NDTX finds that Marking turns on what claims at issue in trial, not earlier asserted

Two months ago, this blog did a write-up on the Mformation case , which held that pre-suit damages could be waived for failure to mark if apparatus claims were asserted in conjunction with method claims, even if those apparatus claims later were dropped or thrown out. Now, just two months later, faced with nearly identical facts, Judge Furgeson in the Northern District of Texas reached the opposite conclusion.

In General Electric v Mitsubishi Heavy Industries, the Court's opinion cites to the same two seminal cases cited in Mformation, Am. Med. Sys. and Crown Packaging. The Court felt that the present case's facts were more in line with Crown Packaging. The Plaintiff originally asserted both apparatus and method claims, but dropped its apparatus claims relatively early in the case. The Plaintiff argued that it originally asserted several claims in compliance with the NDTX Local Patent Rules, and should not be punished because it voluntarily removed claims and streamlined the litigation later in the case. The District Court agreed, declining "to limit the scope of GE's recoverable damages to the period of time after GE filed suit solely because GE once asserted claims over unmarked products."

Since neither Mformation or General Electric are Federal Circuit cases, one can only assume that Plaintiffs will cite General Electric while Defendants will cite Mformation until the Federal Circuit is presented - and hopefully settles - this issue.

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.