Ortiz v. Vizio does not alter Wine Railway's holding that non‑producing patentees are not subject to a marking precondition to collect damages. 

As the USSC held, a penalty for failure implies opportunity to perform.

35 U.S.C. § 287(a) provides, in relevant part:

“Patentees, and persons making, offering for sale, or selling within the United States any patented article for or under them… may give notice to the public that the same is patented… by fixing thereon the word ‘patent'… In the event of failure so to mark, no damages shall be recovered… except on proof that the infringer was notified of the infringement…”

Three textual points are critical:

1. The duty and the penalty are triggered only if there is a patented “article” in commerce. 

The clause “in the event of failure so to mark” plainly presupposes (1) that there exists an “article” embodying the patent; and (2) that someone within the statutory class (“patentees, and persons making… or selling… for or under them”) is actually making, offering for sale, or selling that article. If no such article exists in authorized commerce, there can be no “failure so to mark.”

2. The limitation on damages is conditional, not universal.

Section 287 does not say: “No patentee may recover damages for pre‑suit infringement unless she has given notice.”  It says: if a patentee (or anyone under her) is putting patented articles into the marketplace but fails to use the marking mechanism Congress created to give public notice, then pre‑suit damages are restricted unless actual notice is given.

3. An NPE with no practicing products and no practicing licensees falls outside the statutory trigger.

            Where (1) the patentee does not itself make, offer for sale, or sell any patented article; and (2) no licensee or other person “for or under” the patentee does so there is literally nothing to “mark,” and thus nothing to which § 287(a) can attach. In that scenario, damages are simply governed by § 284, not limited by § 287.  This reading is not novel; it is anchored in Supreme Court precedent.

Wine Railway: Non‑Producing Patentees Are Not Subject to a Marking Precondition

In Wine Railway Appliance Co. v. Enterprise Ry. Equipment Co., 297 U.S. 387 (1936), the Supreme Court confronted the predecessor to § 287(a) (then R.S. § 4900, 35 U.S.C. § 49). The key facts and holdings are directly on point: if no products by patentee or licensee, no marking requirement.  The Court emphasized: Neither petitioner nor another with its consent has ever manufactured or vended an article under the infringed patent. No actual notice of infringement was given respondent prior to the counterclaim. Thus, the non‑producing patentee can recover damages for infringement that occurred before any actual notice.  It held that the infringer was liable “from the date of issuance of the patent, and not only from the date when notice of the patent was given by filing of the counterclaim,” even though the patentee had never marked and had not given pre‑suit notice.  The Court's reasoning is central:

1. Issuance and recordation provide notice of the patent's existence.

The Court reaffirmed that “issuance of a patent and recordation in the Patent Office constitute notice to the world of its existence.”

2. Marking statute is an exception limited to producers of patented articles. 

Tracing the history from the Acts of 1842, 1861, and 1870, the Court concluded the purpose of these statutes is to require marks on patented articles to inform the public.  The Court analyzed the history of the marking statute to determine who was charged with the duty to attach such marks.  The Court determined that under the 1861 act, “in all cases where an article is made or vended… it shall be the duty of such person” to mark; failure limited damages.  The Court reasoned that the 1870 change did not expand the duty to non‑producing patentees; it simply refined who is covered when there is an article made or sold for or under the patentee.  The Court expressly rejected the view that the statute requires a patentee who does not make or vend to give actual notice as a condition of damages:

By admission, the act of 1861 did not require a patentee who did not produce to give actual notice to an infringer before damages could be recovered; and there is nothing in the language or history of the act of 1870 sufficient to indicate an intent to alter his position in this regard.  Wine Railway Appliance Co., 297 U.S. at 394

3. Key doctrinal takeaway.

The Supreme Court held that a patentee who never makes or vends patented articles—and has no one doing so “under” it—is not subject to the damages limitation in the marking statute. The penalty for failure to mark applies only where there has been an opportunity to mark an actual article put into commerce by or under the patentee:  “Penalty for failure implies opportunity to perform.”  Wine Railway thus squarely supports the proposition that an entity that does not make or vend a patented article is not required to mark as a prerequisite to recovering damages.

Fitting Wine Railway Into the Modern § 287(a) / Arctic Cat Framework

Modern Federal Circuit cases like Maxwell and Arctic Cat clarify who bears the burden when § 287(a) is applicable. They do not repeal Wine Railway's threshold question: Is § 287(a) applicable at all on these facts?

1. Arctic Cat's burden rule presupposes applicability. 

          Arctic Cat holds that the patentee bears the burden to plead and prove compliance with § 287(a) “when the statute is applicable.” The first inquiry, therefore, is whether there were any patented articles made, offered, or sold by the patentee or by someone “for or under” the patentee.

If yes (for example, a practicing licensee selling patented products), then the patentee must show that it and its licensees complied (or that any failure is excused).

If no, then the patentee's “compliance” consists precisely in the fact that there was nothing to mark and therefore no marking obligation.

2. Maxwell and Arctic Cat are about real licensees selling patented articles.

In Maxwell and Arctic Cat, there were genuine licensees manufacturing and selling products that embodied the asserted patents; the issue was whether those products were properly marked and whether the patentee made reasonable efforts to ensure marking.  These cases stand for the narrower proposition that when there is authorized commercial exploitation of the patented article, the patentee cannot avoid § 287(a) by ignoring its licensees.  They do not hold that § 287(a) applies in the absence of any authorized production or sales.

3. Wine Railway fills the gap left by Arctic Cat. 

Wine Railway answers the scenario Arctic Cat never had to confront: a patentee (or assignee) which has never made or sold any patented article and has not empowered anyone else to do so.  Under Wine Railway:  That patentee's damages are not curtailed by § 287(a), because the statutory penalty “for failure so to mark” cannot apply where there is no article to mark and no producer “under” the patentee.

Addressing and Distinguishing the Ortiz v. Vizio Opinion

The nonprecedential Ortiz v. Vizio decision does not foreclose this argument; if anything, it highlights what needs to be pleaded and proved.

A. What Ortiz Actually Holds

In Ortiz, the patents had expired; only pre‑suit damages were sought.  Vizio moved to dismiss partly on the basis that Ortiz had not pleaded compliance with § 287(a).  The district court treated prior suits against Roku and Panasonic, dismissed with prejudice, as creating “licensees” whose product sales triggered § 287(a); and alternatively held that Ortiz's failure at the pleading stage to address marking (despite being specifically challenged on that point) was itself a defect justifying dismissal.

The Federal Circuit affirmed an attorney‑fee award based on the exceptional‑case standard, emphasizing Ortiz's failure to plead any viable damages theory after being alerted to the marking issue.  Notably, the Federal Circuit did not squarely confront Wine Railway or decide whether non‑practicing patentees without true licensees are subject to § 287(a). The opinion instead focused on Ortiz's litigation conduct, including its failure to articulate any theory at all to bring itself outside § 287(a).

B. Reconciling Ortiz With Wine Railway

A well‑framed argument should:

1. Acknowledge the burden to address § 287(a) once challenged. 

In light of Arctic Cat and cases like Ortiz, a patentee confronted with a marking defense must not stay silent. It should plead and explain why § 287(a) does not apply—invoking Wine Railway where appropriate.

2. Explicitly distinguish “licensees” from mere past‐infringement settlements. 

        Ortiz's district court equated “dismissal with prejudice” with “license,” and the Federal Circuit criticized Ortiz for failing to contest or clarify that characterization. A patentee in a similar situation should plead that any prior settlements or dismissals with prejudice were (1) limited to releases of past acts; and (2) did not confer a forward‑looking license or authorization to practice.  Plead that, as in Wine Railway, neither the patentee nor any authorized party ever “manufactured or vended an article under the infringed patent” during the relevant damages period.  Once those factual predicates are placed in the record, Ortiz's reasoning is distinguishable, while Wine Railway becomes directly controlling.

3. Emphasize that Ortiz is nonprecedential and fact‑driven.

            Ortiz is nonprecedential and heavily grounded in Ortiz's failure to plead any marking theory after being warned, the district court's view of Ortiz's prior litigation conduct; and the exceptional‑case totality of circumstances under § 285.  It does not purport to hold that every non‑practicing patentee is always subject to § 287(a) regardless of whether any authorized patented articles exist in commerce.

C. How to Plead and Argue Post‑Ortiz

 To avoid the pitfall that led to the outcome in Ortiz, a non‑practicing patentee should affirmatively allege “plaintiff has never made, offered for sale, or sold any article embodying the asserted patent claims during the damages period and plaintiff has not granted any license or other authorization to any third party to make, use, offer to sell, or sell any article embodying the asserted claims during the damages period.  Accordingly, no patented articles were made, offered for sale, or sold ‘for or under' Plaintiff during the relevant period, and there was no opportunity or duty to mark any such article.

Cite Wine Railway directly and assert that under Wine Ry. Appliance Co. v. Enterprise Ry. Equip. Co., 297 U.S. 387 (1936), a non‑producing patentee is not subject to § 287's damages limitation absent any patented articles in authorized commerce.  Explain why prior settlements do not create licensees.  State that any prior dismissals with prejudice resolved only past infringement and did not convey ongoing license rights or authorization to practice the patent.  Thus, there were no “persons making or selling any patented article for or under” Plaintiff.  This approach both honors Arctic Cat's allocation of the pleading burden and squarely places the case within the Wine Railway exception to any marking‑based damages restriction.

Policy: Why Wine Railway's Rule Remains Sound

 Finally, the policy rationale supporting Wine Railway remains compelling:

1. Avoiding impossible obligations. 

A patentee that does not practice its patent cannot physically mark anything. It likewise cannot compel an unlicensed infringer to mark its infringing products. Imposing a damages penalty for “failure to mark” in that context would punish a patentee for not doing the impossible.

2. Preserving § 284's remedial baseline. 

Section 284 promises “damages adequate to compensate for the infringement.” Section 287 is a targeted carve‑out, tied to product‑based public notice. Extending it to non‑producing patentees with no licensed products would create a broad, atextual damages bar that conflicts with § 284 and with the Supreme Court's treatment in Wine Railway.

3. Encouraging disclosure and licensing. 

The patent system benefits from entities that specialize in research, invention, and licensing without manufacturing. Penalizing such patentees for not marking non‑existent products would discourage that legitimate business model.

Conclusion

Taken together, § 287's text, the Supreme Court's decision in Wine Railway, and modern Federal Circuit law support a clear, defensible rule that an entity that does not make, offer for sale, or sell any patented article, and that has no licensee or other authorized party doing so, is not required to mark under § 287(a) and is not barred from recovering pre‑suit damages for lack of marking.  Ortiz v. Vizio does not undermine this rule; it underscores the importance of pleading and proving the necessary factual predicates and invoking Wine Railway to show that § 287(a)'s marking limitation simply does not apply.

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