For a patent owner with viable method claims and a vulnerable marking record, the immediate strategy is to pursue only method claims from the outset. Crown Packaging supplies the authority for doing so. The cost of that strategy falls on the system and apparatus claims the owner leaves out. Their legal existence does not assure their practical value when asserting them can put historical damages at risk.^[8][9]

I represented VDPP in its appeal against Volkswagen. My objection to the decision includes what it does to the claims an owner can afford to enforce. VDPP requires attention to licensee marking at the pleading stage; the method-claim cases offer a way around that issue for owners whose patents and infringement evidence support the choice.^[2][8]

The existing authority supports a case asserting only method claims

If a patent contains useful method claims, the owner should consider asserting those claims alone to preserve its past damages. Add an apparatus claim and the defendant may have a marking defense that the method-only case would avoid. Owners with no useful method claims have no comparable choice. They must confront the marking issue and the cost of proving what an independent licensee did years earlier. The companies that manufacture their own products face that problem too.

In Crown Packaging Technology, Inc. v. Rexam Beverage Can Co., 559 F.3d 1308, 1316–17 (Fed. Cir. 2009), the Federal Circuit held that § 287(a) did not apply because only method claims were asserted. The patent also contained apparatus claims, and the licensed machines had not been marked. Relying on Hanson v. Alpine Valley Ski Area, Inc., the court reversed the ruling against recovery. An owner with a viable method-only case has substantial authority for keeping the marking issue out of that case.^[8]

The distinction is illustrated by American Medical Systems, Inc. v. Medical Engineering Corp., 6 F.3d 1523, 1538–39 (Fed. Cir. 1993). Both apparatus and method claims were asserted there, and a tangible device capable of marking was involved. The court applied the marking requirement to the method-claim recovery too. Crown Packaging distinguished that circumstance. For counsel, the practical point is clear enough: asserting an apparatus claim alongside method claims can change the marking analysis. The choice belongs in the investigation before filing, when counsel decides what the case will actually assert.^[9]

AlmondNet shows how the choice appears in a complaint

A recent complaint makes the point expressly. AlmondNet sued Whaleco, the operator of Temu, in Delaware on October 16, 2026. It alleges infringement of method claims of U.S. Patent No. 8,959,146. Paragraph 14 states that § 287 does not apply because AlmondNet asserts only method claims, and it claims past damages on that basis. Michael P. Eddy called attention to the pleading in Patent Litigator. Read the complaint and the choice is plain. AlmondNet has told the defendant, at the start, which side of the marking line its case occupies.^[4]

I do not know why AlmondNet's lawyers chose that approach, whether VDPP entered their thinking, or whether AlmondNet has any marking problem at all. The complaint proves none of those things. It does show the course available to an owner with method claims it can assert. Others will have reason to follow the same course. A patent owner deciding whether to include an apparatus claim must now ask whether that claim is worth putting years of damages at risk.

The cost falls on system and apparatus claims

Suppose the patent gives the owner a system claim and a method claim that both fit the accused technology. Under the method claim, the owner has a path to historical damages without § 287(a). Include the system claim and the defendant may demand an accounting of authorized products and marking going back years. The patent has not changed. The accused conduct has not changed. What changed is the complaint. An issued claim that should strengthen the enforcement case may instead put the recovery period in dispute. Counsel has to price that consequence before adding the claim.

That is why I expect more complaints to look like AlmondNet's. An owner will assert the method claims it can prove and say expressly that it is asserting only those claims. The point will be to preserve compensation for past infringement without litigating a former defendant's marking practices. Apparatus claims will remain enforceable, and owners with sound marking or notice records may have good reason to assert them. But for an owner whose historical recovery depends on avoiding the marking dispute, the unused system claim may be the price of proceeding.^[4][8]

There are real costs to that choice. An owner cannot turn an apparatus claim into a method claim by changing the wording of its complaint. It needs an issued method claim that reaches the conduct at issue. Some patents have none. Others have method claims that are narrower or harder to prove than the apparatus claims. Those owners must choose between the marking fight and an infringement theory they would otherwise have preferred not to use. The doctrine makes that choice necessary for reasons having little to do with which claim best captures the accused technology.

This necessarily affects the relative value of the owner's claims. Where a system or apparatus claim creates a marking obstacle that a viable method claim avoids, the owner has an economic reason to leave the former unasserted. Buyers and licensees have reason to value those claims accordingly. The consequence is not confined to the amount recovered in one lawsuit. It affects what the owner can obtain for the invention through licensing, sale, and enforcement. A claim that is too costly to assert can provide substantially less protection in practice even though it remains valid.

Method claims have their own evidentiary requirements. Every step must be performed by or attributable to a single entity under the governing law. Akamai Technologies, Inc. v. Limelight Networks, Inc., 797 F.3d 1020, 1022–23 (Fed. Cir. 2015) (en banc). A claim involving a platform, its customers, and independent servers requires careful attention to who performs each step. Leaving apparatus claims out of the complaint will accomplish little if the remaining method claim cannot be proved. The marking rule can narrow the owner's choices. It cannot make that choice a good one.^[10]

Nor would I advise an owner to assume it can assert everything first and drop the apparatus claims if marking becomes a problem. Crown Packaging supports a method-only case. It does not decide every question about amendments, earlier assertions, and the consequences of historical noncompliance. Those questions turn on the record and the applicable authority. Counsel should make the claim-selection decision before filing and make the intended scope of the case clear. A damages theory worth preserving deserves more planning than a response to the defendant's first motion.

Owners whose patents lack useful method claims have no equivalent option. For them, the marking dispute remains part of the enforcement decision. Expiration makes the problem acute: there is no future infringement period available to replace a barred historical recovery. A viable method claim can determine whether an expired patent still supports an economically worthwhile case.^[5][8][11]

Claim selection must begin before filing

Owners have to protect themselves under the law as it stands. Review the agreements before filing. Determine what supports marking compliance, what supports inapplicability, and when qualifying actual notice occurred. Choose the claims with those facts in hand. Future settlements should address product identification, marking, records, and cooperation in terms the parties can actually perform. Preserve the requests and the responses. Virtual marking can help administer notice, but it still requires the right association between products and patents. None of those steps can manufacture notice for a period already lost.^[5][7]

The Supreme Court must correct the doctrine

A judicial correction is necessary. The Supreme Court should review the Federal Circuit's patent-marking doctrine and update the guidance supplied by Dunlap v. Schofield and Wine Railway. The question is how § 287(a) applies to modern licensing without forcing an owner to abandon useful system and apparatus claims to preserve compensation for infringement. The Court should address that question directly.^{[1][2][3][5][8][9]}

Dunlap assigned the pleading and proof burden in a case involving goods the patentee made and sold. Wine Railway refused to impose the notice penalty where neither the owner nor anyone acting with its consent had made or sold an article under the patent. Those decisions must be read together. Wine Railway does not give a nonproducing owner a blanket exemption when its licensees manufacture patented articles. It does insist on a connection between the penalty and an opportunity to perform the marking obligation. The Court should explain how that principle operates when an independent licensee controls both the product and the evidence of compliance.^[1][3]

That review should produce a workable standard for reasonable efforts and a clear account of what must be pleaded before discovery. A court should identify the authorized patented articles at issue, distinguish permission to practice from proof of actual practice, and assess the owner's efforts in light of its contractual rights and practical access to the licensee. The effect of discontinued unmarked products also deserves review. A limited relationship with a former defendant should not impose an indefinite damages disability without a careful explanation grounded in the statute.^[2][5][6][7]

The Court should also address the difference between a case asserting only method claims and one adding system or apparatus claims. The same patent and accused technology should not produce radically different historical-damages consequences merely because the owner invokes another issued claim, unless the statute requires that result. Any correction should preserve the method-claim rule while giving owners a predictable way to enforce their other claims. Congress can act if a further statutory remedy is needed, but the judiciary must examine the consequences of the doctrine it has developed.^[5][8][9]

Until the courts provide that correction, an owner with viable method claims and a vulnerable marking record should consider pursuing only those claims from the outset. That is the available practical solution. Its cost is the reduced usefulness of other claims issued to protect the same invention. Patent owners should not have to leave those rights unused because the rules governing recovery make their assertion economically self-defeating. The Supreme Court needs to take up the marking question again.

Ramey LLP is a Texas-based intellectual property law firm dedicated to representing small patent owners, startups, and independent inventors in disputes against larger corporations.

Sources

[1] Wine Railway Appliance Co. v. Enterprise Railway Equipment Co., 297 U.S. 387, 393–98 (1936). The case construed the predecessor marking statute. The reference to the absence of contemporary Supreme Court guidance concerns the modern licensing and pleading questions discussed here. https://www.govinfo.gov/content/pkg/USREPORTS-297/pdf/USREPORTS-297-387.pdf

[2] VDPP, LLC v. Volkswagen Group of America, Inc., No. 2024-2226, 2026 WL 2416565, at *1–3 (Fed. Cir. Aug. 19, 2026). The separate fee and appellate-jurisdiction discussions are not the basis of this article's marking thesis. https://caselaw.findlaw.com/court/us-federal-circuit/332291.html

[3] Dunlap v. Schofield, 152 U.S. 244, 247–48 (1894). The Court addressed the duty to allege and prove marking or actual notice where the patentee made or sold patented articles. https://supreme.justia.com/cases/federal/us/152/244/

[4] Complaint ¶¶ 9–14, AlmondNet, Inc. v. Whaleco Inc., No. 1:26-cv-01339, ECF No. 1 (D. Del. Oct. 16, 2026), at 3. https://storage.courtlistener.com/recap/gov.uscourts.ded.95068/gov.uscourts.ded.95068.1.0.pdf. See also Michael P. Eddy, AlmondNet Sues Temu Operator Whaleco in Delaware on a Profile-Based Ad Delivery Patent, Patent Litigator (Oct. 21, 2026), https://patentlitigator.com/analysis/almondnet-v-whaleco-temu-profile-based-ad-patent/. The complaint verifies the method-only assertion; neither source establishes counsel's motive or a marking failure.

[5] 35 U.S.C. § 287(a). Discussion is limited to subsection (a), including its patented-article trigger, conventional and virtual marking provisions, and actual notice. https://uscode.house.gov/us/usc/119-118/t35/s287/

[6] Arctic Cat Inc. v. Bombardier Recreational Products Inc., 876 F.3d 1350, 1366–69 (Fed. Cir. 2017). The decision distinguishes the defendant's initial production burden from the patentee's ultimate burden and discusses reasonable efforts concerning licensees.

[7] Arctic Cat Inc. v. Bombardier Recreational Products Inc., 950 F.3d 860, 863–67 (Fed. Cir. 2020). Cessation of unmarked sales and an infringer's knowledge did not supply the statutory notice required for the disputed recovery period.

[8] Crown Packaging Technology, Inc. v. Rexam Beverage Can Co., 559 F.3d 1308, 1316–17 (Fed. Cir. 2009), applying Hanson v. Alpine Valley Ski Area, Inc., 718 F.2d 1075, 1082–83 (Fed. Cir. 1983). Crown Packaging verifies the method-only holding and its distinction of American Medical Systems. https://law.justia.com/cases/federal/appellate-courts/cafc/08-1284/08-1284-2011-03-27.html

[9] American Medical Systems, Inc. v. Medical Engineering Corp., 6 F.3d 1523, 1538–39 (Fed. Cir. 1993). Both apparatus and method claims were asserted and a tangible article could be marked. https://law.justia.com/cases/federal/appellate-courts/F3/6/1523/576978/

[10] Akamai Technologies, Inc. v. Limelight Networks, Inc., 797 F.3d 1020, 1022–23 (Fed. Cir. 2015) (en banc). All method steps must be performed by or attributable to a single entity; the opinion explains attribution. https://law.justia.com/cases/federal/appellate-courts/cafc/09-1372/09-1372-2015-08-13.html

[11] 35 U.S.C. § 286. The six-year damages limitation is subject to other applicable law and does not guarantee recovery for the full period. https://www.law.cornell.edu/uscode/text/35/286

[12] Fed. R. Civ. P. 9(c), 12(d), 26(c)(1)(G). The rules address general pleading of conditions precedent, conversion when outside materials are considered, and protective orders for confidential commercial information.