Partner Barbara Fiacco was quoted in Law360 about the Federal Circuit's recent decision in VDPP LLC v. Volkswagen Group of America, Inc., which held that patent owners must ensure licensees comply with patent marking requirements in order to recover certain pre-suit infringement damages. The ruling clarifies that patent licenses entered through settlement agreements are subject to the same marking obligations as other license agreements and is expected to have significant implications for future patent litigation and licensing negotiations.

Discussing the decision's impact, Fiacco noted that the patent owner's marking obligation "has always been in the background, and this case is probably just going to make it top of mind for defendants in a patent case, as another opportunity to minimize damages."

She explained that the ruling creates new incentives for patent owners to proactively address marking compliance in settlement agreements, stating that "one thing that this case does show is that they need the ability to plead some detail around the reasonable efforts that they took to ensure compliance with the marking requirement."

Fiacco also highlighted the potential impact on defendants' litigation strategies, observing that in some cases "pre-suit damages could be quite significant, so defendants could get out from under a pretty big damages award." As a result, she noted, "This will be something that people think about in discovery a lot. There's not really a downside to a defendant pressing on" whether the marking requirement has been satisfied.

Read the full article in Law360.