Following the December 28, 2009, Federal Circuit decision in Forest Group Inc. v. Bon Tool Co.,[1] holding that a patent owner can be fined up to $500 for every falsely marked article, 130 different lawsuits have been filed—any by plaintiffs betting on a windfall from inattentive patent owners. On Thursday, June 10, 2010, the Federal Circuit issued its decision in Pequignot v. Solo Cup Co.,[2] in which they found no liability for false marking because the patent owner, Solo Cup Co., lacked an intent to deceive the public. Notwithstanding that Solo Cup intentionally marked their products with expired patent numbers, the Federal Circuit found that the erroneous advice they had obtained from counsel—hat this marking was appropriate—as sufficient to overcome the presumption of intent to deceive.
In this decision, the Federal Circuit confirmed that marking a product with an expired patent number is indeed false marking, holding that “as with a never patented article, an article marked with an expired patent number imposes on the public ‘the cost of determining whether the involved patents are valid and enforceable.’” However, the Federal Circuit held that the requisite intent to deceive the public was absent because Solo Cup had obtained advice from outside counsel that it was not improper to continue to mark its products with the expired patent numbers. Solo Cup’s removal of expired patent numbers from the replacements for worn out molds also evidenced lack of an intent to deceive the public.
This decision also addressed the propriety of using “may be covered by one or more patents” language in marking products. Solo Cup had included the following language on its products: “This product may be covered by one or more U.S. or foreign pending or issued patents. For details, contact www.solocup.com.” One of the allegations against Solo Cup was that this language was included on products not covered by any patents. In finding no liability for false marking, the Federal Circuit stated that “it is highly questionable whether such a statement could be made ‘for the purpose of deceiving the public,’ when the public would not reasonably be deceived into believing the products were definitely covered by a patent.” Notably, the Federal Circuit also stated, in dicta, that Solo Cup’s marking language was inadequate to satisfy the marking statue because it did not provide any patent numbers.
Accordingly, adequate documentation of marking rationale can provide a strong defense to a false marking claim where that rationale has a business purpose and is not for the purpose of deceiving the public. For more information about this case or patent marking requirements, please contact any member of Baker Hostetler’s Intellectual Property Group.
Authorship Credit: Kenneth J. Sheehan and Annette Kwok
[1] Forest Group Inc., v. Bon Tool Co., No. 2009-1004 (Fed Cir. Dec, 28, 2009).
[2] Pequignot v. Solo Cup Co., No. 2009-1547 (Fed. Cir. June 10, 2010).
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