False Marking: An In-House Attorney’s Perspective


I recently had an opportunity to discuss False Marking with Brandon Baum, partner and IP litigator at Mayer Brown LLP, (see “False Marking: A Patent Litigator’s Perspective“)  and Robert Faber, partner and patent prosecutor at Ostrolenk Faber LLP (see “False Marking: A Patent Prosecutor’s Perspective“).   It was interesting to see the varying opinion’s on the issue.  Today, you’ll have a chance to learn what Valerie Calloway‘s, in-house counsel at Polymer Group, Inc. and Patent Center Contributor, insight is on the issue of false marking.

When I caught up with Calloway, I asked her the same questions that I posed to both Baum and Faber.  Here is what she had to say…..

Me: Do you think we’ll see companies begin to stop falsely marketing products in response to the suits?

VC: I believe companies will pay closer attention to this issue.

Me:  Do you believe false marking necessarily causes injury?

VC:  In some cases yes and in some cases no. It depends on the situation.

Me:  Some experts believe the suits are a temporary wave that will fade once corporations stop engaging in false patent marking, do you agree?

VC:  Yes. It will be a lot tougher to bring false marking lawsuits, if companies discontinue falsely marking products.

Me:  There are those that believe false marking deterred competitors from launching their own products and misled consumers into thinking a falsely marked item is more innovative, do you agree?

VC:  It’s possible; however, I wonder just how many typical consumers actually read the patent and trademark markings on any given product. Also, more IP-sophisticated companies would probably reasonably investigate the list of patents on a competitors’ product (and not just be deterred by the fact there is a list) prior to deciding whether to launch a competitive product.

Me:  According to the Docket Navigator service, 84% of the false marking suits that have been filed since the Forest case, are based on allegations related to expired patent numbers.  Given that the false marking statute has an intent element, is an expired patent number good evidence that a patent holder wanted to deceive the public?

VC:  Not necessarily. Sometimes expired patent numbers are left on products just because someone forgot to remove them! There may not have been any intent to deceive the public.

Me:  Even false marking defendants with a solid argument that they operated in good faith, still could wind up facing hefty legal bills.  Do you think the prospect of those bills will result in quick settlements that favor the false marking plaintiffs?

VC:  It’s possible, however, quick settlements may attract more false marking plaintiffs to file lawsuits against the “quick settling” company.

Me:  How could a corporation minimize the risk of being hit with a false-marking lawsuit?

VC:  Insure proper systems are in place to remove expired patents from products and to insure products are actually covered by the patents listed on the product.

Me:  What do you think about the proposed legislation pending in both the Senate and the House that will potentially protect manufacturers from false marking claims by requiring plaintiffs to show competitive injury, and by instituting compensatory, rather than statutory damages?

VC:  This is an interesting congressional reaction to the court’s ruling. This reaction clearly indicates that Congress and/or its constituents are concerned that the courts may have gone too far on this issue.

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