DDE Holds That Pleading Compliance with the Marking Statute is Not Required

The District of Delaware in Mobile Telecommunications Tech., LLC v. Ruckus Wireless, Inc., Case No. 16-md-02722-LPS-CJB (Judge Stark), addressed a motion to dismiss under Rule 12(b)(6). Defendants moved to dismiss on the ground that plaintiff's complaint failed to plead compliance with the marking statute, 35 U.S.C. Section 287. More specifically, the defendant argued that plaintiff's complaint should be dismissed with respect to one of the patents because it failed to plead compliance with Section 287 and the patent had expired before the complaint was filed.

Judge Stark denied the motion. The court noted plaintiff's argument that it was not required to plead compliance with the statute because neither the plaintiff nor its predecessors had practiced the patent. The court quoted colloquy from the hearing in which plaintiff's counsel indicated that nobody had ever practiced the patent. The court concluded (plaintiff is "MTel" and defendant is "Ruckus"):

The Court agrees with MTel that it was not required to plead compliance with § 287. Sentry, and the other cases cited by Ruckus, address circumstances in which parties to whom the marking statute applies were required to plead compliance with  287. See, e.g., Sentry [Prot. Prod., Inc. v. Eagle Mfg. Co.], 400 F.3d at 918 [Fed. Cir. 2005]. Such is not the case here. Ruckus’s contentions with respect to marking amount to mere speculation that some predecessor-in-interest or licensee may have. practiced the ‘210 patent. MTel was not required to plead compliance with the marking statute under Wine Railway because there is no evidence that any predecessor-in-interest or licensee has ever practiced the patent.

Rule 12 requires the Court to view the complaint in the light most favorable to MTel at this stage.[FOOTNOTE 7] Facts may arise during discovery that may require MTel to seek leave to amend its complaint, but it is not required to do so now based on speculation as to what may be revealed later.

[FOOTNOTE 7] Were there a duty to plead marking in this case, dismissal would still not be appropriate. MTel contingently sought leave to amend its complaint to plead compliance with § 287 if the Court were inclined to side with Ruckus (Tr. at 35), which Ruckus agreed "would be fair” (id. at 11).