False Marking: Starbucks Coffee Cup Insulator

I am at Barnes & Noble in Columbia Missouri drinking a Starbucks Brand latte. My cup is insulated with a removable corrugated cardboard insulator that is marked with U.S. Patent. No. 5,205,473. By my calculation, that patent expires April 27, 2010. (17 years from the April 27, 1993 issue date.) It will be interesting to see how long it takes for the company to remove the patent number once expired (in 2012..).

The ’473 patent is assigned to LBP Manufacturing of Chicago, but Starbucks could still be liable if it improperly marking its products.

44 thoughts on “False Marking: Starbucks Coffee Cup Insulator

  1. i like this part of the post:The ’473 patent is assigned to LBP Manufacturing of Chicago, but Starbucks could still be liable if it improperly marking its products.”" is very good

  2. i like this part of the post>:

    I am at Barnes & Noble in Columbia Missouri drinking a Starbucks Brand latte. My cup is insulated with a removable corrugated cardboard insulator that is marked with U.S. Patent. No. 5,205,473. By my calculation, that patent expires April 27, 2010. (17 years from the April 27, 1993 issue date.) It will be interesting to see how long it takes for the company to remove the patent number once expired (in 2012..).
    ” is very good

  3. “So the case law going back more than 100 years consists of liabilty for expired patent marking in one 2006 SDTX case, and one 1886 NY case? (Plus a couple of suggestions one way and one suggestion the other way (Arcadia)).”

    To be fair, there is very little case law on false marking period (except for from the last year or two). The cases I’ve mentioned – even though not many in number – therefore represent quite a significant portion of what body of law exists.

    I think there is another more recent case in Georgia, actually. I hesitate to mention it simply because I’m not 100% sure that it involved expired patents (but I believe it did, and it otherwise appears to have settled after some adverse decisions against the defendant).

    There is also a case (from the mid-90s, I think) – no liability for no intent to deceive (but otherwise related to an expired patent) – from the International Trade Commission of all places.

  4. DA, you are correct that you did not assert controlling authority. I mistakenly read that into your statement about more than 100 years of case law. Mea culpa.

    So the case law going back more than 100 years consists of liabilty for expired patent marking in one 2006 SDTX case, and one 1886 NY case? (Plus a couple of suggestions one way and one suggestion the other way (Arcadia)).

    Nevertheless, this fits the critera you established because the two actual holdings bookend more than 100 years, and thus

    I__Will__Shut__Up__As__Promised.

    Good `bye, cruel virtual world!

  5. “Ahem. Now I know you’re just pulling stuff out of thin air (or out of somewhere, anyway).”

    New York Card Co. v. Union Card Co. – 1886 – marking with an expired patent is improper/prohibited (in reference to precursor to Sec. 292).

    Wilson v. Singer (pre-1900) actually suggests that there could be liability for marking with expired patents – the judge, however, thought that because the date of the patent was marked with the patent number in that case that there was no liability.

    DP Wagner v. Pro Patch (summary judgment entered against party marking with expired patents) – 2006

    Arcadia (Fed. Cir.) – no intent to deceive was found – it does not exculpate marking with expired patents.

    Even Forest v. Bon Tool favorably acknowledges the cases proceeding against companies marking with expired patents.

    FYI – you didn’t ask for any controlling authority on this issue. You merely questioned whether there was “any chance” there is liability for intentionally marking with expired patents. Yes, there is a chance and yes there was liability in DP Wagner, at least.

  6. Noise, nice try at deflection. None of the links provided provide ANY authority (let alone over 100 years’ worth) for the proposition that expired marking is false marking.

    There’s just District Court Judge Brinkema in 2008 and the more recent District Courts ruling on MTD’s who have followed her.

    Is Differently Anonymous one of your sock puppets?

    Either way, question still stands.

    Show me the more than 100 years of case law on point regarding expired markings and I’ll shut up.

    Enjoy yourself.

  7. pong,

    You may be interested in the background provided in previous Patently-O threads on the subject.

    A worthy link: link to patentlyo.com The article referenced has further links to actual cases.

    You may also enjoy the comments at link to patentlyo.com Buried in the sniping are some real world concerns asked and answered.

    Enjoy.

  8. Different Anonymous wrote “You must not be paying attention to the case law (which goes back more than 100 years on this issue).”

    This was in response to my having questioned whether expired marking was actionable false marking.

    Ahem. Now I know you’re just pulling stuff out of thin air (or out of somewhere, anyway).

    The only controlling authority I’ve been able to find which is even close to being on point is the 1986 CAFC decision in Arcadia, where the CAFC said Ruger was not falsely marking on the basis of patent expirations. Even here, the statement regarding expirations is more like dicta than anything else and it really looks like what was affirmed was the “no intent” prong.

    Then there’s Judge Brinkema in Solo, but she’s not controlling authority and as far as I know, no other cases are on point.

    Now, show me your more than 100 years of case law on point regarding expired markings and I’ll shut up.

    And in case you don’t actually have any of that more than 100 years of case law, kindly come back and admit you were just making it up.

  9. And especially if environmental laws and labor laws are summarily dismissed – we can make boatloads of money!

    Isn’t that the whole point?

  10. “Except for those pesky inventory costs, which after “many years” of sitting in a warehouse are likely to far exceed the original manufacturing costs.”

    Not if they are sold to Starbucks right after they are made… that’s the whole point. And cardboard gizmos don’t take up a lot of space and thus represent de minimis storage costs…

  11. do you have any controlling authority for this proposition?

    pong – Pay attention: Homey don’t do answers.

  12. “why shouldn’t this scheme also trigger liability?”

    Because the statute doesn’t say that it does.

    “If indeed there is any chance that expired marking might be found to be actionable false marking,…”

    Any chance? You must not be paying attention to the case law (which goes back more than 100 years on this issue).

  13. Ping writes, “- inventory is excused from false marking.”

    Hmm… while this certainly makes a lot of common sense, do you have any controlling authority for this proposition?

    After all, what if someone like ManufacturingGuy does decide to run his warehouse costs up as a prelude to bankruptcy by printing 6 years of packaging? (Or maybe he gets magic free warehousing, whatever.)

    Then he doles out his inventory of product over the next 6 years following the expiration of the patent.

    If indeed there is any chance that expired marking might be found to be actionable false marking, why shouldn’t this scheme also trigger liability?

  14. Hey Cranky, were not talking about guidance systems here… when you’re making cardboard gizmos that cost a fraction of a cent per unit, you make as many as you can as quickly as you can and shut your line down to terminate your costs.

    Except for those pesky inventory costs, which after “many years” of sitting in a warehouse are likely to far exceed the original manufacturing costs. If you’re running your cardboard gizmo business this way, it’s no d@mn wonder manufacturing is moving off shore. I’m not suggesting that you go full-out just-in-time for these things, but Starbucks uses a gazillion of these a month. What are you doing with “many years” of inventory?

    Maybe you shouldn’t have fired that snarky thirty something year old from the suburbs who was trying to explain why your business was bleeding money…

  15. Hey bright boy MarketingGuy,

    You never said “I was referring to a product that may have wound up on a coffee cup today but that was sitting in a warehouse for a couple of years after it was made and sold when the patent that it was marked with expired

    You said “And another thing. What about marking …

    There are several factors you need to realize in your now “even though I was referring mental telepathy added to time machine trick:
    - inventory is excused from false marking
    - patent exhaustion through sale

    Now go wipe your nose.

  16. ping, I can’t fix your stupidity or your bad attitude (which are no doubt closely related).

    And even though I was referring to a product that may have wound up on a coffee cup today but that was sitting in a warehouse for a couple of years after it was made and sold when the patent that it was marked with expired, I think the hypothetical still stands.

    If make a product today that is read upon by claims of an expired patent, there is nothing wrong with me marking that product with the expired patent number since it is possible that there are infringing products out there that were made previously, e.g. during the period of enforcability of the expired patent, that I could sue on today.

    Now go wipe your nose.

  17. ManufacturingGuy,

    Don’t let those environmental laws or those labor laws get in your way either – do what you want. That’s how real manufacturing used to be done anyway.

    Damm those laws that prevent me from making as much money as I can. This used be America, until the commies and their socialist law making got in the way.

    As to “What about marking with an expired patent to put a party on notice of potential past infringement?”. So, you are going to mark new things that you are making now with a patent number you know is expired so that people buying your new thing that you made now and marked with a knowingly expired patent are going to be aware of and now put on notice that something that they did in the past was potential infringement?

    Funny, I didn’t see the time machine related clause in the patent marking section on appropriate notice, and yet you are able to backwards in time from something bought today to give constructive notice to past events.

    Maybe you should patent that.

    In the meantime, hike your malpractice insurance premiums (not an answer – just advice).

  18. Sorry, I misunderstood. I agree that I have not yet seen one argument for harm via expired patent that passes the straight-face test.

  19. My point is that having a marked product with an expired patent can function as notice of potential past infringement and thus cannot be said to harm the public.

  20. “And another thing. What about marking with an expired patent to put a party on notice of potential past infringement?”

    Hm. Don’t think you really need it / doesn’t really help.

    Once you’ve shown infringement and are in the damages phase, all you need to show is that all product you put out the door up until the expiration date was all marked. That way, the infringer can’t say that what they copied was unmarked product.

    Contrariwise, if the copyist can point to some unmarked pre-expiration product, the presumption goes to non-copying/no past damages.

  21. I see no problem with listing expired patents on products. It informs the consumer that the product was awarded a patent FWIW. That information is valid regardless of the expiry of the patent. As to competition, it informs any serious competitor that the company’s most on-point patent protection is expired.

    There’s also an aesthetic component to this. I liked to be able to obtain the original Vice Grip, “protected” by the 1950-era patent and similarly marked products.

  22. What about marking with an expired patent to put a party on notice of potential past infringement?

    You’re the manufacturing expert. Explain how you would manufacture the marked article quickly enough to sell it before the patent expired. Because it’s not really notice to tell people “hey, that thing you did, I meant to warn you before you did it, but it infringed my patent”.

  23. And another thing. What about marking with an expired patent to put a party on notice of potential past infringement?

  24. “How much marked inventory should companies be allowed to stockpile”

    Spoken like a true brainwashed statist. Answer: as many as they freaking want to.

    “Who runs a business that way?”

    Hey Cranky, were not talking about guidance systems here… when you’re making cardboard gizmos that cost a fraction of a cent per unit, you make as many as you can as quickly as you can and shut your line down to terminate your costs.

    I bet you are a snarky twenty something or thirty something year old from the suburbs. Just goes to show that most snot-nosed American brats don’t know a thing about how real manufacturing is actually done.

  25. It is likely that these insulators were made many years ago and have been sitting in a warehouse.

    Who runs a business that way? I think it’s actually quite UNlikely that these insulators were made many years ago, as a supplier who operated that way would have gone under long ago.

  26. It is likely that these insulators were made many years ago and have been sitting in a warehouse.

    How much marked inventory should companies be allowed to stockpile prior to the expiration of their patent? I can’t imagine Starbucks ever needing to redesign this thing, and they don’t take up a whole lot of warehouse space. There’s probably a business case to be made for manufacturing a great many at once. I guess they might need to print a few runs with holiday patterns or something, but that’s about it. Even if they change their primary trademark, it’s probably cheaper to put stickers on them all than to manufacture new ones.

  27. Why not mark your product with both the patent and the expiration date?

    Only the patent number is required because the patent number contains all the information one needs to know about the patent. Claim scope, expiration date, everything. You are meant to look up the patent if you desire that information, but it’s easily found once you have the number.

    Even as minor an addition as the date would double the space required to list the patents, and it still wouldn’t directly give you the most important information of all – what you’re actually not allowed to do until that date.

  28. It is likely that these insulators were made many years ago and have been sitting in a warehouse. Seems to me that if that is the case, there is no false marking cause of action. There is nothing wrong with marking the insulators with the patent number that was in force at the time the insulator was made and sold. I think its asking a lot of a manufacturer to perpetually police its marks, particularly once the product is out of the manufacturer’s control.

  29. > There is an absolute date after which we can safely
    > say that all US patents filed before that date are
    > expired. Any one care to figure it out?

    You can only give such an absolute date if you are willing to exempt patents issued on applications which were subject to secrecy orders (some of those issue twenty years or more after filing), patents whose term was extended by Congressional action, and term extensions under statue of both sorts (government regulation and USPTO delay).

  30. How dare you make a mistake, Dennis! It’s been fifteen years since I thought about the 1995 term of patent (shows you how much attention the rule gets in prosecution practice). Here’s the twist on the rule that probably could have gotten most of us:

    “For applications that were pending on and for patents that were still in force on June 8, 1995, the patent term is either 17 years from the issue date or 20 years from the filing date of the earliest U.S. application to which priority is claimed (excluding provisional applications), the longer term applying.”

    There is an absolute date after which we can safely say that all US patents filed before that date are expired. Any one care to figure it out?

    Does anyone think there are patent applications left that can take advantage of the 17 years from the issue date rule? What is the last issued patent that is taking advantage of the 17 years from the issue date rule?

  31. OK, pls delete my last as no longer relevant, esp. as another beat me to it. Guess I should read all the comments before posting. thx.

  32. Geeze, DC, what’s up with your calcs? March 19 2012 clearly on the face of it. You a Prof, or what??

  33. Dennis,
    I noticed that one the other day, as well. But I’m not sure it’s a Starbucks issue. They could be buying them from a third party, and it would be the third party’s problem. Also, I wouldn’t expect the markings to disappear exactly on the expiration date, since it seems reasonable to allow the company to sell any pre-produced stock with the number attached.

  34. Dennis- I don’t understand your zeal for this issue. But I what really don’t understand is that, based on your last sentence, you seem to buy into the argument that marking with an expired patent alone will give rise to liability under the statute. I guess reasonable minds can disagree, but I find this argument a guaranteed loser. It requires not only a reversal in the Solo Cup case (which includes facts of an internal counsel suggesting expired marking will actively dissuade competition), but also a holding in a future case that expired marking alone, without evidence of other deceptive intent, is false marking under the statute. Such a holding works several negatives. It would create huge wealth transfer to litigious individuals, create huge transactional costs for patent holders in policing their marks, deny the public of an easy means by which to determine how to make a marked product, and chill legit marking. I can’t imagine any court that will ever so hold.

  35. Just remember D, incompetence makes the world go around. There is an excellent chance that you could bring suit. If someone doesn’t beat you to it now that you told. I don’t know what happenes if lots of people file.

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