SDTX grants MSJ rejecting affirmative defense of no patent marking


On May 14, 2012, Judge Hoyt of the Southern District of Texas granted summary judgment rejecting an affirmative defense of failure to mark a patent (Target Training International, Ltd. v. Extended Disc North America, Inc., Case 4:10-cv-03350). The patent-in-suit included method claims and system claims that implement the methods.

The court observed that while actual or constructive notice of infringement is required for damages to begin to accrue, Tesco Corp. v. Weatherford Int'l Inc., 722 F. Supp. 2d 755, 769 (S.D. Tex 2010), a failure to mark does not bar an infringement claim, but rather, limits the recoverable damages. 35 U.S.C. 287(a). Therefore, damages may still be recovered.

The court went on to note that there was evidence that the plaintiff had provided actual notice to the defendant and that the system patent was marked at certain times. Importantly, Judge Hoyt noted that where a claim is directed to both a product and a method, the patentee must mark the product. But if the plaintiff merely licenses the system, then it must only provide a marking on the system.