The Death of False Marking

Good post by Paul Morgan on PatentlyO concerning the death of false marking litigation and ongoing importance of patent marking.

False Patent Marking - You Can't Fudge It

Courts in several recent cases have held that one cannot avoid a charge of false patent marking by fudging the marking. Back in April, when I posted about false marking concerns arising out of the rule in the Forest Group case that the qui tam damage award of up to $500 applies to each item improperly marked, some practitioners suggested that one might be able to avoid the problem by fudging the marking. Suggested markings included examples such as “this product may be covered by the following patent” and “this product is the subject one or more of the following patents.”

The court rejected the “may be covered” marking in Pequignot v. Solo Cup Co., 540 F. Supp. 2d 649, 654-55 (E. D. Va.2008). In a case decided in the Eastern District of Pennsylvania just last month, Hollander v. Etymotic Research, another court held that a marking that stated “ [X products] are covered by one or more of the following U.S. patents: [list]” would be false if any of the listed patents had expired.” The defendant argued unsuccessfully that if any of the listed patents had not expired, the statement would be literally true and therefore there should be no possible liability for false marking. Another court reached the same conclusion in Brinkmeier v. Graco Children's Products Inc., 684 F. Supp. 2d 548 (D. Del. 2010).

False marking requires both falsity and intent to deceive. The take away here is that it may be difficult cannot win on the falsity prong if one marks his product with any expired patent, regardless of the possible literal truth of the marking statement as a whole.

 

More on False Patent Marking

Here is a link to an informative article written by some colleagues at Fox Rothschild concerning recent developments in false marking jurisprudence.  False marking issues were the subject of April 4, 2010 and June 16, 2010 posts on this blog.

IP Counsel Must Communicate With Marketing and Manufacturing Personnel - Redux

Following up on my April 4, 2010 post concerning false patent marking, the Federal Circuit ruled last week in the Pequignot v. Solo Cup case.  Here is my take away.

1. Marking a product with an expired patent number is false marking.  Solo Cup argued that because the public could look up the patent, marking with an expired number was not misleading.  The Court explained that it is not so simple to determine when a patent expires and so it could be misleading.

2. Marking a product with a legend that says something like "this product may be protected by one or more patents" is not false marking, but neither is it adequate marking under 35 U.S.C. 287, so that does not seem like a very effective strategy.

3. To be actionable, false marking must be intentional. The marking must be for the purpose of deceiving the public.

4. Proof that a marking is false and that the marker knew of its falsity, creates a rebuttable presumption of intent to deceive.

5. The accused can rebut the presumption by proving, by a preponderance of the evidence, that he did not consciously desire that the public be deceived.  One way to do that would be to prove that the accused relied on reasonable advice of counsel. Merely asserting that one had no such intent will not be sufficient. 

On a related note, on remand the district court in the Forest Group case awarded damages in the amount of the highest price for which the 38 falsely marked stilts at issue in that case sold ($180, prices ranged from $103-$180).  The total award was only $6,840, but if courts are going to award what amounts to gross revenues on products sold for $500 or less, penalties for false marking could be severe.