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Magistrate Judge Reaffirms Duty to Mark Licensed Product


Last December, Magistrate Judge Mary Pat Thynge issued a decision on a patentee’s continuing obligation to mark its licensed product. On a motion for reconsideration, the magistrate judge today issued a follow-up opinion reaffirming that duty:

“Inline [the patentee] made no attempt to mark, in that it never required its licensee . . . to mark tangible articles of the system. It is the burden of the patentee to show that either actual or constructive notice occurred and that it complied with the statutory requirements.”

The Court also rejected Inline’s assertions that the Court mistakenly concluded that the duty to mark runs to system, as opposed to only method, claims:

“Inline does not cite any affirmative case law which suggests that a patentee may avail itself of the benefits provided by [Section] 287(a), yet does not have a duty to mark merely because its patent contains a system, and not a ‘method.’ “

Beyond the marking considerations, this case is another example of the high bar set in this district for motions for reconsideration.

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