Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in VDPP, LLC v. Volkswagen Group of America, Inc., No. 24-2226 (Aug. 19, 2026), affirming the district court’s Rule 12(b)(6) dismissal where the patentee failed to plead facts supporting compliance with 35 U.S.C. § 287(a).
VDPP, LLC (“VDPP”), a non-practicing entity, sued Volkswagen Group of America, Inc. (“Volkswagen”) for infringement of U.S. Patent No. 9,426,452, which relates to electrically controlled spectacles. VDPP sought pre-suit damages but alleged only that it had no products to mark and that the statutory requirements for obtaining pre-suit damages were satisfied. The district court dismissed the complaint and denied VDPP leave to amend, finding its proposed amended complaint futile. VDPP appealed.
The Federal Circuit affirmed. Although a patentee that does not make or sell patented articles may recover pre-suit damages even absent notice to an alleged infringer, the Court explained that a patentee’s licensees must also comply with § 287(a). VDPP had entered into eleven settlement agreements licensing the ’452 patent, yet its proposed amended complaint alleged no facts showing that VDPP made reasonable efforts to ensure its licensees complied with § 287(a). The Court rejected VDPP’s conclusory allegations that the statutory requirements were satisfied, explaining that such legal conclusions could not substitute for supporting factual allegations.
The Court also rejected VDPP’s argument that licenses entered into through settlement agreements should be treated differently from other licenses for purposes of the § 287(a) analysis. The eleven settlement agreements were structured as standard licensing agreements, authorizing the respective licensees to make, use, and sell licensed products. Moreover, one of the agreements expressly provided that the licensee had no obligation to mark. Under these circumstances, the Court concluded that VDPP could not plausibly allege that it made reasonable efforts to ensure its licensees complied with § 287(a), making further amendment futile.
Although the Court did not foreclose the possibility that a licensor may establish compliance with § 287(a) without an express marking obligation in a license agreement, the decision underscores the value of including such an obligation to preserve the availability of pre-suit damages.
