United States District Court, D. New Hampshire
LANDYA McCAFFERTY, District Judge.
East Coast Sheet M Fabricating Corp. ("EastCoast") has asserted six claims against Autodesk, Inc. ("Autodesk"), including one in which it claims that Autodesk is liable for infringing three of its patents. Before the Court is Autodesk's motion for partial summary judgment in which it seeks judgment as a matter of law that if EastCoast prevails on its infringement claims, its damages are limited to those it may have suffered after it filed its complaint. According to Autodesk, EastCoast has not pled, and cannot prove at trial, that it provided either the constructive or actual notice of its patent rights. Such notice, in turn, is a necessary prerequisite for an award of pre-complaint damages. EastCoast objects. For the reasons that follow, Autodesk's motion for partial summary judgment is denied.
The Legal Standard
"Summary judgment is appropriate when there is no genuine issue of material fact and the moving party is entitled to judgment as a matter of law." Ponte v. Steelcase Inc. , 741 F.3d 310, 319 (1st Cir. 2014) (quoting Cortes-Rivera v. Dept. of Corr. , 626 F.3d 21, 26 (1st Cir. 2010)); see also Fed.R.Civ.P. 56(a). When ruling on a summary-judgment motion, the court must "view the entire record in the light most hospitable to the party opposing summary judgment, indulging all reasonable inferences in that party's favor.'" Winslow v. Aroostook Cnty. , 736 F.3d 23, 29 (1st Cir. 2013) (quoting Suarez v. Pueblo Int'l, Inc. , 229 F.3d 49, 53 (1st Cir. 2000)).
"The nonmovant may defeat a summary judgment motion by demonstrating, through submissions of evidentiary quality, that a trialworthy issue persists." Sánchez-Rodríguez v. AT&T Mobility P.R., Inc. , 673 F.3d 1, 9 (1st Cir. 2012) (quoting Iverson v. City of Boston , 452 F.3d 94, 98 (1st Cir. 2006)). Thus, "[c]onclusory allegations, improbable inferences, and unsupported speculation, are insufficient to establish a genuine dispute of fact." Travers v. Flight Servs. & Sys., Inc. , 737 F.3d 144, 146 (1st Cir. 2013) (quoting Triangle Trading Co. v. Robroy Indus., Inc. , 200 F.3d 1, 2 (1st Cir. 1999)). "Rather, the party seeking to avoid summary judgment must be able to point to specific, competent evidence to support his [or her] claim." Sánchez-Rodríguez , 673 F.3d at 9 (quoting Soto-Ocasio v. Fed. Ex. Corp. , 150 F.3d 14, 18 (1st Cir. 1998)) (internal quotation marks omitted).
The issue before the court is the sufficiency of the notice of its patent rights that EastCoast provided to potential infringers before it filed its infringement claims against Autodesk. Regarding this issue, the Patent Act provides, in pertinent part:
Patentees, and persons making, offering for sale, or selling within the United States any patented article... may give notice to the public that the same is patented, either by fixing thereon the word "patent" or the abbreviation "pat.", together with the number of the patent, or by fixing thereon the word "patent" or the abbreviation "pat." together with an address of a posting on the Internet, accessible to the public without charge for accessing the address, that associates the patented article with the number of the patent, or when, from the character of the article, this can not be done, by fixing to it, or to the package wherein one or more of them is contained, a label containing a like notice. In the event of failure so to mark, no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice. Filing of an action for infringement shall constitute such notice.
35 U.S.C. § 287(a). Notice by marking is typically referred to as constructive notice, see Monsanto Co. v. Bowman , 657 F.3d 1341, 1348 (Fed. Cir. 2011) (citations omitted), while notifying an alleged infringer directly is referred to as actual notice, see id.
All appear to agree that the issue before the court is constructive notice. According to Autodesk, EastCoast waived its right to pre-complaint damages because it failed to adequately plead marking in its amended complaint. The court does not agree.
The patentee has "the burden of pleading and proving at trial that she complied with the statutory [marking] requirements." Maxwell v. J. Baker, Inc. , 86 F.3d 1098, 1111 (Fed. Cir. 1996) (citing Motorola, Inc. v. United States , 729 F.2d 765, 770 (Fed. Cir. 1984); Dunlap v. Schofield , 152 U.S. 244, 248 (1894)). In a case that interprets Maxwell, the Federal Circuit explained:
That case [i.e., Maxwell], however, only makes the bare statement that the plaintiff "had the burden of pleading and proving at trial that she complied with the statutory requirements." [86 F.3d at 1111.] The Maxwell court ultimately found that the plaintiff not only pleaded but proved such compliance. More relevant to the present case is the Supreme Court's statement, in reference to both actual notice and marking, that "the duty of alleging and the burden of proving either of these facts is upon the plaintiff." Dunlap v. Schofield , 152 U.S. 244, 248 (1894). Under the rule announced in Dunlap, Sentry's pleading that the "infringements have been willful and with full knowledge of the '611, and '781 patents" was sufficient. See id. at 249 (requiring a pleading equivalent to "with a knowledge of the patent and of his infringement [ ]" and "holding the patentee to allege... notice to the public or to the defendant, from which such knowledge must necessarily be inferred" (internal quotation marks omitted)). Accordingly, Sentry did not waive its marking argument by failing to plead notice.
Sentry Prot. Prods., Inc. v. Eagle Mfg. Co. , 400 F.3d 910, 918 (Fed. Cir. 2005) (parallel citations omitted). Here, EastCoast's second amended complaint includes the following allegations:
Despite its knowledge of EastCoast's patents, coupled with its knowledge that its own products were covered by those patents, Autodesk has continued to produce infringing products in disregard [of] EastCoast['s] patent rights, and ...