Patent Law Practice Center

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. (more…)

False Marking: A Patent Prosecutor’s Perspective

In a recent post titled, “False Marking: A Patent Litigator’s Perspective“, Brandon Baum, partner and IP litigator at Mayer Brown LLP, and I discussed the infamous issue of false marking and how he believes the proliferation of false marking suits are “a blip due to prior lax enforcement by patent departments, and will disappear quickly”.  Today, you’ll have a chance to read what Robert Faber, partner and patent prosecutor at Ostrolenk Faber LLP, has to say on the issue of false marking.

Without further ado, Robert Faber on False Marking….

Section 292 of the United States Patent Act (35 U.S.C. § 292) imposes a criminal penalty fine of up to $500 per false marking for falsely marking or advertising that a product is covered by an unexpired United States patent or an application for a patent, and the statute provides that whoever sues the false marking party for the penalty on behalf of the United States receives one half the penalty collected.

One reason for heightened interest in the statute is the recent Federal Circuit Court Opinion in Forest Group, Inc. V. Bon Tool Co., 590 F.3d 1295 (Fed Cir. 2009) that the penalty shall be computed based on every individual falsely marked article sold, not on a group of such articles sold in a single transaction. The penalty shall not be more than $500 for the offense of selling each copy, giving a judge discretion as to the per unit amount of the penalty and therefore the amount to be shared by the plaintiff.

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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.” (more…)