By Memorandum Order entered by The Honorable Richard G. Andrews in Express Mobile, Inc. v. Liquid Web, LLC, Civil Action No. 18-1177-RGA (D.Del. April 18, 2019), the Court granted Defendants’ motions to dismiss as to past damages and denied their motions as to direct infringement.

With respect to past damages, Defendants argued that Plaintiff failed to plead compliance with the marking statute and that was a basis to dismiss Plaintiff’s claims to the extent that they sought past damages. Id. at *3. Importantly, a patentee who makes or sells a patented article must mark the articles to recover past damages pursuant to 35 U.S.C. §287(a). Id. The burden is on the patentee to plead compliance with §287(a). Id.

In this action, Plaintiff alleged that Defendants infringed U.S. Patent Nos. 6,546,397, 7,594,168, 9,471,287 and 9,928,044 through their use of certain website building tools. In response to Defendants’ motion dismiss as to past damages, Plaintiff alleged that there was no evidence that there was anything for it to mark, but did not argue that it pled compliance with the marking statute, §287(a). Id. at *3-4.

In considering the motions to dismiss, the Court noted that, at the motion to dismiss stage, it is only concerned with the sufficiency of the claims. Id. at *4. It explained that “[a] claim for past damages requires pleading compliance with the marking statute – even when compliance is achieved, factually, by doing nothing at all.” Id. Given that Plaintiff did not plead compliance with the marking statute, it failed to state a claim for past damages. Id.

A copy of the Memorandum Order is attached.