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4 Duke L. & Tech. Rev. [1] (2005-2006)

handle is hein.journals/dltr4 and id is 1 raw text is: PATENT DAMAGE STRATEGIES AND THE ENTERPRISE LICENSE: CONSTRUCTIVE NOTICE, ACTUAL NOTICE, NO NOTICE JAMES W. SOONGI ABSTRACT For the patent owner, early provision of patent notice can help maximize recoverable infringement damages during subsequent litigation. This iBrief recognizes a growing trend of infringement suits predicated on patented enterprise software technology, and analyzes application of patent notice principles against industry convention. This iBrief examines the licensing paradigm of enterprise software and questions whether mechanical compliance with the marking statute should qualify as constructive notice. Borrowing from analogous Federal Circuit principles, this iBrief concludes by proposing alternate notice theories that would empower patentees to seek increased remedies consistent with industry reality, case law, and fundamental statutory purpose. INTRODUCTION 11 For the patent owner, early provision of patent notice can help maximize recoverable infringement damages during litigation. The interplay of industry convention and enforcement strategy typically informs the particular manner chosen by the patentee to effect such notice. In the enterprise software2 industry, patentees face unique notice considerations posed by a distribution paradigm restricting access to software products. Such restricted access hides software products and patent listings therein from the public, and thus may preclude compliance with the marking statute. Nonetheless, patentees of enterprise software can still assert 1 J.D., University of California at Davis King Hall School of Law; B.S. in Electrical Engineering, University of California at Los Angeles. The author currently serves as Director of Intellectual Property, Legal Affairs for Siebel Systems, Inc. This iBrief reflects the present beliefs of the author and should not be attributed to past, current, or future employers or clients. The author thanks Mr. Brett Stohs and the staff of the Duke Law & Technology Review for their editorial assistance. 2 The term enterprise software generally means software intended for an enterprise. One meaning of enterprise is a business organization. E.g., htt://www.webopedia.con/TERM/e/enternrise.html (last visited Jan. 13, 2005); United States v. Oracle Corp., 331 F. Supp. 2d 1098, 1101 (N.D. Cal. 2004) (Findings of Fact, Conclusions of Law and Order Thereon).

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