Grand Overseas, Inc. v. Dollar General Corp., No. 2:11-cv-00468-JRG, slip op. (E.D. Tex. Aug. 22, 2013).
The Grand Overseas court rejected a motion based on § 287(a), holding that Plaintiff’s delay in marking and use of adhesive labels were not fatal to its damages claims.
Defendant’s moved for summary judgment of no recoverable damages based on Plaintiff’s failure to comply with 35 U.S.C. § 287(a). Id. at 1. The district court denied the motion, reasoning that:
- Plaintiff’s 18-month delay in marking its products after the patent-in-suit issued did not preclude damages. Federal Circuit and the Fifth Circuit cases hold that Section 287(a) does not require marking within a particular period of time after issuance. Id. at 3.
- Marking with an adhesive label that could be removed was deemed sufficient to meet the notice requirements of § 287(a). Id. at 4-5.
- Defendant’s re-sale of accused products acquired from a supplier prior to Defendant’s notice (actual or constructive) was not “immune” from liability. Defendant’s re-sales constituted acts of direct infringement, and the doctrine of patent exhaustion did not apply. Id. at 5-6.