NY Patent Decisions Blog

“Mark it Zero”: Judge Cote Dismisses Claims to Pre-Suit Damages For Failure to Satisfy Patent Marking Requirements

On August 26, 2022, United States District Court Judge Denise Cote (S.D.N.Y.) granted a motion to dismiss Blackbird Tech LLC (“Blackbird”)’s claim against Argento SC By Sicura, Inc. (“Argento”) to the extent Blackbird sought damages for infringement that occurred before the action was filed.


Blackbird, the owner of U.S. Design Patent No. D720,933 (“’933 Patent”), brought suit against Argento in December 2021.  The ’933 Patent claims an ornamental design for a two-sided face washing brush.  In its original pleading, Blackbird made no mention of its compliance (or non-compliance, for that matter) with the marking statute, 35 U.S.C. § 287.  When challenged by Argento with a motion to dismiss the complaint to the extent Blackbird sought pre-suit damages, Blackbird filed an amended complaint, adding but a single sentence:  “[a]ll marking requirements under 35 U.S.C. § 287 have been complied with.”  Unsatisfied, Argento renewed its motion to dismiss.

Patent Marking Statute

Under the Patent Act, “patentees and persons making, selling, or importing patented articles may give notice that the article is patented by marking the article or its packaging with either the patent number or an online address referencing the patent number.”  Blackbird Tech LLC v. Argento SC By Sicura, Inc., No. 21-cv-11018 (DLC), 2022 WL 3701084, at *1 (S.D.N.Y. Aug. 26, 2022) (citing 35 U.S.C. § 287(a)).  If a patentee fails to comply with the marking requirements set forth above, she may not recover damages incurred before the date that a defendant received actual notice of infringement, and [f]iling an action for infringement shall constitute such notice[,]” 35 U.S.C. § 287(a).

In this case, Blackbird’s one-sentence addition to its complaint failed to pass muster under the Patent Act.  According to the Court, Blackbird made but a conclusory representation and, moreover, did not allege any other facts suggesting that defendant Argento had “actual notice of the purported infringement before [the] action was filed.”  Blackbird, 2022 WL 3701084, at *2.  Additionally, the Court was not persuaded by Blackbird’s argument that it need not specifically outline its compliance with Section’s 287 marking requirement because Argento in fact bore the initial “burden of production” on this issue.  Id. at *3.  Such a burden did not supplant Blackbird’s “burden of pleading” compliance with the statute.  Id.

After dismissing Blackbird’s claim to damages for any infringement occurring before the action was filed, the Court went on to deny Blackbird’s motion to amend.  Declining to give the plaintiff yet another bite at the apple, Judge Cote found that Blackbird had already been afforded one opportunity to amend its complaint and “rather than alleging sufficient facts to plausibly suggest compliance” Blackbird added but “a conclusory assertion of compliance.”  Id.  In short, Blackbird’s attempts to make out a claim for pre-suit damages had just missed the mark.

The case is Blackbird Tech LLC v. Argento SC By Sicura, Inc., No. 21-cv-11018 (DLC) (S.D.N.Y.).