## Facts

- Amsted Industries, as assignee of U.S. Patent No. 3,664,269, made and sold a railroad car “Low Profile” center plate covered by the patent.
- Buckeye Steel Castings competed in the same market and was accused of infringing the ’269 patent by manufacturing and selling a similar center plate.
- Buckeye had known of the ’269 patent since at least 1976, made efforts to design around it, sought but did not obtain a license, and ultimately copied the patented product.
- Evidence showed Buckeye proceeded with copying despite legal advice indicating a likelihood of infringement.
- After acquiring the patent, Amsted sent Buckeye a January 10, 1986 letter announcing Amsted’s ownership and advising Buckeye to familiarize itself with the patent to avoid “possible infringement.”
- On January 27, 1989, Amsted sent a second letter specifically asserting that Buckeye’s identified center plate infringed the ’269 patent.
- At trial, a jury found infringement, willfulness, and no invalidity, and awarded Amsted lost-profits damages; the district court enhanced damages and awarded attorney’s fees, but limited damages based on failure to mark under 35 U.S.C. § 287(a).

## Issues

1. Whether substantial evidence supported the jury’s finding of willful infringement and the district court’s resulting enhanced damages and attorney’s fees awards under 35 U.S.C. §§ 284 and 285.
2. Whether § 287(a)’s marking requirement applies when patented articles are sold by implied licensees.
3. Whether Amsted’s 1986 letter provided “actual notice” under § 287(a), or whether notice occurred only when Amsted sent the 1989 infringement-specific letter.

## Decision

- The Federal Circuit affirmed the judgment of willful infringement and affirmed the awards of enhanced damages and attorney’s fees.
- The court held that § 287(a)’s marking requirement applies to implied licensees that place patented articles into commerce.
- The court held that “actual notice” under § 287(a) requires an affirmative, specific charge of infringement by a specific accused product.
- The court ruled Amsted’s 1986 letter did not give actual notice because it did not specifically accuse Buckeye’s product of infringement; the 1989 letter did.
- The court vacated the damages award and remanded for recalculation of damages beginning from the proper notice date.

## Legal Principles

- Willful infringement may be supported by evidence of deliberate copying with knowledge of the patent and reliance on a facially inadequate or incomplete legal opinion.
- Enhanced damages under 35 U.S.C. § 284 and attorney’s fees under 35 U.S.C. § 285 may be awarded where infringement is willful and the case is exceptional.
- Under 35 U.S.C. § 287(a), a patentee that does not provide constructive notice through marking may recover damages only after providing actual notice to the accused infringer.
- Implied licensees that make or sell patented articles are subject to § 287(a)’s marking requirement.
- Actual notice under § 287(a) requires an affirmative communication that specifically charges infringement by a specific accused device; notice of patent ownership or a general warning is insufficient.

## Conclusion

The Federal Circuit left intact findings of willfulness and the related enhanced-damages and fee awards, but required damages to be recalculated because § 287(a) limits recovery absent marking until the patentee provides actual notice that specifically accuses a particular product of infringement.


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