As trial in Kaufman v. Microsoft Corporation wound down yesterday, United States District Court Judge Alvin K. Hellerstein (S.D.N.Y.) granted Defendant Microsoft Corporation (“Microsoft”)’s motion to limit damages to those after the filing of the complaint under 35 U.S.C. § 287(a) because Plaintiff failed to mark a website offering to sell his patented product with the patent number of the patent-in-suit.  However, later that day, the Court granted Plaintiff’s motion for reconsideration, and permitted Plaintiff to seek pre-suit damages.

Microsoft’s motion to limit damages was based on a website that discusses Plaintiff’s patented “Schemalive” process for interacting with databases.  Although the evidence at trial showed that Plaintiff stopped selling Schemalive in 2004, the Schemalive website remained online and advised readers that they could contact Plaintiff for more information.  On that basis, Microsoft argued that Plaintiff was required by statute, but did not, mark the website with the patent number, precluding pre-suit damages.  In a ruling from the bench after the close of evidence but before the jury was charged, Judge Hellerstein granted Microsoft’s motion.

However, at the charge conference, Plaintiff moved for reconsideration, arguing that the Schemalive website did not qualify as “making, offering for sale, or selling within the United States any patented article” under 35 U.S.C. § 287(a).  Accepting Plaintiff’s argument, Judge Hellerstein held that the marking requirement is triggered only when there is a commercial offer for sale.  Because the Schemalive website lacked necessary elements of an offer for sale, such as pricing information, the marking requirement did not apply.

In addition, Judge Hellerstein agreed with Plaintiff that the website itself is not a “patented article,” because the website “is neither intrinsic to the patented device nor does it provide a means for a customer to download patented software.”  For this reason, also, § 287(a) was not implicated.

The case is Kaufman v. Microsoft Corp., No. 16-cv-02880 (AKH) (S.D.N.Y.).  Trial was scheduled to begin on January 27, 2020.  Previously, Judge Hellerstein granted Microsoft’s motion for summary judgment as to willful infringement, holding that pre-suit knowledge of the patent-in-suit is required.