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…)

Attorneys’ Fees Under Section 285: A Double Standard in Patent Litigation

By Brandon Baum ( Partner at Mayer Brown LLP and Practice Center Contributor) and Jonathan Helfgott[i]

Under 35 U.S.C. § 285 (“§ 285”), “[t]he court in exceptional cases may award attorney fees to the prevailing party.”  Although the statutory language does not differentiate between prevailing plaintiffs and defendants, the Federal Circuit has developed substantially different standards for determining whether a case is “exceptional” depending on which party prevails.

In the context of a prevailing plaintiff, a court may find a case “exceptional” by showing that the defendant engaged in “willful infringement.” Minks v. Polaris Indus., 546 F.3d 1364, 1375 (Fed. Cir. 2008) (upholding exceptional case determination and award of attorneys’ fees based on jury finding of willful infringement).  “An express finding of willful infringement is a sufficient basis for classifying a case as ‘exceptional,’ and indeed, when a trial court denies attorney fees in spite of a finding of willful infringement, the court must explain why the case is not ‘exceptional’ within the meaning of the statute.”  Modine Mfg. Co. v. Allen Group, Inc., 917 F.2d 538, 543 (Fed. Cir. 1990); Tate Access Floors, Inc. v. Maxcess Techs., Inc., 222 F.3d 958, 972 (Fed. Cir. 2000) (same).  To demonstrate willful infringement, the patentee must show “that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent.” In re Seagate Technology, LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007).   As the Federal Circuit made clear in Seagate, this is an objective test under which an infringer may be found to have acted willfully when it knew or should have known of the risk. Id. (more…)

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…)