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November 7, 1995


The opinion of the court was delivered by: RADER


 Brooklyn, New York

 Dated: November 7, 1995

 RADER, Circuit Judge (Sitting by designation)

 In this patent case, Loral Fairchild Corporation ("Loral") alleges infringement by defendants of certain claims of U.S. Patent 3,896,485. The '485 patent discloses structural features of and various uses of charge coupled devices ("CCDs"). Defendants deny liability and assert numerous defenses including invalidity, non-infringement, and lack of ownership. Defendants also assert that Loral did not comply with the marking requirements of the Patent Act. This court has scheduled this case for trial before a jury beginning on January 8, 1996.

 This motion concerns the marking requirement. Defendants seek partial summary judgment to preclude Loral from recovering any pre-suit damages on the '485 patent due to Loral's alleged failure to mark its products. Because Loral did not show genuine disputes of material fact, this court grants the motion.


 On July 22, 1975, the United States Patent and Trademark Office issued the '485 patent to James M. Early. Early, in turn, assigned the patent to Fairchild Camera and Instrument Corporation. Loral alleges ownership of the '485 patent from Fairchild.

 Fairchild did not manufacture products under the patent, but licensed the patent to numerous companies, including Matsushita Electric Industrial Company, Ltd. ("Matsushita"), Toshiba Corp. ("Toshiba"), and Nippon Electric Company, Ltd., d/b/a NEC Corporation ("NEC"). The parties do not dispute that these license agreements contained no provision requiring marking. Furthermore, Loral does not contend that any product sold under the licenses was ever marked with the '485 patent number.

 In 1991, Loral filed a complaint, which forms part of this suit, alleging infringement of the '485 patent by numerous companies including Matsushita. Paragraph 68 of that complaint reads:

68. Defendant MECA, a wholly owned subsidiary of Defendant Matsushita-Japan, is infringing Loral Fairchild's '485 patent by the unauthorized use or sale of CCD devices within the United States that incorporate structure and/or methods claimed by the Loral Fairchild '485 patent. Defendant Matsushita-Japan is infringing and/or actively inducing infringement by MECA and others by manufacturing such devices incorporating structure and/or methods claimed by the Loral Fairchild '485 patent which are exported to the United States.

 Docket Item ("D.I.") 1 (Civil Action 91-5056-ARR). Loral admits that this complaint is its first allegation of infringement of the '485 patent against the defendants in this case.

 During discovery, Loral more particularly identified CCDs accused of infringement. In response to an interrogatory from Sony. Loral specifically identified the particular CCDs alleged to infringe the '485 patent. D.I. 370, Tab 2. Attachment F. In this listing, Loral, for example, includes the NEC 3551 CCD as an allegedly infringing product under the '485 patent. Moreover, the statement of undisputed facts filed with this motion shows that Loral's analysis of the NEC 3551 CCD revealed that the product corresponded directly or by equivalents to the technology protected by the '485 patent.

 Matsushita separately sought a declaratory judgment to avoid liability for infringement of the '485 patent. Because Matsushita had a license for the term of the '485 patent, the United States District Court for the Southern District of New York granted Matsushita's motion for summary judgment. The United States Court of Appeals for the Federal Circuit affirmed the district court's decision. Matsushita Electronics Corp. v. Loral Corp., 36 F.3d 1115 (Fed. Cir. 1994) (Table).

 Defendants contend CCDs identified by Loral as infringing the '485 patent were sold in the United States without marking during the terms of license agreements under the '485 patent. They cite to an unopposed declaration of Mitsunori Shima, an employee of Matsushita, dated October 8, 1995. In that affidavit, Mr. Shima states that all the allegedly infringing Matsushita CCDs listed by Loral were sold in the United States before September 12, 1991. He further avers that none of those CCDs bore the patent mark of U.S. Patent 3,896,485. Defendants further argue that Toshiba and NEC sold unmarked, accused CCDs during the terms of their license agreements.

 Loral does not contradict these facts. Rather it argues that resolution of this motion must await a final ...

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