Infernal Technology, LLC v. Ubisoft, Inc., 5:20-cv-00223

Plaintiffs Terminal Reality, Inc. (patent owner/licensor) and Infernal Technology, LLC (exclusive licensee/enforcer) sued Ubisoft, Inc. and Ubisoft Entertainment SA for infringing two Terminal patents covering a technique for rendering light in 3D video-game scenes (U.S. Pat. Nos. 6,362,822 ("'822") and 7,061,488 ("'488")).
Both patents had expired before suit; plaintiffs seek pre‑suit damages. Plaintiffs alleged at least 13 Ubisoft games use accused game engines to render light/shadow.
Defendants moved to dismiss under Rule 12(b)(6), arguing plaintiffs failed to plausibly plead compliance with the patent‑marking statute, 35 U.S.C. § 287(a), which limits recovery of damages for unmarked patented articles.
Plaintiffs asserted only method claims from the '822 patent but asserted both method and apparatus claims from the '488 patent; plaintiffs also alleged the marking duty was inapplicable to the asserted claims (legal conclusion).
The court evaluated whether § 287 applies when only method claims are asserted, whether plaintiffs pleaded compliance for the '488 patent (asserting apparatus claims), and whether defendants met their low burden to identify unmarked products.
Ruling: the court denied dismissal as to the '822 patent (method claims only), granted dismissal as to the '488 patent for failure to plead marking compliance, and dismissed the '488 claims without prejudice, allowing an amended complaint by Sept. 30, 2021.

Issue	Plaintiff's Argument	Defendant's Argument	Held
Does § 287 apply to asserted '822 patent claims where plaintiffs allege only method claims?	§ 287 is inapplicable because plaintiffs asserted only method claims.	§ 287 applies to patents that contain both method and apparatus claims if there is a tangible item that can be marked (e.g., a displayed image).	Court: § 287 does not apply to the '822 claims because plaintiffs asserted only method claims; denial of dismissal as to '822.
Does § 287 apply to asserted '488 patent claims where plaintiffs assert both apparatus and method claims?	Plaintiffs alleged § 287 inapplicable in complaint (legal conclusion).	§ 287 applies and plaintiffs must plead compliance because they asserted apparatus claims (and there appear to be tangible items to mark).	Court: Plaintiffs failed to plead compliance or facts showing no tangible item to mark; dismissal of '488 claims granted without prejudice.
Who bears burdens on marking/non‑marking? (defendant identification of unmarked products vs. plaintiff's pleading burden)	Plaintiffs argued defendants must identify specific unmarked products before § 287 applies.	Defendants argued they met the low production burden by pointing to video games listed in the complaint as unmarked products.	Court: Defendants met the low production burden, but regardless plaintiff must plead facts demonstrating compliance to recover damages; plaintiffs failed to do so for the '488 patent.

Crown Packaging Tech., Inc. v. Rexam Beverage Can Co., 559 F.3d 1308 (Fed. Cir. 2009) (unmarked patentee not entitled to damages for infringement prior to actual notice; § 287 precludes recovery for pre‑compliance period)
Active Video Networks, Inc. v. Verizon Commc'ns, Inc., 694 F.3d 1312 (Fed. Cir. 2012) (if patent contains apparatus and method claims and a tangible item can be marked, § 287 applies to method claims)
Am. Med. Sys., Inc. v. Med. Eng'g Corp., 6 F.3d 1523 (Fed. Cir. 1993) (where tangible article exists to give notice of method claims, patentee must mark to obtain constructive notice)
Devices for Med., Inc. v. Boehl, 822 F.2d 1062 (Fed. Cir. 1987) (distinction between asserting only method claims and asserting both apparatus and method claims for § 287 applicability)
Hanson v. Alpine Valley Ski Area, Inc., 718 F.2d 1075 (Fed. Cir. 1983) (marking requirement does not apply where patentee only asserts method claims)
Dunlap v. Schofield, 152 U.S. 244 (U.S. 1894) (burden of pleading and proving actual or constructive notice is on the patentee)
Arctic Cat Inc. v. Bombardier Recreational Prods., Inc., 876 F.3d 1350 (Fed. Cir. 2017) (alleged infringer bears initial production burden to identify unmarked products; patentee retains ultimate burden of proving compliance)
Tex. Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193 (Fed. Cir. 2002) (no marking obligation where there are no products to mark)