## Facts

- Motorola owned U.S. Patent No. 3,383,680 covering an improved radar transponder used to identify and locate a carrier.
- In 1969 Motorola manufactured and sold 30 commercial-model transponders (SST-122KU) to the U.S. Marine Corps.
- None of the 30 units were marked with the patent number or other patent notice.
- Later in 1969 the Marine Corps sought additional transponders through a request for proposals; Motorola submitted a detailed technical proposal.
- In prior proceedings, the United States (through the Marine Corps) was found liable under 28 U.S.C. § 1498 for use of transponders that infringed claims of the patent, entitling Motorola to “reasonable and entire compensation.”
- During the accounting/damages phase, the Claims Court granted summary judgment to the United States, holding that Motorola’s failure to comply with the patent marking statute, 35 U.S.C. § 287, barred recovery because § 287 was incorporated into § 1498.
- Motorola appealed the summary judgment to the Federal Circuit.

## Issues

1. Whether 35 U.S.C. § 287’s marking/notice limitation is incorporated into 28 U.S.C. § 1498 so that failure to mark patented articles bars or limits a patentee’s recovery of compensation from the United States for authorized government use.

## Decision

- The Federal Circuit reversed the Claims Court’s summary judgment and remanded for further proceedings on compensation.
- The court held that § 287 is not incorporated into § 1498 in a manner that bars Motorola’s recovery based on failure to mark.
- The court treated a § 1498 claim as a compensation action for authorized government use, not an ordinary private-party infringement action governed wholesale by Title 35 limitations.

## Legal Principles

- An action under 28 U.S.C. § 1498 is a statutory compensation remedy for authorized government use of a patented invention, analogous to a compulsory license or taking requiring “reasonable and entire compensation.”
- Limits on damages in private infringement actions, such as 35 U.S.C. § 287’s marking/notice provisions, do not automatically apply to bar recovery in a § 1498 compensation action absent clear statutory direction.
- The United States’ liability under § 1498 is determined by the statute’s compensation standard, rather than by importing all defenses and limitations applicable to infringement suits under 35 U.S.C. § 271.

## Conclusion

The Federal Circuit held that a patentee’s failure to mark products under 35 U.S.C. § 287 does not, by itself, bar “reasonable and entire compensation” from the United States under 28 U.S.C. § 1498 for authorized governmental use of the patented invention, and it reversed and remanded the accounting judgment.


Motorola, Inc. v. United States, 729 F.2d 765 (Fed. Cir. 1984)