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4 Duke L. & Tech. Rev. [1] (2004)

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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