Patent Marking in the U.S.: VDPP v. Volkswagen and Licensing Settlements

„We do not manufacture any products ourselves“ is not a sufficient answer to the marking question. This is demonstrated by VDPP, LLC v. Volkswagen Group of America, Inc., No. 2024-2226, dated August 19, 2026. The Federal Circuit upheld the dismissal of the complaint without allowing for further amendments because the proposed version could not plausibly address the relevant marking issues. Products from licensees were also a decisive factor.

§ 287 does not apply only to the patent holder's own products

35 U.S.C. § 287(a) covers patented products that are manufactured, offered for sale, sold, or imported into the United States by the patent owner or with the patent owner’s authorization. In the absence of proper labeling, the provision generally limits the claim for damages to acts of infringement occurring after sufficient actual notice; the filing of a lawsuit is deemed to constitute such notice.

The first test, therefore, is not merely whether the patent holder manufactures the products himself. It must be determined whether other companies, with his authorization, are in fact placing patented products into the relevant market. Conversely, the existence of a license agreement alone does not answer the question of whether certain products embody the relevant patent claims.

A settlement that does not acknowledge infringement does not serve as a shield against infringement claims

VDPP argued that its eleven license agreements had resulted from settlements and that the licensees had not admitted to any infringement. The Federal Circuit was not convinced. The agreements granted standard rights of manufacture, use, and distribution; one of them expressly excluded a marking requirement. At the same time, VDPP maintained that the licensed products infringed the patent. Under these circumstances, it was not possible to present a plausible argument regarding reasonable efforts by the licensees to comply with the marking requirement.

This creates an additional consideration for settlement negotiations: A license that is economically attractive from the perspective of an individual proceeding may have implications for the enforcement of the same patent against other companies. Marking should therefore not be assessed only when the next lawsuit is filed.

Contractual provisions and their actual implementation go hand in hand

The Federal Circuit expressly left open the question of whether a licensee’s reasonable efforts to comply can be demonstrated in other cases even in the absence of a contractual marking clause. The decision therefore does not establish an unconditional requirement for a specific contractual formulation.

From a practical standpoint, however, it is advisable to explicitly address the labeling issue: Which products are affected? Who is responsible for maintaining the patent assignments? How are product changes handled? What information does the licensor receive regarding implementation?

In the case of virtual marking, Section 287(a) requires labeling with a freely accessible Internet address that links the patented product to the patent number. For the purpose of future evidence, therefore, it is important that more than just the current state of a website be available. Documented product assignments and historical versions are also useful.

Ending unmarked sales does not make up for the past

Arctic Cat Inc. v. Bombardier Recreational Products Inc., 950 F.3d 860 (Fed. Cir. 2020), already highlights two additional limitations: Ceasing unmarked sales does not simply resolve the existing notification issue. Nor does a finding of willful infringement automatically substitute for the required actual notice.

For the purpose of calculating damages, it is therefore recommended to use a patent-specific timeline: relevant licensee products, the start date of the marking, changes to the marking, and verifiable notifications to the respective defendant. In the case of patent claims that relate exclusively to the method, the applicability of the marking rules must be assessed separately.

Not every marking error results in reimbursement

In VDPP, the reimbursement of attorneys’ fees under § 285 was also affirmed. However, the decisive factor was the overall conduct of the litigation, which was deemed objectively unreasonable, not merely a shortfall in the marking.

The practical implication: Marking is not an isolated packaging issue. It belongs in license agreements, settlement releases, portfolio due diligence, and the preparation of any U.S. claim for damages.

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