Magistrate Judge Thynge recently recommended the denial of the defendants’ motion for summary judgment based on failure to mark and laches. Magnetar Technologies Corp. v. Six Flags Theme Parks Inc., Civ. No. 07-127-LPS-MPT (D. Del. Feb. 7, 2014). The plaintiffs were the assignee and its field-limited exclusive licensee of U.S. Patent No. 5,277,125. With respect to marking, the defendants argued that the original patent owner did not comply with the marking statute, 35 U.S.C § 287(a), because it failed to mark a baggage claim system (the “IABHS”) it sold to the Denver International Airport in the early 1990s, and then never corrected that alleged failure during periodic servicing and provisioning of parts for the IABHS over the years. As a result, the defendants argued that the plaintiffs could not recover any damages relating to infringement before 2007 when the defendants received actual notice of the patent-at-issue and the plaintiffs’ infringement claims. The plaintiffs disagreed, and argued that the original patent owner sold and installed the IABHS before the issuance of the patent-at-issue, such that marking was not required under § 287(a), and further that the marking statute imposed no requirement to mark the IABHS after the issuance of the patent during the course of servicing and the provision of parts.
Magistrate Judge Thynge agreed with the plaintiffs that if the IABHS was sold and installed before the issuance of the ‘125 patent, marking was not required at that time or at any subsequent time during the course of servicing. However, Judge Thynge found that the record was not clear with respect to whether the IABHS was sold and installed prior to or subsequent to the issuance of the patent. Id. at 6. As a result, if a jury were to find that “the [IABHS] was made or sold subsequent to the issuance of the patent, damages may be limited accordingly” under § 287(a). Id. at 13.
Judge Thynge also recommended denial of the defendants’ laches motion, finding genuine issues of material fact existed regarding whether the original patent owner or the plaintiffs had constructive knowledge of the allegedly infringing roller coasters (especially given that neither plaintiff worked in the same field as the defendants), and whether the roller coasters’ infringing components were “open and notorious to the public.” Id. at 21-22. Based on this and other considerations, Judge Thynge found that in this case “laches is best considered based upon a fully developed record.” Id. at 26.