Amsted Industries Inc. v. Buckeye Steel Castings Co.
24 F.3d 178 (Fed. Cir. 1994)

  • Amsted obtained a patent on a doo-dad related to the structure of rail cars.
    • Amsted sent out a notice to all their competitors describing their patent, and generally warning them not to infringe on it.
  • Buckeye made a similar doo-dad. When Amsted found out what Buckeye was doing, they sent a specific notification that they were infringing on Amsted's patent. When Buckeye refused to cease and desist, Amsted sued for infringement.
  • The Trial Court found for Amsted. Both sides appealed the damages.
    • The Trial Court limited damages because Amsted had not properly marked their product.
      • To mark a product means to put a statement on it saying that it is patented.
      • Under 35 U.S.C. 287, recovery of damages is limited to the period after which the infringer is notified of the infringement. That can be either when the product is marked, or they receive a cease-and-desist letter from the patent holder.
    • Amsted argued that they never sold the complete patented doo-dad, they only sold components to rail car manufacturers who assembled the complete doo-dad. Therefore they had no duty to mark under 287.
      • Amsted argued that if they had marked the individual components (which were not themselves patented), it would have violated 35 U.S.C. 292 which prohibits the marking of an unpatented article.
    • Buckeye argued that they were not notified until they received the second letter. However, the Court found that the first letter was enough to give notice.
  • The Appellate Court affirmed in part and reversed in part.
    • The Appellate Court found that Amsted should have marked the components with something like "for use under US patent number..." or "licensed under US patent number...." That would have satisfied 287 and 292.
      • They could have also written into the contract with the licensees that the licensees had to mark the assembled product.
    • The Court found that Amsted's first letter did not constitute notice within the meaning of 287 because it just talked about Amsted's patent and generally advised companies to not infringe. It wasn't until Amsted sent the second letter, which specifically charged Buckeye with infringement and specified which Buckeye product was infringing, did they meet the notification requirement of 287.
  • Note that one problem in sending a cease-and-desist letter is that the accused infringer can then go to whatever court they want to and ask for a declaratory judgment that they are not infringing. That gives the accused infringer the advantage of choosing the venue and the timing.