Author's note: The author argued VDPP, LLC v. Volkswagen Group of America, Inc., Ortiz & Associates Consulting, LLC v. Vizio, Inc., and mCom IP, LLC v. City National Bank of Florida for the patent-owner side. This article addresses the published opinions and public record as written and does not purport to speak for any client.

Introduction

Ninety years ago, the Supreme Court held that a patentee who has never made or sold a patented article owes the public no marking and forfeits no damages for the want of it. Wine Ry. Appliance Co. v. Enterprise Ry. Equipment Co., 297 U.S. 387 (1936). On August 19, 2026, the Federal Circuit decided VDPP, LLC v. Volkswagen Group of America, Inc., No. 2024-2226, 2026 WL 2416565 (Fed. Cir. Aug. 19, 2026), a precedential opinion holding that a non-practicing patentee seeking pre-suit damages cannot plead around known licensees with the bare assertion that it has no products of its own to mark. The proposed pleading had to allege facts showing compliance with 35 U.S.C. § 287(a), including compliance by licensees. Id. at *2–3.

The result is easy to state and easier to overread. VDPP did not overrule Wine Railway, and it did not announce a categorical rule that every settlement license destroys pre-suit damages. Three months earlier, in mCom IP, LLC v. City National Bank of Florida, 175 F.4th 1370 (Fed. Cir. 2026), the Federal Circuit reversed a fee award that rested in part on an alleged license because the necessary factual predicate—coverage of the accused activities—had never been established. The two decisions operate at different procedural stages and allocate different burdens, so their holdings do not conflict. Read together, however, they draw an important boundary: VDPP requires factual pleading where the patentee bears the marking burden; mCom warns against using the existence of a license, or a merits loss, as a substitute for proof of the facts needed to support fee shifting. The difficult questions now lie in the space between those rules.

I. Wine Railway: The Holding and Its Premises

The dispute arose on a counterclaim filed in 1923. After the patent was held valid and infringed, the Sixth Circuit ruled that nothing could be recovered for the period before the counterclaim because Wine Railway had given no notice. 297 U.S. at 391–92.

The statute was R.S. § 4900, which imposed a duty on "all patentees, and their assigns and legal representatives, and of all persons making or vending any patented article for or under them, to give sufficient notice to the public that the same is patented," and barred damages for "the party failing so to mark" absent proof of actual notice. Id. at 392. The Supreme Court reversed and reinstated the full award.

Three moves carried the decision. The first was grammatical: the phrase "making or vending any patented article" qualifies "patentees" as well as licensees, because otherwise the statute "would seem to impose on such persons a duty to the public impossible of performance when no article is made or vended by them." Id. at 395. The second was structural. "Two kinds of notice are specified—one to the public by a visible mark, another by actual advice to the infringer. The second becomes necessary only when the first has not been given; and the first can only be given in connection with some fabricated article. Penalty for failure implies opportunity to perform." Id. The third was historical. The 1870 revision, which added the reference to patentees and their assigns, was meant "to delimit the term a 'person under the protection of letters-patent' to describe the members of the class more definitely, and not to impose a new and different burden upon non-producing patentees." Id. at 397.

Two features of the opinion are easy to pass over and turn out to matter a great deal now. The first is the Court's statement of the record: "Neither petitioner nor another with its consent has ever manufactured or vended an article under the infringed patent." Id. at 393. The rule was announced for a patentee with no one selling under it; the Court did not have before it a licensor whose licensees were placing unmarked goods in the market. The second is that the statute the Court construed already reached "all persons making or vending any patented article for or under them." The Court read that clause as defining who bears the duty; it did not read it out. Wine Railway therefore carries within it the premise on which the licensee cases were later built: a patentee that neither makes nor vends has no duty, but a person making or vending "under" that patentee does.

Dunlap v. Schofield, 152 U.S. 244 (1894), is of a piece: the statute reaches the patentee "if he makes or sells the article patented," and marking or notice is "an affirmative fact, and . . . something to be done by him." Id. at 248 (as quoted in Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 950 F.3d 860, 866 (Fed. Cir. 2020)). Wine Railway also grouped the non-producing patentee with the owner of a process patent, observing that under the infringer's reading "process patents and patents under which nothing has been manufactured may be secretly infringed with impunity." 297 U.S. at 395. That pairing anticipated the Federal Circuit's method-claim exemption by half a century.

II. The Federal Circuit's Framework Before VDPP

Between 1936 and 2026, the Federal Circuit added several layers to the marking statute without purporting to disturb Wine Railway. Those decisions answer three different questions: who must mark, when the obligation attaches, and who must establish the predicate facts. VDPP matters because it brings those lines together at the pleading stage for a patent owner whose licensing history consists of litigation settlements.

Licensees. Amsted Industries Inc. v. Buckeye Steel Castings Co., 24 F.3d 178 (Fed. Cir. 1994), stated the proposition directly: "A licensee who makes or sells a patented article does so 'for or under' the patentee, thereby limiting the patentee's damage recovery when the patented article is not marked." Id. at 185 (as quoted in Rembrandt Wireless Techs., LP v. Samsung Elecs. Co., 853 F.3d 1370, 1383 (Fed. Cir. 2017). Maxwell v. J. Baker, Inc., 86 F.3d 1098 (Fed. Cir. 1996), added a rule of reason: courts consider "whether the patentee made reasonable efforts to ensure compliance with the marking requirements." Id. at 1111–12 (as quoted in Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 876 F.3d 1350, 1366 (Fed. Cir. 2017)).

Method claims. Hanson v. Alpine Valley Ski Area, Inc., 718 F.2d 1075, 1082–83 (Fed. Cir. 1983), held that § 287(a) does not apply where the patentee asserts only the method claims of a patent that also contains apparatus claims. Crown Packaging Technology, Inc. v. Rexam Beverage Can Co., 559 F.3d 1308, 1316–17 (Fed. Cir. 2009), reaffirmed Hanson as binding and reconciled it with American Medical Systems, Inc. v. Medical Engineering Corp., 6 F.3d 1523, 1538–39 (Fed. Cir. 1993): when both apparatus and method claims are asserted and there is a tangible item to mark, the patentee must mark; when only method claims are asserted, the statute does not apply.

Actual notice. Amsted held that the actual-notice inquiry "must focus on the action of the patentee, not the knowledge or understanding of the infringer." 24 F.3d at 187 (as quoted in Arctic Cat, 950 F.3d at 866); see Lubby Holdings LLC v. Chung, 11 F.4th 1355, 1360 (Fed. Cir. 2021).

Burden. Arctic Cat I confirmed that "[t]he patentee bears the burden of pleading and proving he complied with § 287(a)'s marking requirement," 876 F.3d at 1366, and allocated the initial step to the infringer, which "bears an initial burden of production to articulate the products it believes are unmarked 'patented articles' subject to § 287." Id. at 1368. That is "a low bar," but it is framed in terms of "specific unmarked products"; once met, the patentee must prove the identified products do not practice the claims. Id. In Arctic Cat I the infringer had named fourteen Honda models and offered expert testimony. Id.

Cure. American Medical Systems recognized that a patentee who has sold unmarked goods can begin recovering damages by beginning to mark. 6 F.3d at 1537 (as discussed in Arctic Cat, 950 F.3d at 864–66). Arctic Cat II held that stopping sales is not a cure: once a licensee begins selling patented articles, "the notice requirement attaches, and the obligation imposed by § 287 is discharged only by providing actual or constructive notice," and it "cannot be switched on and off." 950 F.3d at 865. Nor does it matter that the licensee, not the patentee, was the seller. Id. at 864.

Disclaimer. Rembrandt Wireless held that a statutory disclaimer under 35 U.S.C. § 253 cannot retroactively dissolve the marking requirement as to a claim the licensee's unmarked products practiced, 853 F.3d at 1383–84, and remanded as a “novel legal issue” whether § 287 attaches claim by claim or patent by patent. Id. at 1384. Rembrandt expressly left that question unresolved; VDPP did not answer it.

Proof of method-claim damages. Packet Intelligence LLC v. NetScout Systems, Inc., 965 F.3d 1299, 1312–15 (Fed. Cir. 2020), held that a patentee cannot fold pre-suit sales of unmarked products into its royalty base by arguing that infringement of related method claims drove those sales.

Ortiz. Finally, Ortiz & Associates Consulting, LLC v. Vizio, Inc., No. 2024-1783 (Fed. Cir. Dec. 17, 2025) (nonprecedential), affirmed a § 285 award against a non-practicing patentee that had twice failed to plead marking compliance; the district court's theory that earlier dismissals with prejudice functioned as licenses was not reviewed. Certiorari was denied June 29, 2026. No. 25-1326 (U.S.).

None of these decisions involved a portfolio of litigation settlements being tested at Rule 12. Arctic Cat concerned a negotiated commercial license, for $315,000, with an express no-marking clause, litigated through a jury trial. 876 F.3d at 1366–67. Rembrandt and Packet Intelligence were post-verdict appeals involving commercial licensees. VDPP is the first precedential Federal Circuit decision to apply the licensee-marking rule at the pleading stage to a patent monetized through settlement licenses. That procedural setting matters because it places Twombly, Arctic Cat I, and the terms and scope of settlement licenses in the same frame.

III. What VDPP v. Volkswagen Decided

The procedural posture defines both the force and the limits of VDPP. The Southern District of Texas dismissed VDPP's complaint with prejudice under Rule 12(b)(6) and denied leave to amend as futile. 2026 WL 2416565, at *1. Under Fifth Circuit law, futility is measured by the Rule 12(b)(6) standard. Id. (citing Ariyan, Inc. v. Sewerage & Water Bd. of New Orleans, 29 F.4th 226, 229 (5th Cir. 2022)). The Federal Circuit therefore was asking whether the proposed amendment plausibly alleged an entitlement to pre-suit damages, not deciding after discovery which licensed products actually practiced the patent.

The court first observed that VDPP had implicitly agreed not to amend in exchange for an extension and then tendered a proposed amended complaint anyway; "[t]his alone would have provided a basis for the court's denial of leave to amend." Id. at *2. The marking analysis is therefore an alternative ground. It is nonetheless the ground the court developed at length and the one that will be cited.

The marking holding proceeds in five steps. First, the pleading burden. "Because VDPP sought pre-suit damages, VDPP had a burden to plead compliance with the notice provision of 35 U.S.C. § 287(a), including compliance by VDPP's licensees." Id. (citing Arctic Cat, 950 F.3d at 863–64).

Second, the insufficiency of the allegation. The proposed amended complaint alleged: "Plaintiff is a non-practicing entity, with no products to mark. Plaintiff has pled all statutory requirements to obtain pre-suit damages. Further, all conditions precedent to recovery are met." Id. The court accepted that "a patentee who never makes or sells a patented article may recover [pre-suit] damages even absent notice to an alleged infringer," but held that VDPP "ignores that the law requires that '[a] patentee's licensees must also comply with § 287.'" Id. (quoting Arctic Cat, 950 F.3d at 864). The remaining sentences were "bare legal conclusions" under Twombly. Id.

Third, the record. VDPP had entered eleven settlement agreements licensing the '452 patent, the proposed pleading alleged no facts showing compliance by any licensee, and the silence was "particularly conspicuous" because Volkswagen had raised the point. Id.

Fourth, the character of settlement licenses. VDPP argued that licenses entered to settle litigation, with no admission of infringement, did not trigger § 287. The court disagreed on both points. A license, whatever its origin, "is in essence nothing more than a promise by the licensor not to sue the licensee," and the distinction between a covenant not to sue and a license is one "only . . . of form, not substance." Id. at *2 (quoting TransCore, LP v. Elec. Transaction Consultants Corp., 563 F.3d 1271, 1275–76 (Fed. Cir. 2009)). The licensee's view of its own infringement does not matter, because § 287 "must focus on the action of the patentee." Id. at *2–3 (quoting Lubby, 11 F.4th at 1360). Two record-specific observations followed: all eleven agreements "were fashioned as standard licensing agreements to make, use, and sell licensed products, with one agreement going as far as specifying VDPP's licensee has no obligation to mark," and VDPP "continues to maintain that all the licensed products covered under its prior settlement agreements infringe." Id. at *3. "Under the facts of this case, we see no way for VDPP to amend its complaint to plausibly allege it made reasonable efforts to ensure its licensees complied with 35 U.S.C. § 287." Id.

Fifth, policy and a reservation. The court invoked the three purposes of § 287 from Arctic Cat and concluded that VDPP's position would frustrate all of them. Id. It then closed with a sentence that will be parsed for years: "While we do not foreclose the possibility that a licensor can ever establish it made reasonable efforts to ensure licensee compliance with 35 U.S.C. § 287 in the absence of a marking obligation, that is certainly not the case here." Id.

Two features of the record deserve separate mention because several open questions turn on them. The first is timing. The eleven agreements the panel described, J.A. 1030–178, were not before the district court when it dismissed the complaint and denied leave to amend. Volkswagen's motion to dismiss had pointed to the existence of prior settlements, J.A. 146–50, and had raised them in earlier correspondence, J.A. 156; the agreements themselves entered the record as sealed exhibits to Volkswagen's fee motion, filed after the dismissal order. See VDPP, LLC v. Volkswagen Grp. of Am., Inc., No. 4:23-cv-02961 (S.D. Tex.), ECF Nos. 33, 35. The district court's futility ruling therefore rested on the proposed pleading and Volkswagen's description of the settlements; the panel's account of the grant language and of the no-marking clause at J.A. 1070 came from material filed afterward.

The second is what VDPP's brief said. The panel cited page 25 of VDPP's brief for the statement that VDPP "continues to maintain that all the licensed products covered under its prior settlement agreements infringe." 2026 WL 2416565, at *3. The sentence on that page reads: "Each settlement license that was entered into between the defendant entity and VDPP was negotiated in the face of continued litigation and, while VDPP believes there was infringement, no defendant entity agreed that it was infringing." Corrected Br. of Appellant at 25, VDPP, LLC v. Volkswagen Grp. of Am., Inc., No. 2024-2226 (Fed. Cir. Dec. 27, 2024), ECF No. 37. The preceding page argued that Volkswagen "failed to identify any alleged patented article for which Section 287(a) would apply"; that if a product were identified VDPP "would develop evidence in discovery to . . . show that the alleged unmarked product does not practice the Patents-in-suit"; and that, "to the extent necessary, if given the opportunity, VDPP would have limited its claims of infringement to method claims and thereby removed any requirement for marking." Id. at 24. The opinion does not discuss the burden-of-production point or the method-claim point.

The balance of the opinion affirmed the § 285 award, listing among the positions the district court reasonably found frivolous “seeking past damages despite an inability to allege patent marking,” id., and dismissed for lack of jurisdiction the portion of the appeal concerning counsel's personal sanctions under Federal Rule of Appellate Procedure 3(c)(1)(A). Id. at *5–6. The fee holding matters to the marking discussion because it is tempting to turn an unsuccessful § 287 position into evidence of exceptionality. mCom, discussed below, shows why that inference cannot be automatic: lack of merit and exceptionality remain different inquiries.

IV. Where VDPP Fits Within Wine Railway—and Where the Hard Questions Begin

VDPP is best read as an application of Wine Railway's premise, not a retreat from its holding. Wine Railway protected a patentee for whom marking was impossible because no patented article had been made or sold with its consent. VDPP confronted a different record: eleven settlement agreements that the panel described as licenses authorizing others to make, use, and sell licensed products. The overlap ends there. The real disputes begin with whether any licensed product was in fact a “patented article,” what the patentee had to plead about licensee compliance, and what reasonable efforts mean when the licensee is a former adversary rather than a conventional commercial partner.

The text has not changed in the relevant respect. The clause "for or under them" was in R.S. § 4900 and is in § 287(a) today. Wine Railway treated it as defining a class of persons subject to the duty; Amsted and Maxwell gave the class content; VDPP applied it. Nothing in Wine Railway suggests a patentee is insulated from unmarked sales made under its authority.

The facts differ in the way that matters. Wine Railway's record was that no one had made or sold, "with its consent" or otherwise. VDPP's record was eleven agreements authorizing others to make, use, and sell, though, as Part V discusses, no court found that anything made or sold under them practiced the patent. The Supreme Court decided the first case and did not purport to decide the second.

The "opportunity to perform" principle is satisfied, not offended. Wine Railway's intuition was that a penalty should not attach to a duty the patentee cannot discharge. A licensor drafting a license can require marking as a condition of the grant. Where an agreement affirmatively provides that the licensee need not mark, as one of VDPP's agreements did and as the Honda agreement in Arctic Cat did, the patentee has exercised the opportunity in the other direction. That is not the "impossible of performance" scenario the Court described, and Arctic Cat II had already said so: it "does not excuse Arctic Cat's lack of marking that it is Arctic Cat's licensee, rather than Arctic Cat itself, who sold unmarked products." 950 F.3d at 864.

The question, then, is not whether VDPP can be reconciled with Wine Railway. It can. The questions are how far the settlement-license premise reaches, how the “patented article” predicate must be established, how Arctic Cat I's burden of production interacts with Twombly at Rule 12, and what a non-practicing patentee can do after unmarked licensed sales have occurred. VDPP answers none of those questions categorically.

V. The Questions VDPP Leaves Open

A. Reasonable efforts when the licensee is a former defendant.

Maxwell's rule of reason was built for the ordinary licensor-licensee relationship, in which the licensee wants the license and the licensor can attach conditions. A litigation settlement is different in kind. The counterparty has denied infringement and has every reason to refuse a marking covenant, because a promise to mark is a public statement that the product is a "patented article" and that the charge was well founded. Wine Railway's "opportunity to perform" is not absent in that setting, but it is constrained: the patentee can ask, can be refused, and can decline to settle. Whether declining to settle is what "reasonable efforts" requires is the question the opinion leaves for another day.

The reservation is phrased with care. The court did not foreclose reasonable efforts “in the absence of a marking obligation,” which necessarily leaves room for some showing other than an express contractual duty to mark. 2026 WL 2416565, at *3. That might include a documented request to mark that was refused, a licensee representation that the licensed products do not practice the claims, or other evidence showing what the licensor reasonably could and did do. The opinion identifies one agreement that expressly relieved the licensee of a marking obligation, but it does not describe the marking provisions, if any, in the remaining agreements. The significance of the panel's reservation therefore lies in what the proposed pleading failed to allege, not in any established finding that the remaining agreements were silent on marking.

B. The “patented article” predicate and what mCom does—and does not—supply.

Section 287 reaches only "patented article[s]," and under Arctic Cat II the notice requirement attaches when a licensee "begins making or selling a patented article." 950 F.3d at 865. Whether a licensee's product practices the claims is a fact question on which the patentee bears the burden once the infringer has identified the product. 876 F.3d at 1368. In VDPP no court found that any licensee had sold a product practicing a claim of the '452 patent. The district court had no occasion to; the agreements were not yet in the record. The panel supplied the predicate in two ways: from the agreements' grant language, describing them as "standard licensing agreements to make, use, and sell licensed products," and from VDPP's position at page 25 of its brief. 2026 WL 2416565, at *3.

mCom is useful here, but only if used carefully. Three months before VDPP, a different Federal Circuit panel reversed a § 285 award in mCom IP, LLC v. City National Bank of Florida, 175 F.4th 1370 (Fed. Cir. 2026). The district court had relied on an mCom-NCR settlement agreement on the theory that mCom should have discovered that City National was a covered NCR customer. The Federal Circuit held that license and release are affirmative defenses under Rule 8(c)(1), noted that the district court had never found City National's accused activities were actually licensed, and stated that “[t]he existence of a license covering the accused activities is a necessary predicate” to treating the license as a reason the suit was unreasonably brought or maintained. Id. at 1380. The agreement itself did not identify which customers were covered. Id.

That holding does not answer the § 287 question in VDPP. It does, however, mark the point at which analogy must stop. In mCom, the fee applicant needed a factual predicate for a licensure-based exceptionality theory. In VDPP, the patentee itself was seeking pre-suit damages and therefore bore the burden to plead marking compliance, including licensee compliance. The panel also relied on more than grant language: it relied on the proposed complaint's failure to allege any licensee-compliance facts and on its reading of VDPP's appellate brief. The decisions therefore impose different burdens on different parties for different purposes.

mCom nevertheless supplies a useful caution. A license establishes authorization within its scope; it does not, standing alone, adjudicate every factual proposition that someone later wants to draw from it. If the licensed products do not practice the asserted claims, § 287 does not attach merely because a settlement document uses licensing language. If the patentee has not conceded that point, the patented-article predicate remains a real issue. VDPP resolved futility on its own record, including the panel's reading of the brief. mCom counsels against converting that record-specific conclusion into a broader evidentiary shortcut.

C. What the brief said, and how it was read.

The panel's characterization and the brief's sentence differ in three respects. The first is tense and object. The brief said VDPP "believes there was infringement"—a statement about the accusations in the suits that were settled. The opinion described VDPP as maintaining that "all the licensed products covered under its prior settlement agreements infringe"—a present assertion about every product within the license grant. Those are not the same set. A settlement license commonly covers a licensee's entire product line, including products never accused and never analyzed. The second is context. The sentence appears in a paragraph explaining that each settlement was reached to end litigation without any admission, and the preceding page expressly reserved the position that licensed products identified by Volkswagen would be shown not to practice the patent. The third is function. The panel treated the sentence as the fact that made further amendment futile.

Whether a patentee's statement that it believed the settled defendants infringed should operate as an admission that every product covered by the resulting license is a patented article is a question the opinion resolved by reading the brief before it, not by announcing a rule. Two observations follow. The first is that the tension the panel identified is real. A patentee that filed suit had to believe, consistent with Rule 11, that the accused products infringed. If that belief carries over as a § 287 admission, every settled case supplies the patented-article element against the patentee in the next one, while the settling defendant's denial is, under Lubby and Amsted, beside the point. The second is that the panel's reading was one the brief's wording invited. A sentence affirming belief in infringement will be read as an affirmation of infringement unless it is confined to the accused products and paired with the point that the licensed products are broader than the accused products and have not been analyzed against the claims. How a position drawn that way would fare is not addressed.

D. Twombly and Arctic Cat I: which burden comes first at Rule 12?

Arctic Cat I announced two rules that occupy different steps of the same sequence. The patentee bears “the burden of pleading and proving” compliance with § 287(a), 876 F.3d at 1366, while the accused infringer bears an initial burden of production to identify “specific unmarked products,” id. at 1368. In Arctic Cat I, that meant fourteen identified Honda models plus expert testimony. VDPP applied the first proposition through Twombly. It did not separately analyze the second. Volkswagen had identified the existence of settlement agreements, 2026 WL 2416565, at *2, but the opinion does not say that Volkswagen identified particular licensee products and showed why they practiced the claims. VDPP's brief made that point expressly. Br. at 24.

The sequencing question therefore remains open. One reading is that a patentee seeking pre-suit damages must plead licensee compliance whenever known licenses make § 287 plausibly relevant, with product-specific proof to come later. Another is that Arctic Cat I's production burden requires identification of a particular unmarked patented article before the patentee must plead around it. VDPP does not expressly choose between those formulations because the proposed pleading said nothing about licensee compliance and the panel viewed VDPP's own litigation position as making amendment futile. A cleaner case can still present the question.

E. Cure: the non-practicing patentee's structural problem under Arctic Cat II.

This is the largest practical gap, and VDPP does not reach it because the proposed pleading alleged nothing that could have raised it. Arctic Cat II holds that once a licensee begins selling patented articles the notice requirement attaches and is "discharged only by providing actual or constructive notice." 950 F.3d at 865. American Medical Systems holds that a patentee who begins marking can begin recovering damages prospectively. 6 F.3d at 1537 (as discussed in Arctic Cat, 950 F.3d at 865–66). A patentee that makes nothing cannot begin marking. Its only route to constructive notice is to cause its licensees to mark.

Consider the non-practicing patentee whose first settlement licensee sold unmarked goods years ago and has since discontinued the line. Cessation did not cure, and marking is now impossible for both. On a straightforward reading of Arctic Cat II, that patentee is remitted to actual notice under Amsted, defendant by defendant, for the life of the patent. Whether that is the law is unsettled. Arctic Cat II's rationale was that unmarked products "remain on the market, incorrectly indicating to the public that there is no patent, while no corrective action has been taken by the patentee." 950 F.3d at 865. It has less force when the products are long gone and the patentee never had an article to mark.

A related question is whether a licensor can cure prospectively by amending an existing settlement license to add a marking covenant and securing the licensee's actual marking. American Medical Systems suggests yes by analogy, and Arctic Cat II's emphasis on patentee action points the same way, but no decision has applied the cure doctrine to a licensee's marking rather than the patentee's own.

F. Method claims, Crown Packaging, and the timing of the election.

Wine Railway itself paired process patents with non-producing patentees as the two categories that would be "secretly infringed with impunity" under the infringer's reading. 297 U.S. at 395. The Federal Circuit has kept that pairing: under Hanson and Crown Packaging, § 287 does not apply when only method claims are asserted, even from a patent that also contains apparatus claims. 559 F.3d at 1316–17. The opinion does not mention method claims or describe which claims of the '452 patent were asserted, although VDPP's brief stated that, if permitted to amend, it would have limited its claims to method claims. Br. at 24. The Crown Packaging path is therefore formally undisturbed for a patentee that asserts only method claims from the outset, and whether a patentee may narrow to method claims at the amendment stage is unaddressed.

Two cautions attach. First, Rembrandt held that dropping an apparatus claim after suit and disclaiming it under § 253 does not retroactively dissolve the marking requirement for the period when the licensee's unmarked products practiced that claim. 853 F.3d at 1383–84. Rembrandt involved a statutory disclaimer and rested on the public's reliance interest. Whether a Rule 15 amendment withdrawing apparatus claims without disclaiming them is treated the same way has not been decided; the counterclaimant in Crown Packaging asserted only method claims from the beginning. Second, Packet Intelligence requires that pre-suit method-claim damages be tied to pre-suit performance of the method rather than to sales of products capable of performing it. 965 F.3d at 1312–15. For a patentee whose damages model rests on unit sales, that is a proof problem rather than a pleading problem, but it constrains what the method-claim path is worth.

G. Claim-by-claim or patent-by-patent.

Rembrandt expressly remanded the question whether § 287 attaches claim by claim or patent by patent. 853 F.3d at 1384. VDPP did not answer it. For settlement portfolios, the distinction can be outcome-determinative. If marking attaches patent by patent, a licensee's unmarked product practicing one apparatus claim could affect pre-suit damages on other claims of the same patent. If it attaches claim by claim, the inquiry narrows to the claims practiced by the licensed product and the claims asserted in the later case. The better point for present purposes is not to declare the issue permanently unresolved, but to recognize that neither Wine Railway nor VDPP supplied the missing rule.

H. The implied-license frontier.

VDPP involved written licenses. The district court in Ortiz went further, treating voluntary dismissals with prejudice as licenses that triggered § 287 as to the dismissed defendants' products. That theory was never reviewed on appeal, and the Supreme Court declined to take the case. If it is correct, a non-practicing patentee that has ever dismissed with prejudice against a seller has "licensees" for § 287 purposes without any written grant or any chance to negotiate a marking covenant. That is where Wine Railway's "opportunity to perform" principle would be most directly tested, and no appellate court has spoken to it.

I. Marking, merits loss, and exceptionality after mCom.

VDPP included “seeking past damages despite an inability to allege patent marking” among the positions the district court reasonably characterized as frivolous, alongside seeking an injunction on an expired patent, failing to disclose relevant settlement agreements, repeated pleading errors, and other conduct. 2026 WL 2416565, at *3–4. Three months earlier, mCom reversed a § 285 award and emphasized that “mere invalidity is not legally sufficient” to make a case exceptional; what matters is whether the position was unusually or extraordinarily weak, or the litigation was conducted unreasonably. 175 F.4th at 1379. mCom also rejected a licensure-based fee theory because the necessary coverage finding was missing. Id. at 1380. The cases therefore fit together: VDPP affirmed fees on a record the panel described as infected by multiple forms of unreasonable conduct, while mCom warns against turning an ordinary merits loss, an unproven license theory, or an unsupported litigation-history inference into exceptionality. A good-faith Wine Railway or § 287 position, candidly pleaded and supported by the known facts, is analytically different from the record the VDPP panel described.

VI. Twelve Questions the Next Cases Will Have to Answer

The practical significance of VDPP is clearest in the questions it did not decide:

1. What constitutes "reasonable efforts" to ensure licensee compliance where the license is silent on marking and the licensee is a former defendant that denied infringement?

2. Where a settlement license covers products the patentee has never analyzed against the claims, and the patentee takes no position that those products infringe, who establishes that they are "patented articles," and at what stage?

3. Is a patentee's statement that it believed the settled defendants infringed an admission that every product covered by the resulting license is a patented article, or is it confined to the products actually accused?

4. Does mCom's refusal to infer license coverage from a license's existence carry over to inferring the existence of patented articles from a license's grant language, or does burden allocation at the pleading stage account for the difference?

5. May a futility determination rest on agreements that entered the record after dismissal, and if so, on what procedural footing?

6. Does a defendant's identification of a license agreement, without identification of specific products, satisfy the Arctic Cat I burden of production such that the patentee must plead around it under Twombly?

7. Can a non-practicing patentee whose licensee sold unmarked goods ever restore constructive notice, and if so how—by amending the license, by securing the licensee's marking, or not at all?

8. Where the licensee's unmarked products have been discontinued, is the patentee permanently remitted to actual notice against all future defendants, or does Arctic Cat II's rationale lose force when no unmarked goods remain in commerce?

9. Does § 287 attach claim by claim or patent by patent?

10. Does an amendment at the pleading stage that withdraws apparatus claims carry the same retroactive consequence Rembrandt attached to    disclaimer?

11. Does a voluntary dismissal with prejudice create a license for § 287 purposes, and if so, what "opportunity to perform" did the patentee have?

12. When a non-practicing patentee candidly pleads a Wine Railway position, discloses its licenses, and loses on reasonable efforts, is the             marking position alone a basis for exceptionality under mCom?

VII. Conclusion: VDPP Narrows the Safe Harbor, but Does Not Erase It

Wine Railway remains good law, and VDPP says so. A patentee that has never made or sold a patented article, and under whose authority no one else has made or sold one, does not lose pre-suit damages merely because it had nothing to mark. VDPP draws the line where the statutory text and the licensee cases had already placed it: authorized sellers of patented articles matter. Its important new contribution is procedural. A patent owner seeking pre-suit damages cannot ignore known licensees at the pleading stage and rely on the label “non-practicing entity” as a substitute for facts.

But VDPP should not be made to answer questions its record allowed the court to avoid. The opinion does not define reasonable efforts in the settlement context; decide how the patented-article predicate must be established when the patentee has not conceded infringement by licensed products; reconcile Arctic Cat I's product-specific production burden with Twombly; supply a cure rule for a patentee with nothing of its own to mark; decide Rembrandt's claim-by-claim question; or adopt the implied-license theory used by the district court in Ortiz. And mCom supplies a separate warning against converting unresolved predicates into fee presumptions. The published opinions leave room for the next case to be narrower, cleaner, and better developed.

For patent owners, the practical lesson is less dramatic and more important. Marking has to be treated as a portfolio-management issue before the next complaint is filed. Settlement licenses should address marking whenever possible. A refusal to accept a marking obligation should be documented. The patent owner should know which licensed products were actually accused, which broader products a settlement release or license sweeps in, and whether any of them have ever been analyzed against the claims. If method claims are the intended path, that choice should be made early enough to avoid a later fight over retroactivity. And if the patent owner takes a Wine Railway position, it should do so candidly, with the relevant licenses disclosed and the factual basis stated precisely. Ninety years after Wine Railway, the rule still protects a patentee that truly had nothing to mark. After VDPP, the hard work is proving when a modern licensor still fits that description.

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.