This Does Not Decide

  • It does not define what reasonable efforts are. That formulation comes from Arctic Cat, which this page does not cover.
  • This was a pleading failure. The court affirmed denial of leave to amend as futile; a patentee who pleads the point is in a different posture.
  • The case also addressed attorney fees under section 285 and sanctions on counsel. Those are outside what this page covers.
  • It does not say whether any particular patentee has complied, or what any licence should say.

Educational, not legal advice. Marking practice and licence terms are work for a registered practitioner.

Sources

More in this cluster

Caltech v. Broadcom The petition is a single, final opportunity to raise every patent and printed-publication argument, so the prior-art search has to be finished before you file. Read the Case Ingenico v. IOENGINE The same document can be estopped in one argument and freely usable in another. A launch email and an archived downloads page proved public use. Read the Case SRI v. Cisco Willfulness is not a heightened test requiring egregious conduct. Cisco lost because it had no reasonable defense, with no evidence of copying or concealment. Read the Case Columbia v. Gen Digital Every improvement Columbia identified was real, described in the patent, and absent from the claims. The $185 million judgment was vacated. Read the Case Hikma v. Amarin What matters is whether you encouraged the infringing use, not whether a reader could take your words that way. Encouragement can still be implicit. Read the Case EcoFactor v. Google A royalty number pulled from a license's preamble, rather than its terms, is not evidence. The lesson lands at signing time, not at trial. Read the Case Brumfield v. IBG Foreign revenue can be reached by U.S. patent damages if domestic infringement caused it. The framework applies; the causation still has to be proved. Read the Case Lynk Labs v. Samsung A published application is prior art from the day it was filed, under the pre-AIA statute. A search that filters by publication date can miss it. Read the Case Socket Solutions v. Import Global Proving your patent is valid and infringed does not by itself get you an injunction. Decided August 4, 2026, so check it is still current. Read the Case

Related

If You Are Sued, or You Sue Four decisions in two pairs, covering what you forfeit by challenging a patent and what separates willful infringement from enhanced damages. Read the Cluster Brumfield v. IBG Foreign revenue can be reached by U.S. patent damages if domestic infringement caused it. The framework applies; the causation still has to be proved. Read the Case EcoFactor v. Google A royalty number pulled from a license's preamble, rather than its terms, is not evidence. The lesson lands at signing time, not at trial. Read the Case SRI v. Cisco Willfulness is not a heightened test requiring egregious conduct. Cisco lost because it had no reasonable defense, with no evidence of copying or concealment. Read the Case