A Delaware district court recently held that a patentee failed to state a claim for past patent infringement damages where the patentee failed to plead compliance with the patent marking statute in its complaint. See Express Mobile, Inc. v. Liquid Web, LLC, C.A. Nos. 18-01177-RGA, 18-01181-RGA, 2019 U.S. Dist. LEXIS 64362, at *5 (D. Del. Apr. 15, 2019). The decision highlights the importance of pleading compliance with the marking statute even where a product covered by the patent is not being offered for sale or sold in the United States.
The federal patent marking statute (“Marking Statute”) provides a limitation on recoverable damages in patent litigation. See 35 U.S.C. § 287(a). It provides that “Patentees, and persons making, offering for sale, or selling within the United States any patented article for or under them, or importing any patented article into the United States, may give notice to the public that the same is patented, either by fixing thereon the word ‘patent’ or the abbreviation ‘pat.,’ together with the number of the patent.” The Marking Statute further provides that “[i]n the event of failure so to mark, no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice.” Id. It is the patentee’s burden to plead and prove compliance with the Marking Statute. See Arctic Cat Inc. v. Bombardier Rec. Prods., 876 F.3d 1350, 1366 (Fed. Cir. 2017).
In Express Mobile, accused infringer Liquid Web, LLC moved to dismiss the plaintiff’s claims to the extent they sought damages for alleged patent infringement occurring before the filing of original and amended complaints because the plaintiff failed to plead compliance with the Marking Statute in both pleadings. C.A. No. 18-01177 (D. Del.), D.I. 14 at p. 7. Non-practicing entity (NPE) Express Mobile opposed the motion, arguing that compliance with the Marking Statute is a question of fact not suitable for adjudication on a motion to dismiss and that it was not required to mark because it “does not practice its patents” and “does not currently sell products that practice its patents.” Id., D.I. 16 at pp. 5-6. The Court rejected these arguments, stating:
Plaintiff avers that there is no evidence that there was anything for it to mark, but does not argue that it pled compliance . . . [a]t the motion to dismiss stage, [the court is] only concerned with the sufficiency of the claims. A claim for past damages requires pleading compliance with the marking statute—even when compliance is achieved, factually, by doing nothing at all. Thus, as Plaintiff has failed to state a claim for past damages, I will grant Defendants’ motions.
Express Mobile, Inc., 2019 U.S. Dist. LEXIS 64362, at *4-*5. The decision serves as a reminder to patent owners seeking damages for past infringement to plead compliance with the Marking Statute even if they do not currently sell a patented product to mark. Likewise, those accused of infringement—whether by NPEs or others—should consider moving to dismiss claims for past damages where compliance with the Marking Statute is not pled in a pleading filed against them.