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Lans v. Digital Equipment Corp.

252 F.3d 1320, 59 U.S.P.Q.2d 1057 (2001)

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Lans v. Digital Equipment Corp.

United States Court of Appeals for the Federal Circuit

252 F.3d 1320, 59 U.S.P.Q.2d 1057 (2001)

Facts

Hakan Lans owned U.S. Patent No. 4,303,986 (the 986 patent). Lans agreed to license the patent to a company, but for tax purposes, he preferred the license to be granted by his company, Uniboard. Lans assigned the 986 patent to Uniboard and then executed the license to IBM as a Uniboard representative. Some years later, Lans sent infringement letters to several companies, including Digital Equipment Corp. (collectively, the computer companies) (defendants). The letters accused the computer companies of infringing the 986 patent and identified Lans as the only patent owner. The letters did not mention Uniboard. In November 1999, Lans personally sued the computer companies in federal court for infringement of the 986 patent. The district court held that Lans lacked standing to sue the computer companies for infringement because Uniboard, not Lans, owned the patent. Shortly after the district court’s judgment that Lans lacked standing, Uniboard filed its own infringement suit against the computer companies. The computer companies filed a motion to dismiss for failure to state a claim, noting that the 986 patent had expired in January 1999. The computer companies argued that Uniboard was not entitled to damages because Uniboard’s licensees failed to mark their patents pursuant to 35 U.S.C. § 287 and because the computer companies were not properly notified by Uniboard of their infringement before the 986 patent expired. The district court dismissed Uniboard’s complaint. The district court held that Uniboard could not recover damages, because the 986 patent was expired and the infringement notices sent by Lans did not satisfy the notification requirement of § 287(a) because they were not sent from the patentee, Uniboard.

Rule of Law

Issue

Holding and Reasoning (Rader, J.)

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