My co-blogger Nate wrote yesterday about Magistrate Judge Hall's discussion of prior art estoppel in Innovative Memory Systems Inc. v. Micron Technology Inc., No. 14-1480-RGA (D. Del. Sept. 29, 2022). That was actually just one issue the Court dealt with in a lengthy R&R and Order on a summary judgment and Daubert. I wanted to post about one of the other issues Judge Hall addressed in that opinion: patent marking.
Marking is an important and sometimes underrated issue. It's not uncommon, in patent cases, for the bulk of the damages to have accrued in the years prior to the plaintiff filing suit. These "pre-suit" damages can be at risk, though, if the patentee sold products that practice the patent and failed to mark them under 35 U.S.C. § 287(a). Here is how Judge Hall explained it in Innovative Memory:
[W]hen a plaintiff makes or sells a product practicing its patent, the plaintiff can only recover pre-suit damages from an infringer if (1) the patentee marked its product in the manner specified in § 287(a) or (2) the patentee notified the infringer of its infringement. Even if a plaintiff patentee doesn’t make or sell anything, it cannot recover pre-suit damages (absent providing notice) if a prior owner of the patent failed to mark its products covered by the patent.
One interesting thing about marking, ...