NDCA clarifies that Marking turns on what claims are asserted, not what survives to trial

An interesting fact pattern required Judge Ware in NDCA to decide between two well-established canons relating to past damages where there was no marking. The Plaintiff had asserted both apparatus and method claims, but the apparatus claims were disposed of on summary judgment. The Defendant argued that there should be no pre-notice damages for any of the claims, either apparatus or method. The Plaintiff argued that since only method claims survived, the holdings of Bandag and Hanson allowed for the Plaintiff to recover six years' worth of damages. The Defendant relied on American Medical Systems, arguing that since Plaintiff had asserted its apparatus claims (even if later held invalid), no pre-notice damages were available for either the apparatus or method claims. The Court sided with the Defendant, finding critical the "asserted" phraseology from American Medical Systems.