Failure to mark results in dismissal; laches evidence to be presented to jury
Thynge, M.J. Plaintiffs’ motion to dismiss counterclaim based on failure to mark is granted. Plaintiffs’ motion to dismiss counterclaims based on laches is denied. Evidence of laches is relevant to willfulness and can be presented to the jury. A portion of the trial may be allocated to make a record for the Court on laches if there is additional evidence to be presented on laches.
The patents-in-suit relate to the art of manufacturing beverage cans. Plaintiff asserts that no damages exist because actual notice occurred one month after the patent expired. No constructive notice was provided because there was no marking of the machines and tools used. The patent includes both apparatus and method claims. The duty to mark is not relieved by asserting only the method claims. Plaintiffs’ motion to dismiss the laches counterclaim is denied because there are disputed issues of material fact as to whether defendant knew or should have known of plaintiff’s alleged infringement. Evidence of the equitable defense of laches may also relate to willfulness and will be considered by the jury. To the extent laches evidence does not relate to willfulness a record may be made for the Court.
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