Patent Law Practice Center

False Marking: A Patent Litigator’s Perspective

 

I recently read that on the heels of the Forest Group Inc. v. Bon Tool Co.,  decision more  than 100 plaintiffs have filed false marking suits in 2010.  I’m sure that is a scary statistic to the dozens of companies that are potentially facing false marking suits.  I had an opportunity to discuss the issue of false marking with two of our Patent Center Contributors, Brandon Baum, a partner and intellectual property litigator at Mayor Brown LLP and Robert C. Faber, partner and patent prosecutor at Ostrolenk Faber LLP.  While some of their viewpoints are similar, Baum and Faber both have a unique perspective on the topic.

Here is what Brandon Baum, the “patent litigator” , has to say on the issue…

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

BB:  Yes, though the question presumes that companies are “falsely” marking (i.e., with intent to deceive) rather than inaccurately marking (i.e., without intent to deceive).  It will become a priority for companies’legal departments to monitor patent marking and, particularly with respect to expired patents, remove them from packaging. 

Me: Do you believe false marking necessarily causes injury?

BB:  As a general proposition, I think we would all agree that one should not mark a product as being covered by a patent when one knows it is not. I believe that Congress could reasonably believe that false marking causes injury, just like any other sort of false labeling of a product.  (more…)

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…)