Solo Cup Decision: False Marking Requires Proof Of Intent to Deceive



I recently read that more than 100 plaintiffs have filed false marking suits in 2010, on the heels of the Forest Group Inc. v. Bon Tool Co. decision.  In that case, the Federal Circuit interpreted the language in the false marking statute to mean that penalties for false marking must be calculated on the basis of each article marked with an incorrect patent number for the purpose of deceiving the public, rather than on the basis of each decision to mark any number of articles.  In a nutshell, the decision had the potential of a penalty increase from $500 per offense to $500 per article marked.

While the Forest Group case left unresolved issues regarding false marking, the Federal Circuit did answer some of the open questions in last weeks Pequignot v. Solo Cup Co. decision,  No. 2009-1547, slip op. (Fed. Cir. June 10, 2010) .

Jeanne M. Gills (Contributor on the Practice Center) and George C. Best, both partners with Foley & Lardner, LLP, published an article in their firm’s newsletter analyzing the Solo Cup decision.  In the article called “False Marking Liability Requires Proof Of An Intent To Deceive Public” Gills and Best write “While this decision provides additional guidance for companies on how to avoid false marking liability, including what evidence may be sufficient to rebut the presumption of an intent to deceive, it does leave open questions to be resolved by future decisions or legislative action.”

Check out Foley & Lardner’s article here.

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One Response to “Solo Cup Decision: False Marking Requires Proof Of Intent to Deceive”

  1. BBaum says:

    Pequignot seems unique on its facts because the accused false marker, Solo Cup, had solid documentary evidence of its good faith rationale for maintaining the marking beyond the patent’s expiration date. My expectation is that in many cases, particularly in cases in which the patent has expired, the accused false marker will have no such documentary evidence one way or the other. In that case, the plaintiff can be expected to assert that Pequignot sets the evidentiary “bar,” and that “mere testimony” of no recollection or no intent to deceive is insufficient to defeat the Clontech presumption.

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