False Marking Case Dismissed

Pequignot v. Solo Cuppic-47.jpg (E.D. Va.)

Judge Brinkema has dismissed Matthew Pequignot’s false marking case against Solo Cup and cancelled the trial previously set to be heard this month. [Order] At oral arguments, the Judge indicated that the ruling is intended to “get [the] case teed up for the Federal Circuit.”

In this case, Solo knew that its patents had expired but continued to use the same molds to make its coffee cup lids and other disposable products. During that time – between 20 and 50 billion products were manufactured – each marked as patented. The falseness of the marking was not in serious dispute. Nonetheless, Judge Brinkema ruled that Pequignot did not have any direct evidence to prove that the false marking was done “for the purpose of deceiving the public” as required by the statute. 35 USC 292.

On appeal the Federal Circuit will likely be asked to clarify the level of culpability or intent necessary for a finding of purposeful deception. The choice may follow the same lines of debate as the issue of willful patent infringement. The Federal Circuit recently shifted the law of willfulness to require at least objectively reckless acts of infringement (Seagate) and away from any affirmative duty of caution (Underwater Devices). Professor Winston has argued that intent to deceive should be presumed.

Although the Federal Circuit will probably not be able to reach this issue, the parties hotly dispute the appropriate remedy. The statute calls for a maximum penalty of “not more than $500 for every such offense.” Here, the question is whether damages should be calculated based on one offense per product line or one offense per item marked.

[AP Article by Matthew Barakat]

93 thoughts on “False Marking Case Dismissed

  1. Ed,

    It is evident that you have legal training and your contributions to this thread definitely make it more enjoyable than the clown acts and empty wishful thinking of others.

    Like I said, it is the thoughtful questions and tough feedback that are more enjoyable.

    A first point I want to make is that you appear to want to dismiss the determination of “unpatented” by the Supreme Court and other references, and want to do so based merely on the March 24, 2008 Memorandum of the District Court. I would like you to think about holding off on such a move, as the full decision of that District Court is not yet completed – in fact, I would caution that the memorandum by the District Court does not carry sufficient legal weight. This is one of the reasons why I am eagerly awaiting the actual write-up from the District Court. The District Court Judge may have made his own job immensely more difficult with his actions and further appeal does seem likely.

    As to first impressions, I would also distinguish just what is being called the matter of first impression, as the bits and pieces culled from other court decisions in themselves cannot be matters of first impression, and thus I would posit that not only Clontech and the other case do indeed address particular issues, they rightfully serve as caselaw.

    Next, I would take issue with your statement of “As noted, the decision of the district court looks to other court opinions to reach its conclusion; however, nowhere does it look to the legislative history” – by “it”, you may be referring to the District Court, but that would be an error – if you look at the Supreme’s standing, – the Supreme Court does reference legislative history and makes its pronouncement on that history.

    I would also take issue with your statement “equally, if not more importantly, other usage of the term “patented” in the Patent Laws themselves.” There is a danger here of falling to the BV trap, and misconstruing a singular verb out of context – so this is only “more importantly” as it seemingly fits your desired interpretation and looking at other sections of Patent Law will more likely conflate the issue rather than add clarity. I remarked on the BV trap previously.

    I am interested in where you are going with the question “Why even bother with the recitation to “patented” since all patents are printed publications?” Clearly, there is a distinction between the function of a patent (as an active right) and the function of the history and knowledge of a patent (as a publication of that knowledge). You and BV, may not like where this logic leads.

    In response to your assertion that Clontech does not fit the facts or issue at hand, and the determination you suggest about whether an article is ‘patented’ for purposes of Section 292, I would remind you that patent rights, as that is what claims define, are time sensitive. Thus in order to determine whether an article is ‘patented’ for purposes of Section 292, the Notice function is critically dependent on whether the rights are active or not (you mention enforceability, although enforceability is a red herring; for example, a patent can still be active, yet not be enforceable) – A key point that must be accepted is that the mark IS the status, not an invitation for others to do ANY type of additional searching to find that status. This is a critical point of the law that keeps being missed (or deliberately ignored).

    I believe that you are in error when you state “Additionally, whereas some would impose strict liability for continued marking with an expired patent number, at page 7 of Clonetech, the CAFC indicated that even where mismarking was known, it saw “no reason to interpret the statute differently to render it a statute of strict liability for mismarking.” Are we to believe then that the courts would impose strict liability to failing to remove a marking when no such strict liability is to be imposed where one knowingly applies a marking that is false?” Reading Clontech (and the other cases) further and we do find that the “knowingly” expressly changes the reading of strict liability, as “knowingly” has been held to be the crucial addition to the fact of mismarking to make the act statutorily intentional deceitful. One cannot wish this away. You conflate “strict liability” with thinking that Clontech does not apply, but forget that the purposeful (knowingly) marking is held as statutorily deceptive intent.

    Further, you state “Absent something that draws the attention of the public to the patent, it is likely to get no notice. Thus, by marking, with an active or expired patent number, the objective of the Patent Laws is achieved, …”
    Except, of course, the objective of the explicit patent law under discussion (oops).

    To your point of varying the marking (ostensibly to get around the law which you deny to so hold), it is the truth in the statement “…as disclosed in…” that is irrelevant to the law at hand. Remember, marking IS the status. While the fact pattern you propose is interesting, the law still regards marking as THE status, and I believe that the “as disclosed in” still would be regarded as a status announcement, rather than merely a passive aid to the public to investigate further. Remember, the law is NOT an invitation to investigate further, no matter how easy that further investigation has become with technology advances (PAIR is a red herring). Reliance on ‘how easy’ simply falls to the wishful thinking category in the reading of the law. Thus, your statement “Some assert that the purpose of the marking statue is to allow third parties to quickly ascertain the status of the intellectual property.” is baseless in the Law if read as to be anything other than the marking IS the status.

    Ed, I do believe that you are trying to make a valid point about other portions of the patent laws, and one with which I agree; as I have pointed out elsewhere (notably in IC discussions) that the quid pro quo should be encouraging others to investigate, or at least read published patents. But as 6 points out, I am an ardent believer in the Law and your attempt to read the specific law in question to mean something it does not (and if so read, to be facially meaningless) simply runs counter to the established meaning and intent. Would I support a change in the law to do as you suggest? – Yes. Do I believe that your contention is a valid reading of the law? – No. Marking is not an indicator for someone to look up the status, or to find with ease the established quid pro quo of public disclosure, it IS the status. Unfortunately, while noble and “true”, the posture of having the expired patent numbers on articles being a significant benefit to the public is simply not in question, and rather than whether extensive searching is even required or not (to ascertain status from the marking) is likewise a clear misreading of the law as written and established – The mark IS the status, and as that status changes, so must the mark.

    If this is too difficult, remember, marking is NOT required, the option NOT to mark is clearly available for those not willing to meet the legal requirements that come along with the benefits of marking.

  2. I wasn’t intending to post again but I noticed on PAIR that the status of an expired patent is listed as ‘patented’ (rather than ‘unpatented’ for example).

    I realise this may be superseded by case law, but it’s still an interesting point that even the USPTO apparently includes expired patents within the meaning of ‘patented’.

  3. An Inventor may or not be a legal expert. Sometimes it happens such that he may be unaware of the legal formalities which should be carried out by him. In this regard the US Federal Courts and the US Supreme Court have reached a few far-reaching decisions. Under such circumstances, it is best to approach legal experts and PatentExpress is the leader in this regard.

  4. Indeed, the discussion gets more and more interesting.

    The statute states that “Whoever marks upon, or afixes to, or uses in advertising in connection with any UNPATENTED article, the word “patent” or any word or number importing that the same is patented for purposes of deceiving the public…”

    I emphasize the word “unpatented” since a determination of unpatented, like the determination of deceptive intent, is critical to a finding of “false marking.” There are those in this thread that state with absolute certainty that an article that was subject to a patent that has since expired is an “unpatented article” as a matter of law as established by Supreme Court precedent. Interestingly, in the March 24, 2008 Memorandum Dismissing Solo’s Motion to Dismiss, the District Court states that “the meaning of ‘unpatented article’ is, in all respects, a question of first impression.” The judge then goes on to discuss various usages of the term “patented” and “unpatented” in other court decisions, including Supreme Court decisions, on unrelated matters and concludes that an article which is no longer subject to the claim of an enforceable patent is “unpatented.”

    Great, but since when is the decision of a District Court in a matter of first impression established law? Contrary to the assertions of others, Clonetech does not address this issue, nor do Bonita Boat or the others cited. Again, as acknowledged by the District Court, this is a matter of first impression.

    As noted, the decision of the district court looks to other court opinions to reach its conclusion; however, nowhere does it look to the legislative history or, equally, if not more importantly, other usage of the term “patented” in the Patent Laws themselves. As noted by others, the very essence of patentability, novelty, requires that an invention must not have been “patented or described in a printed publication” before the invention thereof by the applicant or more than a year prior to the filing of the US patent application. Why even bother with the recitation to “patented” since all patents are printed publications? Am I to presume that this reference to “patented” means only articles that are still subject to the claim of an enforceable patent?

    Further, those favoring strict liability for marking a product with an expired patent number point to Clonetech as supporting their case; however, Clontech is not relevant to the facts of this case and, furthermore, does not stand for or present established case law to the issue at hand. The most pertinent issue there to the one at hand was whether the law prohibited “marking where the patent does not cover the product at issue.” There, like here, the CAFC deemed it a matter of first impression: not established law. Still, there are some interesting incites to take away from that case.

    Specifically, on page 6 of that opinion, the CAFC states that “when the statute refers to an ‘unpatented article’ the statute means that the article in question is not covered by at least one claim of each patent with which the article is marked. Thus, in order to determine whether an article is ‘patented’ for purposes of Section 292, it must first be determined whether the claims of a patent cover the article in question.” Here, there is no discussion or consideration given as to whether the patent is enforceable, only whether the claims of the patent read on the article.

    Additionally, whereas some would impose strict liability for continued marking with an expired patent number, at page 7 of Clonetech, the CAFC indicated that even where mismarking was known, it saw “no reason to interpret the statute differently to render it a statute of strict liability for mismarking.” Are we to believe then that the courts would impose strict liability to failing to remove a marking when no such strict liability is to be imposed where one knowingly applies a marking that is false?

    The CAFC goes on state that “[I]ntent to deceive is a state of mind arising when a party acts with sufficient knowledge that what it is saying is not so and consequently that the recipient of its saying will be misled into thinking it is true.” If the requisite intent is not there, then there can be no violation. If, as I had suggested earlier, one marks their products “As Disclosed in Pat. No. x,xxx,xxx” is this an intent to deceive. Is this not a true statement? Footnote 2 is irrelevant, I am not professing a defense of ignorance of the law: I am questioning the intent and proper application of the law.

    I apologize for the length of this comment, but bear with me as I address just a couple of additional aspect of this discussion.

    Some assert that the purpose of the marking statue is to allow third parties to quickly ascertain the status of the intellectual property. Really, how does marking help this process? If there is no marking, does this mean the article is not subject to a valid patent? Certainly not, in fact the lack of marking would necessitate a formal search before one begins to copy the product. Marking, whether with an enforceable patent number or an expired patent number, immediately directs one to the patent in question. This then allows the public to assess and build upon the teaching of that patent. Absent something that draws the attention of the public to the patent, it is likely to get no notice. Thus, by marking, with an active or expired patent number, the objective of the Patent Laws is achieved, namely getting the technology to the public, whereas not marking or removing the mark would hide the technology from the public.

    Finally, the paragraph bridging pages 14 and 15 of Clonetech speak of the burdens mentioned by others; however, those are facts that weigh in on the question of deceptive intent and whether the acts of the patentee are outweighed by the burdens upon the public. While in pre-Public PAIR times, ascertaining the status of a patent was quite difficult, now such information can be ascertained within a few minutes. I would posture that having the expired patent numbers on articles is actually a significant benefit to the public as its status can be readily ascertained without extensive searching. Thus, perhaps a couple more interesting questions are whether removing an expired patent number is contrary to the purpose of the Patent Laws and whether marking with expired patent numbers but not pertinent unexpired patent numbers is a violation.

  5. Noise above Law -

    “Lionel Hutz” is the name of an incompetent attorney character on the TV show The Simpsons. It is possible that the person using this alias just acts like a clown to annoy people.

  6. No,

    You have failed to make any persuasive argument. You cite dicta that doesn’t even support your thesis. If you can find a decision that supports the theory that knowingly marking with an expired patent constitutes false marking with intent to deceive, I’ll reconsider my position.

  7. Never once have I bought something because there was a patent number on it. It never has entered my deliberations. And I’m a patent attorney.

    [Hypothetical deliberation]

    “Let’s see these both look good, which one should I buy? Can’t decide, to me they’re equivalent in every respect. Hmm, but this one is cheaper, no has a longer warranty, no (wait let me look) has a U.S. Patent number on it!! Yes, that patent number clenches it!!! I’ll buy this one!

    Ludicrous.

    And if the “public” is the competitor, then saying the competitor would be “deceived” by an expired patent number is even more far fetched.

    [Hypothetical deliberation at Dumb Corp.]

    Phil: “Say John, did you see that new Technolighter that Smart Corp. just came out with. It’s really impressive.”

    John: “Yeah, I did – it looks a killer, it uses butane instead of candle wax. [Pause] Can, can we copy it?”

    Phil: “That was my first thought too, but looky here, it says US Patent 4,000,001 on it. Does that mean its copyrighted or something?”

    John: “Yeah I think so – bummer. Those guys are sure smart – they’re home free. Maybe we can make one with diesel.”

  8. Noise above the law,

    The one link you listed did not support your assertion in any way shape or form. This isn’t a case of mismarking. It’s marking with a patent that has expired. Can you see the distinction?

    And with regard to your comment about clients paying. With regard to tracking when maintenance fees are due, that is easy, and if maintenance fees for a patent are deliberately not paid, then the expiration date is easy. Assuming all three are paid, tracking when each patent naturally expires is work, but probably not that hard for the patent owner, but certainly more burdensome on the producer (to track everything) than on the competitor to look upm one or a few.

    My point was if you have a product line with a five-year cycle, changing the production is difficult and it’s simply an expired patent.

    Do you really believe the false marking statute was intended to punish people marking with expired patents?

  9. I was using the term “false marking” to refer to a marking which is false or – to use your term – to a mismarking or a deceptive marking.

    I believe this is how the judge (in Solo) was using the term as well.

    I don’t think calling it “a” false marking is incorrect (which is arguably different than calling it plain old “false marking” which, in that usage, arguably implies that liability accrues).

    That said, I have no idea why you are referring to those portions of the order as “dicta” – they certainly are not.

  10. It’s much like when one uses the phrase negligence to define a breach of duty, when technically (and we work in a technical, semantic field) negligence requires all four of the well known elements to be met; not just the first two.

  11. Our discourse is getting interesting.
    I counter with this:

    The Order you note is far from persuasive dicta, in support of my earlier stated position I cite:

    (1) more persuasive authority (and arguably dicta, albeit more persuasive dicta); and (2) again the statute itself.

    (1) In Clontech, the federal circuit repeatedly, and throughout its opinion, declined to label or address “false marking” as anything less then “mismarking” WITH “deceptive intent.” Without deceptive intent, the Federal Circuit merely described it as “mismarking.” So it follows mismarking is not false marking and false marking requires intent to deceive. This makes sense when you consider the statute.
    (2) The statute does not leave imposition of liability up to the courts as a matter of discretion. There cannot be “false marking” and no liability. False marking thus requires liability. That is, once the elements of mismarking with intent to deceive are met, liability must attach (“Shall be fined”). And only then is there false marking.

    The trial judge was not accurate in the order.

    Thus, I submit that you meant to use the phrase “mismarking” above, rather than “false marking.”

  12. “Wow” -

    Incorrect – you are mixing fact and law issues.

    See Judge Brinkema’s March 2008 Order, p. 12:

    “For the reasons discussed above, marking an article with an expired patent number is a false marking under 35 U.S.C. §292(a).” [this is the law issue]

    However, whether or not this is a violation under 292 turns on whether the Plaintiff can “establish that the defendant affixed the expired
    patent marking “for the purpose of deceiving the public.” As Arcadia demonstrates, this inquiry turns on a fact-specific examination of the defendant’s conduct.” Id at p. 12 [this is the fact issue]

    As to my use of “culpability” – wrong again (although use of the word “liability” certainly isn’t incorrect).

    Quoting Judge Brinkema’s Order – “Whether marking with a conditional statement constitutes a culpable false marking depends on whether Pequignot can demonstrates by a preponderance of the evidence that Solo intended to deceive the public – i.e., that Solo “did not have a
    reasonable belief that the articles were… covered by a patent” or a pending patent application.”

  13. Anon,
    It’s not false marking without culpable intent; which is the written law and that which you hold so dear. And at law, culpability does not arise but liability may.

  14. CAPat -

    I’m not convinced you know the difference between a “fact issue” and an “issue of law”, because most of this discussion has had nothing to do with fact issues (expect perhaps in the early posts related to Solo’s specific conduct).

    To be clear, as a matter of law, marking with an expired patent is a false marking. Whether or not it is marking for which culpability arises under 292 depends on whether or not such marking was done with intent to deceive the public (as defined by the Federal Circuit in Clontech).

    “Wow” – please point out where I have contradicted myself here (but perhaps you don’t understand the fact/law difference either).

  15. Which is the whole point, Anonymous. The specific FACTUAL context is everything, and is the subject of this entire discussion !!!

    Which goes back to my original point. The law is NOT settled, except in your own mind. So lighten up, and stop treating people like idiots just because they don’t agree with you.

  16. CAPat -

    The issue of intent to deceive has ALREADY been decided by the District Court with respect to Solo Cup. The only issue is whether that decision is correct in view of the meaning of “intent to deceive” as set forth by the Federal Circuit in Clontech. That (Clontech) is the seminal case on “intent to deceive” (a meaning for which it derives from a Supreme Court case) and it was very clearly decided years ago(just not in the specific FACTUAL context of expired patents).

  17. Anonymous, the issue is false marking with intent to deceive. The law has not at all been decided. It is being decided right now, at least with respect to Solo Cup.

  18. CAPat:

    Also see ABDALLAH v. PILEGGI, 152 F.3d 948 (Fed. Cir.) which says:

    “The word “patented” has both a legal and a lay meaning. The legal definition is that the subject matter in question is covered by a valid patent. We realize that this is a legal conclusion dependent on a number of factors. If this were the only basis for concluding that the challenged statements were literally false we would be cautious. The word also has a lay interpretation, however, that is largely undisputed. Webster defines “patented,” the adjective, as “Protected by a patent.” Webster’s II New College Dictionary 805 (1995). The defendants have not offered, nor do we know of any other commonly accepted definition of patented that means “Protected by [claims in an allowed but not yet issued] patent.” The lay definition is wholly compatible with the legal definition, and the defendants have not offered any competent evidence of a contrary definition, except the subjective, self-serving testimony of one of the defendants.”

    Now if you still haven’t figured it out, “patented” means “protected by a patent”, and “unpatented” means “not protected by a patent”.

    If you need more help, please post more sarcastic (and uninformed) comments.

  19. Yes, Bonito Boats.

    From BONITO BOATS V. THUNDER CRAFT BOATS, 489 U.S. 141 (1989) which the Federal Circuit relied upon/cited in Clontech (for a variety of reasons) and the EDVA relied upon in Solo Cup (in supporting its decision that marking with expired patents is a false marking under 292):

    “For purposes of federal law, it stands in the same stead as an item for which a patent has expired or been denied: it is unpatented and unpatentable.”

    The law has been decided and if you would actually read it (the citations mentioned above as well as others), there wouldn’t be these misunderstandings.

  20. Bonito Boats? Well, that’s a federal preemption case, so I can see how that’s right on point….

    Uh, gee, I’m not sure why we bother litigating these cases. What a waste of time and effort when we’ve got Noise and Anonymous right here to tell us exactly what the law is even before the courts decide it.

  21. BV -

    Read the March 2008 order from the Solo Cup case (being discussed here) as well as DP Wagner. You could also check out Bonito Boats (a Supreme Court case) for the meaning of “unpatented” (there are other cases as well).

    If you do this, you will see that the issue of expired patents has already been decided and that the meaning of “unpatented” is quite clear.

  22. To Noise above Law

    Actually I had read the case. There is no reference therein where marking a product with an expired patent number was considered false marking. There is a comment that ‘Congress intended the public to rely on marking as a ready means of discerning the status of intellectual property’ but this was in the context of whether or not it was false marking to mark related products with the patent (rather than considering whether or not marking related to the status of a patent, as could be misconstrued if the quote was taken out of context)

    I therefore have to agree with CAPat (1:58 post). You may disagree, but as I said before, we will just have to wait for the judge to decide whether or not marking a product with an expired patent is considered false marking.

    Ok I think that’s just about enough from me on this one. Time to move on …

  23. What is that sound? … Wow, so that’s the sound of sweet, sweet silence. No more noise.

    Something tells me this beast will return. As a serpent with more than one head is not slayn by removing one of its heads.

  24. Give me a break.

    If a company has the wherewithal and savvy to mark, they surely have the ability to un-mark.

    Marking benefits the patentee, otherwise they wouldn’t do it. Surely the patentee can spend some of that benefit to monitor their own property rights and un-mark as appropriate.

  25. CAPat,

    I will discuss the issue thoughtfully when you put some thought into it. Actually, I already do, but you need to catch up.

    You will have to keep reading past the Arcadia reference if you want to pick up what the case is about (of course, I knew that you would stop there).

    If my attacks on laziness and speculation offend you (yet you want to speak intelligently), I suggest that you respond with intelligent answers to the points I put forward instead of wishful thinking. I have no problem with counter points, especially those easily dispatched with a modicum of effort in understanding the law. I actually welcome the tough comebacks. Yours, however, isn’t one of them. Please try again.

  26. 6, that’s only what he wants you to believe. You know, like a certain clergy of a certain religion. In other words, it’s a man, baby.

  27. “Second, though you speak as if these issues were all absolutely settled, they are not at all settled, and the points you are making with such certainty are only your opinion.”

    Captain patent, I don’t think you understand Noise’s position. Noise’s position is always that what the law is currently always has been and always will be the very best thing for society and that anyone who should ever break that law is in err no matter what. Ills to society? Actual hurt to society? Issues not directly spoken to by law/caselaw? None of these make any difference, the only thing that is important is what is written on pieces of paper, judge’s written decisions about those thing that are written, and how she herself, and many other attorneys view each of those. She’s all about the law, as it is right now, every moment of her life. It’s her bag baby, yeah.

    This is only of course except when a decision that comes out that shows her previously held position was dead wrong. Then she’s all about the law as she interpreted it before that decision.

    She likely has no stake in these cases, she takes this sort of position on every topic on this blog and others. It is a way of life to her.

    The diametric opposite of Noise is of course, me.

    He sounds like a Jerk, you should know that Noise is a girl.

  28. In defense of Noise above Law – from what I can see, he appears to be one of the few posting here that actually knows/understands this particular area of law (not the only one, for sure). Certain others can’t even seem to figure out the procedural posture of this case (which is both kind of amusing and kind of disturbing).

  29. Noise, your moniker suits you. You bluster with the best of them, and your off-putting style seems to focus on insulting those in the discussion who raise a point counter to your’s. Why the personal attacks, or denigration of the legal skills of others, just because we disagree? Firstly, part of the purpose of this blog is to comment on the state of the law and what it should be (which may be different than what it is). Second, though you speak as if these issues were all absolutely settled, they are not at all settled, and the points you are making with such certainty are only your opinion. I suspect that you are involved somehow as a plaintiff in one of these false marking cases, and have a stake in the outcome.

    The footnote you cited is from a case deciding the very different issue of marking a product as patented when, in fact, the marked article is not covered by the patent. It has nothing to do with the issue of marking after a patent has expired. Moreover, that case itself, from 2005, stated: “The case law of this circuit (Federal Circuit) on the statute in suit is sparse. In fact, only one precedent has substantively addressed the statute, and in that case, we affirmed, without discussion of the text of the statute, the trial court’s holding that no violation of the statute had occurred because the plaintiff failed “to produce any evidence of intent to deceive the public.” Arcadia Mach. & Tool, Inc. v. Sturm, Ruger & Co., 786 F.2d 1124, 1125 (Fed. Cir. 1986).

    So, you would do well get off your high horse and discuss the issue thoughtfully and respectfully.

  30. “That is argument is false” is itself false.

    Lionel’s argument does not follow, as like the Office, I have reserve arguments to make in case the first is overcome.

    Thanks for playing, 6.

  31. ” (given the argument that the US is harmed by the violation of its laws) ”

    Since that argument is false, does Lionel’s argument then follow?

    I thought so.

  32. Lionel,

    You ask that I cite some source – I provided a link to a source that contains the cites you request. Please meet me half way and expend some effort.

    As those sources indicate, a question like :”Do you really think a competitor won’t check to see if the patent is expired?” simply does not matter as to the Law. Likewise, your comment about harm is non-sequitor (given the argument that the US is harmed by the violation of its laws) and likely merely a further speculation on your part (bad habit for an experienced patent attorney).

    A question to you regarding: “Also, I cannot imagine any large or sophisticated client paying for patent term adjustment checking and expiration notices” – Is this beacuse it is so easy that the large and sophisticated client can easily do this itself (this would actually aid MY side of the argument)?

    My comments are not meant to be snarky (although they do read that way – my apologies).

  33. BV,

    I think it’s clear that you have not read the case. As a judge has already decided – the mark IS the status – this includes (explicitly) patents that no longer have rights – the subset you wish had not been adjudicated. Read the case, then return and read my position.

    A better analogy would be “at the risk of throwing a wounded pidgeon amongst the cats” – your position has no chance.

  34. Noise Above the Law wrote “Unfortunately for you (“we really have a problem”), you really do have a problem, as intent is evidenced by simply knowing that you are marking beyond the allowed date – if you are on notice that you are using the mark and you do not have the right to use the mark, then intent to deceive fails the good faith belief test and has been held to be STATUTORILY deceptive.”

    Please cite some sources.

    The above rule is a ridiculously high burden on the patent holder. And, I reiterate, there is no harm to the competitor. Do you really think a competitor won’t check to see if the patent is expired? On the other hand changing production components can be very burdensome on the patentholder.

    Further, Ed Welch is absolutely correct and I am an excperienced patent attorney. Deceptive intemt should not be inferred automatically. It can be presumed in the absence of an explanation, but simple cost to the patent holder should be a sufficient rebuttal if those costs are 100 or 1000 or 10000 times what it costs the competitor to check.

    Also, I cannot imagine any large or sophisticated client paying for patent term adjustment checking and expiration notices. I’ve heard firms try to sell that stuff and a month or two on a patent doesn’t make a difference unless it’s a key pharmaceutical drug.

  35. To Noise above Law

    I think it’s unclear. My view is that if something is ‘unpatented’ then it ‘has never been’ patented. I take it your view is that it means ‘has never been patented, OR a patent has expired’. We will have to wait for a judge to decide what ‘unpatented’ means. Then I think we can work out if marking with an expired patent is deceptive.

    In respect of your comment to Ed, I agree that ignorance of the law is no excuse, but I don’t think that was Ed’s point – rather it was to say that marking is not deceptive if a patent has expired (as above), and if this were not the case there would be no requirement for this language in the statute. Clontech v. Invitrogen seems to relate to a different situation – they were considered to be falsely marking because the patents did not relate to the product. The problem in the present discussion is one of interpretation as to whether marking after expiry should be considered falsely marking with intent to deceive.

    Incidentally (and at the risk of throwing a cat among the pidgeons) judges sometimes look to other jurisdictions to help interpret their own national law…

  36. With a nod to Civil Ancestor, and because Ed Welch seems like a genuinely nice guy, I will take Ed to task and try to by civil about it.

    Ed, it appears that you may have some background in law, but that you have very little exposure to patent law. Perhaps you are even a young GC. As gently as I can, I am telling you that your position is in trouble. The tone and premise of your response shows that you are banking (“Certainly that is not what was intended;”) on the law meaning one thing and you work back from there. Unfortunately for you (“we really have a problem”), you really do have a problem, as intent is evidenced by simply knowing that you are marking beyond the allowed date – if you are on notice that you are using the mark and you do not have the right to use the mark, then intent to deceive fails the good faith belief test and has been held to be STATUTORILY deceptive. Note that the courts have held that the “honest but mistaken” defense is very limited, and will not cover a simple matter as the patent right clock being out of time. This is abundantly logical, as fundamentally, patents “by securing for limited Times…the exclusive Right” – have a critical key in that the granting of any rights are for LIMITED Times.

    The footnote on page 8 of Clontech v. Invitrogen,

    link to caselaw.lp.findlaw.com

    speaks volumes to a blanket defense of mere belief: “employees unfamiliar with patent laws honestly believed the products to be correctly marked. This of course is preposterous”. Ignorance of the law simply does not cut it.

    Several people have posted to the affect of “what’s the harm?” This also is a legally vacuous argument and has been answered in case law: the Supreme Court has held and found that Congress intended the public to rely on marking as “a ready means of discerning the status of intellectual property embodied in an article of manufacture or design.”. Ed, this directly undercuts your last paragraph and is a clear warning that you are in dangerous territory. Again, the key here is the public is not to take the mark as information to go and find out the status – the mark IS the status. When the status changes, so must the mark. That is the intent of the law. That is the Law.

    Using a mark to say, oh, to show off, does not divorce yourself from the legal requirements that you are held to for using the mark. A lot of wishful thinking is being posted in ignorance of what case law has established. In fact, with case law as it is, Ed, your paragraph starting with “Furthermore, is the harm…” actually makes the case (pun painfully intended) that marking alone with knowledge (or expected knowledge of patent lapse date) does suffice to address the second critical requirement of “for the purpose of deceiving the public”.

    Ed, you posit a question about a company establishing a corporate policy that numbers forever appearing violates the law, the answer is that the policy itself may not violate the law, but following the policy definitely does. As a GC, you have a duty to squash such a policy to protect your firm. Thus, your statement of “Certainly there are legitimate business reasons for adopting such a policy” is logically false. There can be no legitimacy in directly breaking the law, or at least, only as much legitimacy as piracy being a good business reason (the black market is ample proof that that business model is indeed lucrative – it’s just not legal or legitimate).

    BV,

    you are still reaching with the verb tense. “is patented” is not the same as “is or had been patented”. The tone of the critical law under discussion (the US marking law) is written in present tense. You are starting to remind me of MaxDrei in trying to shoehorn foreign jurisprudence into US law.

  37. Hi Again

    Anonymous

    With reference to your comment:
    ‘the US version is NOT in past tense and has a separate paragraph covering the implication of marking when no patent applies’

    do you mean (from USC 292):
    ‘Whoever marks upon, or affixes to, or uses in advertising in connection with any unpatented article the word “patent” or any word or number importing the same is patented, for the purpose of deceiving the public;’ ?

    If so I believe my point still stands with respect to the word patented (or unpatented) although I appreciate this may be subject to different interpretations. However, if you look elsewhere as to the meaning of ‘patented’ and whether it means ‘currently in force’ or ‘currently or previously in force’, the latter would appear to apply. For example, novelty under 35 USC 102(a) is lost if the invention is patented, which includes patents which have expired. Under 35 USC 271 infringement of the patented invention only occurs during the term of the patent – if the meaning of ‘patented’ only included those currently in force, it would not be necessary to qualify the statement with the term section.

  38. Again, the discussion continues with respect to the Law, as if it were black and white, and who carries the burden. None of the discussion has addressed the second, critical requirement: marking “for the purpose of deceiving the public.”

    If, as questioned in my earlier message, there is an inherent presumption of intent to deceive simply because one is continuing to mark after expiration or non-enforceability of the patent, then we really have a problem. Certainly that is not what was intended; otherwise there was no need to even include this intent language in the Law.

    Furthermore, is the harm to competition any different if, unknown to the potential competitor, the marking was made with or without intent to deceive? The law may say the former creates a liability, but how does the frame of mind of the patentee make any difference to the perception of the public in seeing the patent marking? If the patentee does more than merely marking a patent number on a product, one might then be able to show a requisite intent to deceive; but marking alone should not suffice.

    Question to those that continue to hold fast to the Law, if a company establishes a corporate policy that all products will be marked with their approrpiate patent numbers and those numbers will forever appear on those products, is this a violation of the Law? Is this alone sufficient to show a conscious decision to “deceive the public?” Certainly there are legitimate busines reasons for adopting such a policy, namely, avoiding issues like Solo, not having to constantly check patent status versus product marking on a product by product basis, not having to incur the cost of retooling in order to remove the marking, etc.

    The mere fact that some individuals may wrongly assume that a patent marking indicates that the patent is in force should not create a huge liability risk and burden on the patentee. Marking alone, cannot, rather, should not, create a presumption of intent.

  39. CAPat,

    1) Yes – after reviewing for any patent term adjustment.
    2) Yes, really
    3) NA (Survey Question)
    4) All clients – as decisions to marking may occur over the life of the patent, and client may decide without further consulting us.
    5) We don’t unless we ask. We ask. Even then, the client may change their mind afterwards.
    6) No. Reminders are sent periodoically (e.g. a simple paragraph with renewal fee reminders).

    Hope this helps.

  40. Noise Above Law — You stated: “Good law firms will advise clients of expiration (my firm routinely does this) especially in cases of marking”. Clarify this please. Are you telling me that your law firm dockets all issued patents through to expiration 20 years later, and sends a letter to the client at that time of expiration reminding them that the patent is now expired and they should remove their markings? Really? I know the practice of a lot of “good” law firms and I have never heard of that. Survey question — how many of the rest of you have adopted this practice? Do you do it for all of your clients, or only those that are marking? And how do you know if your clients are marking? Do you follow up with them year by year on this issue? Just curious.

  41. Lionel,

    Why is it too much burden on the patent owner to follow the rules?

    Can you say that there is no harm to the competitor, or are you still speculating?

    How about harm to the would be competitor that does not enter the market because he sees the “Stay Out” mark?

    Also, isn’t it part of the Qui Tam standing that harm is inherent because the US is harmed in that its law is broken?

  42. I don’t. I was speculating because I was too lazy to look up the facts.

    But what is an affirmative act of marking? If it’s defined as issuing a product into commerce after the owner knows the patent is expired, I would say that is too much of a burden on the patent owner, especially when there is no harm to the competitor.

  43. Anonymous -

    The statute does not penalize for having a product on the shelves during the life of a patent which, during the “on the shelf time”, later expires. It penalizes for the affirmative act of “marking” which would occur sometime during the manufacturing or packaging process.

    It might help if some of you would read the statute before posting.

    Lionel Hutz – how do you know changing packaging and molds is difficult? In fact, Solo’s employees testified that it was not (see the briefing).

  44. Beyond continued marking with an expired patent, what if the patent was invalidated during litigation? Expiry for failing to pay maintenance fee? Re-issue or re-examination issued different claims? Product was slightly changed and is no longer encompassed in the claims?

  45. I made a brief post earlier with my opinion that never seems to have shown up, but I thought this case was ridiculous. Does anyone really believe that listing expired patents is “false marking”? Where’s the harm? If anything, it helps competitors by identifying the scope of the patent protection that had existed and is now in the public domain.

  46. It will be interesting to see if the briefs to be filed include legislative history and whether that legislative history makes a specific reference or clear inference that a patentee must remove the marking once the patent expires. One would think not since the statue includes the need for deceptive intent. However, as noted earlier in this thread, some presume that a patent marking inherently is a “keep out” notification, so intent to deceive may likewise be presumed.

    Annonymous states that “there is a statute – 35 U.S.C. 292 – and an interpretation of that statute which can be obtained from Federal Circuit opinion citing Supreme Court case law explicitly stating that 292 is in place so that people do not have to investigate patent coverages that do not exist.” The key word here is “interpretation.” The practice of law is all about interpretation and as we all well know, two intelligent persons can interpret the same language in directly oposing ways. Lawyering is about convincing the decisionmaker that their interpretation is the proper one. Thus, it is equally perplexing that some in this thread question why others hold to their opposing view. Furthermore, precendents change and maybe now is time for change,..though sadly in light of some of the facts asserted here, this may not be the best case to test the statute.

    In any event, the Law is not so clear as suggested. If one marks their product or associated literature with the phrase “Disclosed in US x,xxx,xxx” is there patent notice for damages? Is there an assertion or even an inference that the product itself is patented?
    Clearly, this language would satisfy the first requirement, but does not address the intent to deceive. However, if one knowingly and blatantly continues to mark its products with this phrase long after the patent has expired, should intent be presumed, as some would suggest?

    Annonymous also indicates that he/she is aware of individuals/parties who have specifically kept away from copying products marked with a patent. Are we then to assume that had no marking been made they would have copied? Are we also to presume that if they came upon the article long after it was placed in service and saw the marking they still would walk? Seemingly, it may have been better for them that they walked since they may not have possessed the requisite business acumen to succeed in the first place.

    Personally, it is my sense that the British have it right.

  47. CaPat,

    You still miss the point of what the law actually is and what it requires. Anonymous may have been indicating your ignorance, but it is wrong for you to take this as an ad hominem attack, as your ignorance is making itself center stage, as you continue to push a position incompatible with the law.

    Good law firms will advise clients of expiration (my firm routinely does this) especially in cases of marking (or, as you add in cases of licensing – that’s a good point to raise – thanks), because the law exists – this is NOT a new point. Your question “and for what?” is not material to the fact that the law exists and needs to be followed. Marking is a conscientious action. It has consequences and requirements that must be followed. Obviously, marking is NOT something that one can do without care and attention.

    It is a regulated activity, and has been ever since 35 U.S.C. 292 has been on the books.

    You don’t seem able to grasp that. If a company (or its product managers) is too busy to follow up on the requirements, than that company needs to consider not marking. Finally, It doesn’t take patent docketing software to keep track of important dates.

    BV,

    You raise an interesting point on past tense verb usage, but I don’t think the US jurisprudence quite aligns with that position, as the US version is NOT in past tense and has a separate paragraph covering the implication of marking when no patent applies.

    As to depletion of stock, my understanding is that particular fact IS taken into account (as well as is discussed in the Patently-O linked thread of the professor’s discussion). If anything, such considerations add to the point that marking is a deliberate act and has legal consequences. Those attorneys not advising clients already need to make this standard practice.

  48. FYI, the damages issue is pending resolution in The Forrest Group v. Bon Tool. I think briefing has been completed, and the case is awaiting oral argument.

    Interesting legislative history. The statute originally said “not less than $XXX per offense” but was changed to “not more than $500 per offense” IIRC.

  49. Anonymous wrote “if calculating expiration dates is so easy, then how can you – in the same breath – argue that monitoring such dates is “onerous”"

    Tracking every patent you have can be very onerous. I work for a company that has a lot of patents and products and tracking the expiration of each and every patent can be onerous. However, it’s easy when you have a product to check the expiration at the PTO for the small set of patents on a product.

    IF Solo only had the one patent and it knew the patent expired and Solo replaced the molds after it knew and still left the patent number on it, then I suppose it is not unreasonable to make the argument that as the molds wore out and as the packaging (assuming the packaging was also marked) was used up and replaced, that they could have had an obligation to remove the patent number.

    Also, changing molds and packaging is difficult. Products are generally the result of some sort of production line. For example, my clients have producs that are not easily marked themselves, so they mark the packaging it comes in. The packaging is ordered for thousands if not tens of thousands units at a time. Do you expect them to throw that packaging away?

  50. I am a UK patent attorney. You might find it interesting to know that our statute specifies that marking a product with ‘patented’ when a patent has expired is NOT considered to be false marking (case law going back nearly 200 years).

    My interpretation of 35 USC 292 would therefore be that ‘patented’ includes the past tense and expired patents, and is not limited to present tense. If this were not the case, consider the supply chain situation where a patented product is sitting on the shelf for 6 months, during which the patent expires. Is the supplier that marked it now suddenly liable for damages in respect of the retailer’s inability to sell the product? That doesn’t seem right somehow.

    Of course if there is an implication that a product has been patented when it has not (as potentially for some bits in this case, based on Anonymous 11th July 10:59 posting) I think that would be considered false marking.

  51. Noise Above Law: I didn’t “raise the notch” and base my arguments on being a patent practitioner. Not at all. I was merely responding to Anonymous’ ad hominem accusation that I must not be one, presumably because he/she considers me to be ignorant.

    Now, are you guys saying that only egregious cases like Solo’s should be prosecuted? Where a specific complaint alleging specific knowing actions to mark unpatented products with expired patent numbers is filed, and the evidence supports the allegation? Because I can accept that. I am not arguing for knowing false marking. But what I am reading in the discussion of this case is that there are many attorneys who would love to pursue all business, small and large, that don’t promptly remove their patent markings when the patents expire. To me, this is not false marking. Businesses have a lot of things going on, and keeping up with the status of all of their patents is not on the top of the list of most production managers. You and Anonymous talk about how easy it is to docket these things. Well, most businesses don’t have patent docketing software, and I don’t know of any patent attorneys who routinely remind their clients of the upcoming expiration of their patents. Is that a standard of care of which I am not aware? When I report an issued patent, I advise of the maintenance fee deadlines and of the expiration date. If I am responsible for docketing the maintenance of the patent, I report these dates again as each maintenance fee deadline approaches. But once the third fee is paid, that’s it, unless a particular patent is subject to a license and knowledge of its actual expiration is necessary to the client for dealing with the license matter.

    This is a big deal, and if the law changes to require prompt removal of patent markings from products, or face punitive and potentially destructive fines, the practice of patent law is going to have to substantially change to accommodate it. There will also be a substantially greater malpractice exposure for patent prosecution firms. And for what? Because occasionally, some would-be copier is deterred from copying an expired patent because of its failure to consult patent counsel to determine the patent’s status or to spend a quarter hour on the PTO website.

  52. Civil Ancestor -

    Your arguments are ignoring the fact that there is a statute – 35 U.S.C. 292 – and an interpretation of that statute which can be obtained from Federal Circuit opinion citing Supreme Court case law explicitly stating that 292 is in place so that people do not have to investigate patent coverages that do not exist.

    You are making a policy argument that – rightly or not – directly conflicts with that law. The burden of your stated “at worst” scenario is never supposed to be shifted to “the public” which you will see if you read those opinions and take a minute to think through the reasons behind the marriage of 287 and 292.

    If, on the other hand, you are looking to argue the merits (or lack thereof) of repealing the federal statute at issue, then we are discussing something different entirely.

    All that said, I am really quite flabbergasted that people are so taken aback at the prospect of parties having to monitor THEIR OWN patents. If you want to play in that ball game, you should have to play by its (here, entirely logical) rules.

    One more thing – I can tell you that in my experience, I have seen scenarios in which people/parties believe patent markings to be true (as they SHOULD be able to) and have been dissuaded from copying marked products without ever investigating the truth of the markings. Maybe this isn’t the best business practice (to just believe markings), but it absolutely does happen.

  53. Civil Ancestor,

    A call to civility is noted. However, we will disagree as to the the triviality of CaPat’s arguments. I will restate that there is no excuse in ignoring the law, and if CaPat wants to raise the notch and base his logic on “I’m a patent practicioner”, then that makes it part of his argument and fair game. Patent practicioners, patent litigators and anyone involved in obtaining, holding and using patents needs to play by the rules – that is necessary.

  54. Noise above Law – that is unnecessary.

    CaPat, “I mark to show off,” and Ed Welch have put forth a non-trivial argument for dismissal here: that, at worst, marking with a patent you know to be expired simply forces your competitors to look up the patent before copying your product, something they should be doing anyway. And that, at best, the marking is a true statement of inventiveness and direction as to how to make the product – benefits that will be lost if manufacturers are forced to remove all patent numbers from products under presumed intent to deceive. On the facts (alleged by plaintiff) here, we see both the worst and best intents above (“it will give others additional notice of our patent and make them think twice about copying the product”). It’s not beyond peradventure to think the court will find no liability here.

    You and anonymous have decent arguments here that the facts show an intent to deceive. Nobody is making ad hominems against you or your professional abilities. Since all arguments have been well-developed, why don’t we wait for the court to decide and then judge who had the better argument? (I’ve bookmarked this thread just for that purpose)

  55. CaPat, “I am a patent practitioner”

    In the face of overwhelming egregiousness presented by Anonymous and the stark reading of the law, the fact that you cling to your view on the marking statue screams that you are NOT a patent practitioner (perhaps you are an examiner?). If indeed you are a practicioner, I would greatly hesitate to engage your services.

    I have over fifteen years of experience in product development (on the technical and managerial sides – not as an attorney), prior to joining the “dark side”. Your argument rings false even from a non-litigator standpoint. There is no excuse for not knowing and following the Law when it comes to marking. None.

  56. Noise Above Law -

    Regarding your post about the billions of products falsely marked evidencing egregiousness, keep in mind, those numbers only include products manufactured within the relevant statute of limitations (i.e., they only encompass 5 years of marking). Because the one patent has now been expired for more than 20 years (and Solo is still marking with it), the “billions” numbers are likely significant higher (at least 15 years are unaccounted for).

  57. CaPat -

    To the contrary, the complaint was filed with specific allegations that Solo knew the patents were expired for many years while continuing to mark. For example, there is a very specific allegation in the complaint regarding Solo’s knowledge of the expiration that was apparently evident in the publicly available trademark office proceedings involving Solo’s trade dress. In particular, precisely because the Traveler lids were the subject matter of an expired patent, the trademark office was refusing to grant the registration. If you read Solo’s answer, you will see that Solo admitted these allegations from the outset (probably because they could hardly deny this evidence – including their admissions – of knowledge of expiration peppered throughout approximately 4 years of the trademark office/TTAB record).

    Also in the complaint (the amended complaint, I think), it was specifically alleged that Solo was marking non-lid products (e.g., cups, bowls, utensils) implying that they were patented or protected by pending patent applications when no patent protection for such products EVER existed (i.e., there were never any patents covering these products).

    The other patent at issue had been expired for 19 years.

    In short, if you are implying that the case was a fishing expedition, I think the record demonstrates otherwise.

  58. Anonymous:

    I am a patent practitioner, but I also understand the immense regulation faced by our business community today. It is clear, on the other hand, that you do not care about these things, and the practicalities of promptly “unmarking” products when patents expire. This is an all too common trait of litigation attorneys, unfortunately.

    The particular briefings in the Solo case are interesting. But, keep in mind, that they were obtained after much money was spent on discovery and pre-trial motions. The complaint was brought, and obviously sustained by the court, based merely on the allegation that the markings existed on the cups and the patents were expired, nothing more. This is the danger of interpreting the marking statute and its “false marking” provision so broadly. In my view, the threshold for sustaining a case like this should be very high, namely, evidence in the complaint of the patentee’s specific intent to falsely mark the product. Since the risk to the market, in this day and age, of the continued marking of products after patent expiration is so small, the penalty should also be small.

    Of course there are limits to the First Amendment. But why should a broad interpretation of the marking statute be one of them? If porn is protected in an unqualified manner (and this is also, really, commercial speech, having nothing to do with the political or religious speech, or freedom of the press, which was really the point of the First Amendment, then why is a person prohibited from simply placing their patent number on their product? Is it really the case that discovering whether a patent is still enforceable is such a difficult burden that the state has a compelling interest in forcing patentees to remove their patent numbers immediately upon expiration? A compelling interest? I don’t think so.

  59. You’re welcome (to Noise Above Law).

    Another interesting fact – Solo did change some (but not all) of its Traveler lid molds rather recently. But, it did so after it obtained a trade dress registration and then replaced the expired patent number with the wording “Product Configuration” (presumably to indicate that you can’t copy the lids because of its asserted trade dress). The trade dress application was filed about a year before the Traveler lid related patent expired, but because of an opposition and rejections and things, it took 4 years plus (give or take) to get the trade dress issued. “Coincidentally”, the expired patent numbers were on kept on the Traveler lids UNTIL after the trade dress registration issued.

    I too cannot wait to read this opinion.

  60. FYI – From the actual case briefing (obtained here – link to williamsmullen.com):

    Solo’s outside counsel advised Solo in an email dated July 2000 (with respect to expired patent numbers) that: “[t]he false marking of a product with a patent number does create liability for the offender, “and further that the “[blest case scenario is to remove the number, if possible.” (PA-0470, P1’s Ex. 4.)

    Also from briefing : “Solo did not change its policy, or stop marking its products with the expired ‘797 and ‘569 patents, after this Court’s ruling on March 24, 2008, that “marking an article with an expired patent number is a false marking under 35 U.S.C. § 292(a).”” [That is, Solo is still marking with expired patents even today.]

    Although not discussed in this blog, the record also reveals that Solo also marked unpatented products (not lids, but cups, bowls, spoons, forks, knives, etc.) with language implying that they were patented even though they knew they were not. The packaging of these products was not marked with expired patent numbers, but rather with language importing that the products were protected by foreign or U.S. patents or pending applications.Quote from brief (which includes citations to Solo’s record testimony):

    “Solo knew that the cups, bowls or utensils at issue in the case were not protected by a
    patent or pending patent application. (PA-0458-0460, D’s Resp. to P1’s Amended mt. No. 14;see also PA-0376-0377, D’s Resp. to P1’s RFA No. 28, 29 (admitting that cups have not been protected by a Solo pending or issued patent); PA-0176-0177, Rule 30(b)(6) Smith Tr. at 258-62
    (same); PA-0377-0379, D’s Resp. to P1’s RFAs No. 30, 31, 32 (admitting that utensils have not
    been protected by a Solo pending or issued patent); PA-0177-0178, Rule 30(b)(6) Smith Tr. at
    263-66 (same); PA-0380-0382, D’s Resp. to P1’s RFAs No. 33, 34, 35 (admitting that bowls
    have not been protected by a Solo pending or issued patent); PA-0178-0179, Rule 30(b)(6)Smith
    Tr. at 266-69 (same); PA-0 184, Rule 30(b)(6) Smith Tr. at 281 (admitting that, during the period from September 2002 through the present, Solo knew that the cups, utensils and bowls were not covered or protected by a U.S. or foreign patent and were not subject to a pending patent
    application by Solo).)”

    And lastly, this portion of the brief discusses an internal email written by Solo’s in house counsel (pay attention to that last part):

    “Moreover, Solo has admitted through its Rule 30(b)(6) witness that when it marks a
    product as patented, it is notifying consumers that at least one patent protects the product. (PA 0170, Rule 30(b)(6) Smith Tr. at 235; see also PA-0499, P1’s Ex. 38 (e-mail from Solo’s in house counsel advising members of Solo’s marketing department that “adding the word
    ‘patented’ to literature (in addition to any marking on the product) is nice to have as it will give others additional notice of our patent and make them think twice about copying the product.”)”

  61. The patent owner is in the best position to police its own marking.

    Also, in response to CaPat, quid pro quo disclosure is not the purpose of the marking statute. Providing legal notice of patent rights is.

  62. CaPat, you said: “If not accompanied by a “keep out” warning, then where is the false marking”
    Please read the Law, especially what marking is allowed and what that minimum marking means legally. There is a reason I posted what I posted. Ignorance of the law is no excuse.

    The link to the Professor’s stand (and other information I have read) also take your point “…because you don’t go out and get new molds the moment each of your patents expire,” into context. Typographical errors and extinguishment of inventory are extenuating circumstances. The clear diffference between run sizes on the order of 100,000 to 1,000,000 presses, and 50 billion presses is neither a matter of simple oversight or “the momone tthe patent expired. Such a difference easily falls into the egregious category.

    As to “what kind of onerous duty are you placing on the patentee to investigate and track the exact expiration dates of each of its patents?” – this is hardly onerous, as teh tracking for payments of annuities already must be done. In fact, since date information IS tracked, there is NO excuse for “oops, I forgot when that patent expired”. None.

    I apologize for repeating most of what Anonymous said, but really, the point is a relatively simple one and one that should be driven home.

    As for the “duty to investigate”, I am not sure where that comes from – perhaps an adhoc reading of the Law trying to imply that the effort required by a consumer (or competitor) to verify whether the mark is “alive” and accurate in order to ascertain proper notice having been delivered to the consumer (or competitor) is enough effort to constructively intend to put the audiance on notice; and that such intent rises to the level of intent to deceive if the mark is indeed false, but I’d be guessing.

  63. Anonynous blurted: “If a patentee is willing to spend money to configure molds or whatever to gain a benefit (constructive notice to the world, regardless of actual knowledge), then why shouldn’t they be required to take them off when they no longer have the patent property right?”

    This may be good policy, anonymous, but don’t you think it should be explicitly amended into the marking or false advertsizing statutes, instead of bootstraped into the “intent” prong of the existing statute? This bootstrapping ironically eliminates the intent requirement and makes marking a strict liability crime. Judicially rewrite the statute much?

    I’m sorry guys, I just don’t see how this suit is ever a winner.

  64. CaPat -

    First amendment? Again – come on!? There are certainly limits to the first amendment.

    But if you’re so concerned about this, configure a mark to say “U.S. Patent x,xxx,xxx, now expired.” Now you’ve told the world that you used to have a patent, and you are doing so honestly and without false statement. Would a business want to advertise that a competitor can now (potentially) copy such product? Doubtful. But, your “difficult” First Amendment problem is now solved.

  65. Do you guys really think that if putting expired patent numbers helps competitors copy a party’s product that the party – being a business concern wishing to make money – would choose to assist its competitors? Really?

    Oh, and by the way – marking with a patent number IS a “keep out” warning. If you don’t know this you either must not be a patent practitioner or…well, “something else”.

    Patentees are required to mark with apparatus patents in order to obtain pre-notice damages and they spend the money to do so (it also discourages copying – if you don’t know this, see above). Patentees are required to monitor maintenance fee deadlines and to pay maintenance fees on time. Are these requirements “onerous”?

    CaPat – if calculating expiration dates is so easy, then how can you – in the same breath – argue that monitoring such dates is “onerous”? Have you ever used a docketing system? You put the expiration date in just as your would a maintenance fee deadline – quite simple.

    If a patentee is willing to spend money to configure molds or whatever to gain a benefit (constructive notice to the world, regardless of actual knowledge), then why shouldn’t they be required to take them off when they no longer have the patent property right?

  66. “I mark to show off” makes a good point above. Simply placing a patent number on a product, expired or not, can be advantageous because the patent, whether expired or not, still teaches the invention. As I recall, disclosure is the whole point of the patent system. If not accompanied by a “keep out” warning, then where is the false marking? Moreover, someone above stated that the marking triggered a duty to investigate, which made it a problem justifying a remedy for false marking. Well, really, how much investigation is required to status a patent these days? 2/10 of an hour to get on PAIR? Anyone, including laymen, can do it. And, if we are going to move into an era of punitive damages because you don’t go out and get new molds the moment each of your patents expire, what kind of onerous duty are you placing on the patentee to investigate and track the exact expiration dates of each of its patents? Except for very egregious circumstances, the very idea of scumbag lawyers trolling around looking for unsuspecting patentees who are busy running their businesses instead of daily monitoring their patents is sickening. It will become another ADA disaster, with parasitic loser lawyers preying on productive small businesses. And then we wonder why unemployment is at 10 %.

    And what about the First Amendment? Could the marking statute really be interpreted in so twisted a way as to deny a business its constitutional right to simply place on its product the truthful notation that a patent discloses that invention?

  67. Noise above law -

    There is no opinion yet – just an order referencing reasons stated in open court.

  68. Ed,

    I think you bring up some good points(specifically, I love the notion that people are encouraged to find and read patents – quid pro quo and all), but like “I mark to show off” before you, you seem to forget that marking has a very real legal significance, and thus cannot be divorced from that role.

    Like it or not, there is a Law that controls marking. If you like to show off, you are still bound by that law. “I mark…”, your “fairly interpreted” notion cannot ignore the law, no matter how equally possible those notions may be.

    Curious,
    As mentioned on the thread linked (Professor Winston), the USPTO cannot provide an expiration date as they cannot even handle figuring out expiration dates (with A and B period adjustments), as well as the not so subtle fact that patents can and do “expire” before their natural proscribed time limits due to such factors as non-payment of annuities, express abandonment and litigation.

    Does anyone have a link to the actual Judge’s decision? I would like to read it before I consider whether the judge simply dodged a hot topic or if his decision is well grounded in legal logic.

  69. The question goes much further than discussed so far. The lids were patented: is a patentee precluded from referring to his product as a patented article (an indication of the creativity of the individual/owner and the uniqueness of the article) simply because it is no longer subject to an enforceable patent? It was a patented article and will always be considered as having been a patented article. Can a patentee protect himself by simply indicating on its molds “Was/Is Patented US x,xxx,xxx”?

    The purpose of a patent is to give the patentee exclusive rights to his invention in exchange for disclosing the invention to the public. Is the patentee not continuing to fulfill that obligation by continuing to publish the patent number so that others can immediately locate the technical information that the patentee gave to the public in order to get the, now expired, patent rights in the first place?

    Finally, others have commented that the public should not have to incur the cost of assessing the status of a patent. What expense is this compared to the investment they must make in order to compete with the formerly patented product? What does no more than five minutes of an individual’s time, whether an attorney or not, cost to check the status versus the tooling cost, design cost, marketing cost, etc. they will be incurring in order to compete?

    Sadly, I see this as just another attempt by individuals to profit from the loose language of the laws so as to twist it in a way never intended or contemplated all at the expense of the patentee as well as other legitimate businesses, patentees and applicants whose cases are delayed because of the overwhelming of the overall patent and related judicial system caused by frivolous.

  70. “In short – if a statement is false and the party knows it is false yet nevertheless makes it, then intent to deceive is inferred.”

    Is printing only a patent number -e.g. “Pat. # 5,102,544″- on an article really a false statement? I think it’s fairly interpreted a number of true ways, like “this product was novel and nonobvious when we came up with it” or “if you want to know how to make this article, look up this patent number.” Simply because one inference may be false, “copying this product infringes this patent” does not ammount to deceptive intent when several other true (and helpful) interpretations are equally possible.

    Now, if the cups said something like “this product protected by Patent 5,102,544″ or something more menacing, perhaps.

  71. Paul F. Morgan, you were responding to a posting by “Just Curious”, not me, namely “Curious”

  72. The interpretation of “intent to deceive” doesn’t require speculation – the test was set forth by the Federal Circuit in Clontech.

    In short – if a statement is false and the party knows it is false yet nevertheless makes it, then intent to deceive is inferred.

    “[T]he fact of misrepresentation coupled with proof that the party making it had knowledge of its falsity is enough to warrant drawing the
    inference that there was a fraudulent intent”. Clontech v. Invitrogen

  73. “if you can prove they knew the patent number was expired”
    - shouldn’t this be a given? If you have a patent and are allowed to mark your products such as to give notice to “Keep Out”, isn’t it incumbent on the marker to know when that priveledged mark expires? It is the patent owner’s sole responsibility to pay annuity costs – it is not like it is something that shouldn’t be known, or even difficult to know.

  74. “A sort of understandable laziness.”

    A scintilla of understandable laziness should be all that is required to shift the burden of proving intent to the plaintiff.

  75. Dear Curious: wrong on both counts.

    [And others seem to be confusing the CAFC's inter-panel confusion on what it will buy for NON-statutory "intent" for inequitable conduct with the unusually specific intent requirement of this "bounty hunter" statute.]

  76. “should intent to deceive this audience be presumed?”

    yes, if you can prove they knew the patent number was expired, then let the defendant rebut the presumption by saying “we were just lazy and wanted to save money by not changing our molds”

  77. “In this case, Solo knew that its patents had expired but continued to use the same molds to make its coffee cup lids and other disposable products. During that time – between 20 and 50 billion products were manufactured – each marked as patented.”

    This seems to imply that during that time the same molds were used to press out the lids. A sort of understandable laziness. “Should businesses really be forced to go out to the factory and change the parts they have been using for years?” attitude is implied.

    I’m not a manufacturing expert, but it is my understanding that these molds have rather short lives, on the order of 100,000 to 1,000,000 presses, not the order of 50 billion presses. Doesn’t that undercut the sympathetic stance implied by the quote above?

  78. Paul F. Morgan -

    Does Xerox mark with expired patents or something? You work for them, right?

  79. With S.J.occuring only a month before the trial date, the defendant is probably already “out of pocket” a million or more in legal costs for defending against the highly unlikely allegation that failing to remove expired patent numbers from one of its products in time was “for the purpose of deceiving the public” – the very specific intent required by this statute.

  80. If a duty is triggered to investigate (including incurring that cost) – that’s precisely the point. You shouldn’t have to incur that expense or the burden of possibly getting the evaluation wrong if there is, in fact, no patent covering the product. That’s the judicially stated purpose of 292.

  81. It may depend on how you define “the public.” Sure, the man-on-the-street won’t understand that the patents may have expired, but is that the target, or is it the competitor who wants to manufacture cups? That person, having been put on notice that the article is patented, may have a reasonable duty to inquire (to her attorney or directly to the manufacturer) on the status of the patents. Since an older patent (in the 4,000,000 vintage, for example) would immediately suggest to a patent lawyer that the patent could be expired, should intent to deceive this audience be presumed?

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