The existence of a patent settlement license cannot mean there is a patent marking requirement without more. It is the intention of the parties to the settlement license as expressed through the terms of the settlement license that control. But Ortiz v. Vizio also underscores that an NPE must affirmatively explain how it has complied with § 287—or why § 287 does not apply.

It is blackletter law that a non‑practicing entity (NPE) that does not itself make or sell products has no stand‑alone obligation to mark anything. But the picture changes as soon as others are authorized to make or sell patented articles. Then § 287(a) applies, and the patentee must either:

1. ensure that covered products are properly marked, or 

2. rely on actual notice (patent + allegation of infringement) and accept damages start date no earlier than that notice.

Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 876 F.3d 1350, 1366 (Fed. Cir. 2017), makes clear that this obligation extends to licensees—express or implied—who make or sell patented articles “for or under” the patentee. What remains less straightforward is how § 287(a) operates when an NPE settles infringement suits through dismissals with prejudice, especially where the accused infringer denies liability. Are those settlements “licenses” that trigger marking obligations? And, as the Federal Circuit's nonprecedential decision in Ortiz & Associates Consulting, LLC v. Vizio, Inc. shows how an NPE should plead and document its compliance (or non‑applicability) of § 287(a)?

This article revises the original “intent of the parties” discussion with a focus on practical compliance strategies for NPEs in light of Ortiz and provides a checklist at the end.

I. The “For or Under” Requirement and Intent

Section 287(a) reaches any person “making or selling any patented article for or under” the patentee. That phrase has been construed to include more than just formal, written licensees.  In Amsted Indus. Inc. v. Buckeye Steel Castings Co., 24 F.3d 178, 185 (Fed. Cir. 1994), Amsted manufactured a component (a center plate) and sold it with instructions that taught customers how to assemble a complete patented product. Amsted argued that because it sold only an unpatented component, it could not mark without violating 35 U.S.C. § 292. The Federal Circuit rejected that argument. It held:

- Amsted's customers were making the patented article “for or under” Amsted's patent; 

- Amsted therefore had a marking obligation; and 

- Amsted's failure to ensure marking limited its recoverable damages.

The court emphasized that § 287 exists to encourage the patentee to give notice to the public of the patent, and that there is no reason why section 287 should only apply to express licensees and not to implied licensees.

Key lesson for NPEs: if you intend, through license or arrangement, that others will produce patented articles under your patents, you must treat those third parties as “for or under” licensees for § 287(a) purposes and address marking accordingly.

II. Settlement Agreements as Potential Licenses: Intent and Contract Construction

A settlement that resolves an infringement case can:

- grant an express license going forward, 

- grant only a release of past acts, or 

- be ambiguous.

Whether § 287(a) is triggered depends on what the agreement actually grants, construed under ordinary contract law—typically regional circuit law. Interpretation is not governed by special “patent settlement” rules.

Under Texas law, for example:

            - A settlement agreement “is a contract subject to the same rules of construction as other contracts.” Certain Underwriters at Lloyd's, London v. Oryx Energy Co., 203 F.3d 898, 901 (5th Cir. 2000). 

- The court's primary concern is the parties' intent as expressed in the instrument. 

- The court reads the “entire document” and presumes each clause has some effect. Heritage Resources v. NationsBank, 939 S.W.2d 118, 121 (Tex. 1996). 

The Supreme Court in United States v. Armour & Co., 402 U.S. 673, 681–82 (1971), likewise instructed that a settlement's scope must be discerned “within its four corners” and “construed as it is written, and not as it might have been written” had the plaintiff prevailed on its claims. 

The Federal Circuit has echoed that approach:  The meaning of a settlement is based on the “objective words” of the agreement, not the parties' subjective intentions. Novamedix, Ltd. v. NDM Acquisition Corp., 166 F.3d 1177, 1180–81 (Fed. Cir. 1999).

From this body of authority, the mere fact that an NPE settled an infringement case or dismissed it with prejudice does not, by itself, create a marking‑triggering license under § 287(a). The answer turns on the intent objectively expressed in the settlement's text.

III. Ortiz v. Vizio: What It Confirms About NPE Marking Obligations

In Ortiz v. Vizio, the patents had already expired when suit was filed, so any damages had to be pre‑suit. Vizio moved to dismiss arguing, among other things, that Ortiz:

- had prior actions against Roku and Panasonic that were dismissed with prejudice; 

- those dismissals functioned as licenses; and 

- Ortiz had not pleaded compliance with § 287(a) or explained why it had no marking obligation.

The district court agreed that the dismissals functioned as licenses and that Ortiz was responsible for ensuring marking and pleading compliance. The Federal Circuit, in affirming the dismissal and the subsequent fee award, made several important points about NPE compliance with § 287(a):

1. NPE status does not avoid § 287(a). 

Citing Arctic Cat and Maxwell, the court reiterated that licensees making or selling any patented article for or under the patentee must mark, and the patentee bears the burden of pleading and proving compliance. The fact that Ortiz did not itself manufacture products “does not relieve it of the duty to ensure that any products made by its licensees that practice its patents are marked, or to explain why [it] does not have such a duty.”

2. Marking (or its absence) is “peculiarly within” the patentee's knowledge. 

Building on Dunlap v. Schofield and Maxwell, the court confirmed that the patentee must bring forward facts showing marking or explaining the absence of any marking obligation.

3. Settlements can be argued not to be licenses—but that argument must be made. 

            The Federal Circuit expressly recognized that Ortiz could have argued that its dismissals with prejudice “merely resolved Ortiz's claims of past infringement” and did not grant Roku and Panasonic rights to practice the patents going forward, and therefore did not trigger any marking obligation. Ortiz did not do so in the district court or on appeal.

4. Dropping claims late does not escape § 287(a).    

The court rejected the notion that an NPE can sidestep marking mid‑litigation (for instance, by relying only on method claims). Rembrandt Wireless confirms that disavowing apparatus claims later does not retroactively relieve a prior marking duty when apparatus claims were in the case.

Taken together, Ortiz reinforces both (a) the need to look carefully at what prior settlements actually authorize, and (b) the need for NPEs to affirmatively describe their § 287(a) posture in the pleadings.

IV. Language Is Key: When Settlements Do and Don't Trigger Marking

Certain settlement terms tend to avoid creating a § 287(a) license:

- Express denial of infringement: 

            - “Defendant does not admit infringement or liability.” 

- Past‑only release: 

            - “Plaintiff releases claims based on accused acts up to [date]” with no grant of future practice rights. 

- Explicit no‑license clause: 

- “Nothing in this agreement grants any license or right to practice any patent.”

- “This agreement is a settlement license to end litigation.”

Read as a whole, such an agreement is more naturally understood as a peace agreement rather than a license to make and sell a patented article “for or under” the patent. In that situation, § 287(a) typically is not triggered by the settlement itself.

By contrast, terms when used alone that may create a marking‑triggering license include:

- Identification of covered products or product families coupled with authorization to continue making/use/selling them; 

- Language that the accused infringer is “licensed,” “authorized,” or “permitted” to practice specified patents; 

- Royalty or lump‑sum payments tied to ongoing sales of identified products.

Even if the defendant does not formally admit infringement, such language may establish an express or implied license under Amsted and Arctic Cat, thereby invoking § 287(a).

V. How an NPE Can Comply with § 287(a) in Light of Ortiz

Ortiz does not change the legal standards, but it illustrates what an NPE must do in practice to comply with § 287(a) when it has settlements or alleged licenses in the background.  Here are concrete approaches.

1. At the Contracting Stage: Draft Settlements with Marking in Mind

If you do not want a settlement to create a marking obligation, use “no license” and “no admission” clauses: 

- State that the agreement is a compromise of disputed claims, does not reflect any admission of infringement, and does not grant ongoing rights under the patents. 

- Limit the agreement to past conduct: 

- Frame the consideration as resolving past damages without authorizing future practice.

- Avoid product‑specific ongoing authorizations: 

- Do not purport to bless the defendant's continued manufacture/sale of identified accused products under the patents.

If you do grant an ongoing license that you know will trigger § 287(a), address marking expressly: 

  - Require the licensee to mark covered products “patent” or “pat.” and include the relevant patent numbers or a URL for virtual marking. 

            - Identify which SKU/product lines are subject to marking. 

- Reserve enforcement authority: 

            - Require periodic confirmation of marking practices or allow audits. 

- State that the licensee must reasonably comply with § 287(a) and that failure to do so is a breach.

This is what Maxwell and Arctic Cat contemplate: the NPE must make reasonable efforts to ensure that licensees comply with § 287(a).

2. At the Pleading Stage: Explain Why § 287(a) Is or Is Not Implicated

Ortiz makes clear that an NPE cannot simply remain silent about marking once the issue is raised.  In a complaint seeking pre‑suit damages for patented articles, an NPE should consider:

- Pleading that neither it nor any licensee made or sold a patented article before the notice date; or 

- Pleading that it and its licensees have complied with § 287(a) (and, if appropriate, briefly indicating that licensees mark covered products); or 

- Pleading why § 287(a) does not apply—for example: 

- the asserted claims are method‑only (and the case has been framed that way from the start); or 

- any settlements/dismissals with prejudice did not grant ongoing rights to practice the patents and thus did not create licensees “for or under” the patent (as the Federal Circuit suggested Ortiz could have argued).

If a defendant points to prior dismissals with prejudice or settlements and labels them “licenses,” the patentee should respond on the record by:

- Describing the scope of those agreements (e.g., “resolved past acts only; no future license granted”); and 

- Alleging that, as properly construed, they did not create § 287(a) licensees required to mark.

That kind of pleading is precisely what the Ortiz panel indicated was missing.

VI. Be Aware of § 287(a)—But Intent Remains Central

            The original principle still holds: n A patent settlement does not, by itself, impose a marking obligation. Intent—objectively expressed in the settlement's language—drives whether the agreement functions as a license to make or sell a patented article “for or under” the patent.  However, Ortiz v. Vizio underscores a complementary practical point:  Even if you contend that settlements or dismissals with prejudice did not create such licenses, you must articulate that position and your § 287(a) compliance (or non‑applicability) in any later litigation where pre‑suit damages are at stake.

For NPEs, the compliance roadmap is therefore:

1. Draft settlements with marking and licensing consequences in mind. 

2. Keep a clear internal record of licensees, accused products, and marking practices. 

3. When suing, plead your § 287(a) position—either compliance or a coherent explanation for why § 287(a) is not triggered. 

4. If you have created licensees who practice apparatus claims, take and document reasonable steps to ensure they mark.

Handled this way, NPEs can both preserve their ability to recover pre‑suit damages and rely on settlement structures that avoid unintended marking obligations.

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