SDNY grants SJ of no pre-notice damages where plaintiff failed to plead marking

On December 31, 2013, Judge Rakoff of the Southern District of New York issued a summary judgment opinion in Cognex Corp. v. Microscan Systems, Inc., 13 Civ. 2027 (JSR) (Doc. No. 142), in which the court ruled on an issue concerning failure to plead patent marking. According to the court, the plaintiffs' complaint plead the date of actual notice but failed to plead compliance with the marking statue. The defendants moved for summary judgment that plaintiffs could not recover damages prior to actual notice.

The court held, when a party seeks damages based on constructive notice (i.e., marking), compliance with the marking statute must be alleged in the complaint. The court cited the following authority for this proposition:

Slip op. at 14-15.  

The court observed that the plaintiffs in the case at bar "clearly did not plead compliance with the marking statute, instead including in their Amended Complaint only the date on which they provided defendants with actual notice." Slip op. at 15. Thus, the only remaining question, according to the court, was whether the plaintiffs should be granted leave to amend. The court refused to grant leave to amend, in part because discovery had already closed and defendants would be "prejudiced by plaintiffs' failure to raise this theory of relief until after discovery." Slip op. at 16. The court granted summary judgment preventing collection of damages from prior to the date of actual notice.