Background
Lubby Holdings LLC owns a patent on a personal vaporizer device — an e-cigarette or vaping device — that prevents liquid from leaking. Richard Chung was an officer and active participant in a company that manufactured and sold competing personal vaporizers that Lubby alleged infringed its patent. Lubby sued Chung personally, not just the company he worked for, seeking to hold him individually liable for patent infringement.
At trial, a jury found Chung personally liable for infringement and awarded Lubby $863,936 in reasonable royalty damages. The district court, however, limited those damages to the period after Lubby filed the complaint, because Lubby had failed to properly mark its patented products with the patent number as required by 35 U.S.C. § 287. Chung appealed his personal liability, and Lubby cross-appealed, challenging the limitation on pre-notice damages.
The Court’s Holding
Corporate officer liability: The Federal Circuit affirmed that Chung was personally liable without requiring any piercing of the corporate veil. The court reaffirmed a fundamental principle of patent law: corporate officers and employees who actively participate in a corporation’s infringement may be held personally liable for their own infringing acts, regardless of whether they were acting in a corporate capacity. This is not the same as piercing the corporate veil to hold a company’s owner liable for the company’s obligations — it is direct personal liability for the individual’s own tortious conduct. Because Chung personally directed and participated in the infringing activities, he was liable regardless of his corporate title.
Patent marking and damages: The court affirmed the district court’s limitation of damages to the post-complaint period. Under § 287, a patentee who sells patented articles must either mark them with the patent number or provide actual notice of infringement before recovering damages. The court rejected Lubby’s argument that the marking requirement should not apply because Chung knew about the patent. The court held that the defendant’s subjective awareness of the patent is irrelevant to the marking requirement — the statute focuses on whether the patentee gave constructive notice through marking or actual notice through communication. Because Lubby had done neither before filing suit, damages were properly limited to the post-complaint period.
Key Takeaways
- Corporate officers and employees who actively direct or participate in patent infringement can be held personally liable for that infringement without any need to pierce the corporate veil — this is direct tortious liability, not derivative liability.
- The legal standard for officer liability focuses on whether the individual actively participated in the infringing acts, not merely on their corporate title or position.
- The patent marking statute (§ 287) limits pre-notice damages based on what the patentee did, not what the infringer knew — a defendant’s actual knowledge of the patent does not substitute for proper marking or actual notice from the patent owner.
- Patent owners who sell embodying products should mark those products promptly to preserve the ability to recover damages from the date infringement began, not merely from the date suit is filed.
Why It Matters
The personal liability holding matters significantly for anyone involved in running a company that competes in a patent-dense space. Engineers, product managers, executives, and founders who actively design, develop, manufacture, or sell products that infringe a patent may face personal financial liability — not just exposure to their employer or corporate entity. The defense that “I was just doing my job” does not insulate an individual from patent infringement liability.
The marking ruling is equally practical. Patent owners who manufacture products covered by their patents often overlook or delay proper marking — a mistake that can wipe out years of potential damages. The Federal Circuit’s reaffirmation that defendant awareness is irrelevant reinforces that compliance with § 287 is entirely within the patent owner’s control and must be prioritized from the moment a product is commercialized.