Blackbird Tech LLC v. Argento SC By Sicura, Inc.

Background

Blackbird Tech LLC, doing business as Blackbird Technologies, sued Argento SC By Sicura, Inc. for allegedly infringing U.S. Design Patent No. D720,933. The patent, issued on January 13, 2015, covers the ornamental design of a two-sided face-washing brush. Blackbird alleged that Argento’s Dabney Lee Dual-Action Face Brush infringed the patent.

Blackbird filed the action on December 22, 2021. Argento moved to dismiss Blackbird’s request for damages for infringement occurring before the action was filed, arguing that Blackbird had not alleged compliance with the patent-marking requirements in 35 U.S.C. § 287(a). After that motion was filed, Blackbird amended its complaint by adding one sentence stating that all marking requirements had been complied with. Argento renewed its motion. The action was later transferred to this Court.

Legal Standard and Analysis

The court applied the standard for a motion to dismiss for failure to state a claim. Under that standard, a complaint must allege enough facts to make the requested relief plausible, and the court generally accepts factual allegations as true but need not accept conclusory statements or legal conclusions presented as facts.

Section 287(a) allows a patent owner to give notice that an article is patented by marking the article or its packaging with the patent number or an online address referring to the patent number. If the patent owner does not satisfy the marking requirements, it generally cannot recover damages for infringement occurring before the defendant received actual notice. The opinion identified three circumstances allowing recovery of pre-filing damages: no patented articles were manufactured; manufactured articles were adequately marked; or the defendant received actual notice before the action was filed. The patent owner bears the burden of pleading and proving compliance.

Judge Cote concluded that Blackbird’s amended complaint did not adequately plead compliance. Its single-sentence assertion did not explain whether compliance resulted from the patent never being practiced, patented articles being marked when sold, or Argento receiving notice before the lawsuit. The court also rejected Blackbird’s argument that the marking issue being a factual question excused the need for supporting allegations. It further held that an alleged infringer’s evidentiary burden on a later motion for summary judgment did not eliminate Blackbird’s pleading burden.

Leave to Amend

Blackbird asked for another opportunity to amend if the motion was granted. The court denied that request. Blackbird had already amended its complaint after receiving notice of the marking-related defect, yet added only a conclusory statement. Blackbird also did not explain what additional facts it could allege to correct the problem.

Disposition

The defendant’s May 9, 2022 partial motion to dismiss was granted. Blackbird’s claims were dismissed to the extent they requested damages for infringement of the ’933 Patent occurring before the action was filed. The defendant’s April 1 partial motion to dismiss was terminated as moot. The opinion does not state that the entire patent-infringement action was dismissed.