A plaintiff must plead and prove compliance with the patent marking statute to receive pre-suit damages. In Blackbird Tech LLC v. Argento SC by Sicura, Inc., 21cv11018, (S.D.N.Y. Aug. 26, 2022), the pleading statement “[a]ll marking requirements under 35 U.S.C. § 287 have been complied with” was considered too conclusory to survive a motion to dismiss a claim for pre-suit damages.
Under the Patent Act, 35 U.S.C. § 287(a), a plaintiff may recover pre-litigation damages for patent infringement (1) if no articles have been manufactured, (2) if any manufactured articles have been adequately marked, or (3) if the defendant receives actual notice of its infringement before the action was filed.
The District Court granted defendant’s motion to dismiss Plaintiff’s claim for pre-suit damages, reasoning that since Plaintiff did not specifically plead the factual basis for how the marking requirements were complied with, Plaintiff had not met its burden of adequately pleading compliance with the marking statute.
Leave to amend was denied because Plaintiff had already filed a First Amended Complaint in response to Defendant’s motion to dismiss. The Original Complaint contained no mention of marking and the First Amended Complaint contained only the conclusory allegation the Court found inadequate.
Postscript: Plaintiff filed a Notice of Voluntary Dismissal Without Prejudice pursuant to F.R.C.P. 41(a)(1), which was effective because Defendant had not yet filed an answer to the Complaint.
Please note this post is for general informational purposes only. It is not legal advice and does not create an attorney client relationship.
