False Marking Fine Set at Point Above Gross Revenue

Forest Group v. Bon Tool (S.D. Tex 2010)

In a 2009 decision, the Federal Circuit remanded the Bon Tool case with instructions to the district court to recalculate the false marking fine owed to the defendant-counter-claimant.  In particular, the Federal Circuit held that each falsely marked article represented a separate and distinct act of false marking, each subject to a fine of up to $500.

On remand, Judge Atlas of the Southern District of Texas determined that the false-marking fine should at least recapture all of the revenue generated from the sale Forest’s falsely-marked products.  Here, Forest had sold falsely marked stilts “at prices between $103.00 and $180.00.”  The court then set the false-marking fine at the highest price-point of $180 per article.  Because only 38 pair of falsely marked stilts were sold, the total fine was relatively small — less than $7,000. Half of the fine will be given to the US Government and half collected by Bon Tool.

The Court finds that the appropriate fine in this case is $180.00 per article, the highest point of the price range. This will deprive Forest of more than it received for the falsely-marked stilts, fulfilling the deterrent goal of § 292’s fine provision. Based on the $180.00 per article fine for the 38 falsely-marked stilts of which there was evidence at trial, the Court imposes against Forest a fine of $6,840.00 pursuant to § 292.

Judge Atlas based her decision on the Federal Circuit’s three stated policy goals of: discouraging mis-marking; encouraging enforcement; and avoiding “disproportionately large penalties.”  Bon Tool had asked for the maximum $500 per offense.  Forest argued that the fine should be limited to its profits on the falsely-marked products of $2,400.

121 thoughts on “False Marking Fine Set at Point Above Gross Revenue

  1. Pray tell us the result of the following exercise:

    No.

    Stop with the semantic arguments. It’s like having to explain a joke to someone who doesn’t get it – the third time around the joke won’t be funny no matter how slowly you speak.

    OOh-ooh, Url whipped out the “you can’t admit an error” card.

    L
    A
    M
    E

    Don’t you have dog to love?

  2. ping, pong, back, forth, bob, weave, never-say-die, etc.

    Pray tell us the result of the following exercise. Go ahead and point your finger at, say, your good friend IANAE.

    Now, while doing so, take a look at how many fingers are pointing back at your pingness.

    Is it 4 fingers pointing back at you? Really?

    If so, please review the link that’s been embedded in my screen name…
    :-)

    And if the answer is 3, admit you are constitutionally incapable of taking a joke and also incapable of admitting an error.

  3. Absent some sort of prehensile double-jointedness of the thumb,

    For the record, double-jointedness of the thumb in that direction would be the opposite of prehensile.

    Also, normal thumbs are already prehensile. That’s the whole point of having them.

  4. I was making no semantic argument

    Quite the contrary – you were. And you have been called on it. Jus’ fess up and move along sunshine.

  5. “How many times do you hear in common wisdom (“momma says” type) that you have eight fingers?”

    As is not uncommon, you’ve completely missed the point.

    I was making no semantic argument about the difference between fingers and thumbs.

    You specifically stated that there were four fingers pointing back at you.

    Any red-blooded, normal, pentaphalangealed* Amurkin, when pointing a finger, has 3 fingers pointing back at him/her. Absent some sort of prehensile double-jointedness of the thumb, only 3 point back.

    Since you have FOUR pointing back, I can only assume you’re a green-blooded, abnormal, hexaphalangealed* unAmurkin.

    *May not be a word. Probably not. That’s why patent twerps love being their own lexicographers.

  6. boiled in HOT-HOT-HOT Babooooon url. i like the sound of that.
    Maybe this calls for a Jingle.

  7. More incredible lawyerly analysis from Url.

    In common vernacular, how many fingers on a hand? How many times do you hear in common wisdom (“momma says” type) that you have eight fingers?

    Url, there are cases where the saying “too smart for your own good” come into play.

    This be one.

  8. Speaking of people failing to follow the subject matter

    Did your momma also tell you that when you point your finger, that four fingers are pointing back at you?

    I was replying directly to your immediate post – and you want to indicate that I was not following the subject matter of the discussion?

    kinda weak” is all you deserve with such lame posting.

    weird complusion” – lol – I’m not the one with a monkey critter in my signature.

    Rock on Sunshine!

  9. “Must be more of that clever lawyer insight of yours.”

    Speaking of people failing to follow the subject matter of the discussion.

    See your good buddy IANAE’s very recent comments to the effect that having all the information at your finger tips in a nice little DB still doesn’t mean you’ll be able to manage your 160,000 SKUs.

    You’re getting kinda weak and repetitive with your insults, by the way. It’s almost as if you’re continuing to try to be insulting out of desperation or some weird compulsion or some such.

  10. Still don’t know what they’re going to do going forward…

    Oh I don’t know, maybe the second line of the ad may provide a clue:

    “The project will wrap up with setting up a reporting and maintained system for all of the patents.”

    Must be more of that clever lawyer insight of yours.

  11. Hey Sunshine,

    do know the subject. You believe that expired markings should be false markings.

    You know jack. see my post at May 06, 2010 at 12:45 PM now referencing my post at Apr 30, 2010 at 12:19 PM. I hope that’s not too far back for you to check out. And yep – that’s still wrong for ya. No pretendin. Jus because ya want to grab what aint yours no more, that’s not a per se violation of the false marking rule. Sure, it is per se false (you gonna argue differently?), but the badnizz still need be met.

    The Law (your caps)“…

    Gee if you don’t like that, how about “tHE lAW”? (must be that clever lawyer insight of yours – really know how to drill down to the crux of the legal matter, don’t you?)

    I’d make a slam on your last comment, ‘cept I don’t know what you be trying to say. Sounds a little “oily” to me…

  12. “It is unfortunate , sir, that your lack of education and breeding permits you to…”

    Yeah, well, my Momma wears Army boots and chews Red Man ‘backer, too!

    “I know its easy for you to jump into a conversation when you don’t know the subject…”
    I do know the subject. You believe that expired markings should be false markings. You want them to be so. Fine. But don’t pretend it’s the settled law. If you insult a poster using your beliefs and hope as The Law (your caps), expect an objection from the peanut gallery. Peanuts is really good boiled in Baboooon_Url.

    “number of comments either – that aint no excuse for not understandin where peoples are comin from”
    Possibly so with a poster such as your pingness who does not appear to post with 3 or 4 ID’s per article.

  13. Whattanego

    It is unfortunate , sir, that your lack of education and breeding permits you to engage in conversation of this type and style. Please recuse yourself from posting messages that do not meet the minimal standards of decorum that professionals expect here.

    lol – I saw that somewheres and thought it mighty appropriate.

    Sunshine” – If you cant hang with the story line, don’t post and make people repeat themselves. It kinda gets inthe way of the flow. When you be a doof like that, just expect to get smacked down Url.

    I know its easy for you to jump into a conversation when you don’t know the subject, but don’t get all toity when you be told how classless that is. “I’m sorry, I didn’t know” woulda been a better answer. Heck, I’d even take “you’re right, but Iza too lazy“.

    Don’t be cryin about the number of comments either – that aint no excuse for not understandin where peoples are comin from.

  14. “Pay attention sunshine. Way back at Apr 30, 2010 at 12:19 PM I stated… ”

    Sorry Sunshine, are you under the impression that every poster here hangs pantingly upon your every written word? Whattanego.

    Once a comment field hits a hundred or so comments, folks seldom go back a week searching for little gems of wisdom, even if they are your little gems of wisdom.

  15. You act as if it is well-settled law that retention of an old patent number is a false marking.

    Pay attention sunshine.

    Way back at Apr 30, 2010 at 12:19 PM I stated “. I think that the law was exactly for marking with expired patents or inaccurate patents or both (given the other part of the law being met – that’s a big gimmie that’s being assumed to have been met with my position).

    It’s a clear sign that you are losing the debate when you gotta switch the topic to something else, AND that something else is already wrong for ya.

    biHHHBU – The acronyms are only cause I’m lazy. I don’t need to be obtuse and throw crap out there to show how clever I’m not and make people guess what the letters stand for (now that’s inelegant).

  16. Presumably these suits are amenable to settlement.

    It’s not entirely clear that they are. It would be pretty easy to game the system if these suits could be settled. The same guy could sue you every couple years for false marking on all your products, you pay him a hundred bucks, he goes away for a bit. Everybody’s happy, and the false marking continues unabated. That’s even less like the intended outcome than what usually happens.

    Because the statute doesn’t forbid multiple plaintiffs, which one gets the money?

    Presumably you make a decision about which of the two suits could be dismissed because the same claim is pending before another court, and then contest/settle the other. Or maybe you could have the two joined. What happens to the money, then? The US gets half and the plaintiffs split the other half?

  17. “It’s not as if each plaintiff is suing for his own damages. 292 describes the liability as a “fine”, and the fine is “for every such offense” rather than for every plaintiff. It sounds like a double jeopardy type situation.”

    You’re right, it does sound like double jeopardy. But it’s muddy because the statute is part civil, part penal in nature.

    Presumably these suits are amenable to settlement. Because 292 contains no requirement of notice to the Government, presumably such settlements will be done honestly and the plaintiff mails a check for half of the settlement amount to Uncle Sam with suitable explanation.

    Because the statute doesn’t forbid multiple plaintiffs, which one gets the money? Let’s pretend a defendant is sued in 2 jurisdictions on the same day. Let’s say the defendant settles in the first couple of weeks with Plaintiff-B. Then is Plaintiff-A out in the cold?

    Secondarily, does it even matter whether the suits were filed on the same day? What if Plaintiff-A filed first, but def. settles with Plaintiff-B?

  18. Dear Ping,
    IANHSTRYSI

    “I am not here, Sir, to remedy your sartorial inelegance”.

    Absolutely having nothing to do with anything, yes, I agree.

    Much like your posts. You act as if it is well-settled law that retention of an old patent number is a false marking.

    We’ll see on that, won’t we? Heck, you’ve even got a good chance of being correct. And if it turns out you are, THEN it will be law.

    YIOTLINMP. Thanks, I did like that one.

    How about, “IANAL(BIPOOTV)”?

  19. In Solo they actually ADDED the number AFTER expiration? I hadn’t caught that tidbit.

    You’re obviously correct that downstream of the (relatively simple matter of) knowing when the patent expires, there will be a lot of work to manage it. I’ve spoken with any number of in-house folks who have decided to wait out a Congressional fix and have notified their marketing and package engineering to begin deleting all marking on a rolling basis as packaging is updated. It’s just not worth the hassle given the current uncertainty.

    I’m still hoping that the CAFC will decide expired DNE false. Unfortunately, it would have been better for some of these later, more sympathetic (from patentee standpoint) cases to have come before them first. Several I’ve reviewed involve patents that expired only months before the complaint filing date. I think if one of those was before the CAFC, they’d have a tough time calling it a false mark.

  20. One might argue by comparison between FCA and 292 that Congress, by silence in 292, implicitly allows for a defendent to be forced to defend a multiplicity of suits, and that mutliple fines could be assessed (not saying it’s a good argument, but we have no rulings in this area).

    I agree that it’s not a very good argument.

    It’s not as if each plaintiff is suing for his own damages. 292 describes the liability as a “fine”, and the fine is “for every such offense” rather than for every plaintiff. It sounds like a double jeopardy type situation.

    Even if you view it as a civil action in damages, you could argue that the first suit is on behalf of some unstated class of plaintiffs, particularly if the first plaintiff (as he should) claims for every single marked article sold in the country. I’m pretty sure a second member of a plaintiff class can’t bring a second suit on the same claim.

  21. biHHHBU,

    YIOTLINMP

    Your Ignorance Of The Law Is Not My Problem.

    but by marking the product you represent to the public that you are still so entitled.
    I knew my IANAE would return. He the man again.

    poor poor baby Big Biznezz, yous got so many SKUs. Maybe since the benefit aint so small, you can afford to pay someone in house to keep up on your legal duty. I know a guy named Parker that had something to say about responsibility. I’d share it, but a slacker like you would not appreciate it.

    As it is, yous is just another whiner who wants a benefit without paying for it.

  22. Anyone with 10,000 product SKUs will (eventually, I’m sure) be able to find a vendor like MDC or CPA who will have docketing software that tracks patent markings on a per-product basis along with expiration information (to include PTA, PTE, and non-payment of annuities).

    It might not be that simple. Even if you know when your patent expires, that’s probably not when you will use the information. You won’t change the marking until the next time you order molds or typeset a new label/packaging design, which is perfectly within your right under the false marking statute. That’s not a date you can deduce from the cover page of the patent, and at best you’d have in-house patent counsel regularly bugging design/marketing to see if they’re on the verge of redesigning whatever part of whatever product happens to have the marking on it.

    No matter how you handle it, marking a new product is way simpler than un-marking an old product. It’s very hard to establish that the patentee has actually done anything worth punishing, except in egregious cases like Solo Cup where management gets together and documents its decision to add an expired patent to an existing product.

  23. IANAE, “…being triggered in cases where no harm has been done or rewarding the “first to file”.”

    Thanks for your posts. As for this last bit posted above, I take it you have not yet noticed that there are 10 or so (last time I looked, several weeks ago) where multiple plaintiffs in different jurisdictions have sued the same defendant over the same product marking?

    There’s nothing in 292 to prevent this.

    Note other, more well-written qui tam actions such as the FCA, explictly state that it is only the first relator with knowledge who sues who may recover.

    One might argue by comparison between FCA and 292 that Congress, by silence in 292, implicitly allows for a defendent to be forced to defend a multiplicity of suits, and that mutliple fines could be assessed (not saying it’s a good argument, but we have no rulings in this area).

  24. Ping, snidely: “If you think that you always have to be on watch for expiration, how in the world do you handle having to be on watch for three annuity payments? Oh the horror.”

    It’s simple. Anyone with (worldwide) thousands of patents and thousands of marks knows that they can not possibly keep up with the annuities. So they hire a specialized company like MDC or CPA, who have docketing software that keeps up with these things.

    So, again it will eventually be simple also for patent marking. Anyone with 10,000 product SKUs will (eventually, I’m sure) be able to find a vendor like MDC or CPA who will have docketing software that tracks patent markings on a per-product basis along with expiration information (to include PTA, PTE, and non-payment of annuities).

    Problem is none of the MDC/CPA types as yet offer this type of service, because before the Solo Cup district court decision, no one dreamed that leaving an old number on could be viewed as a false mark.

  25. if after the patent expires I’m no longer entitled to the legal “fruits”, why should I be liable?

    Because you’re no longer entitled to the legal “fruits”, but by marking the product you represent to the public that you are still so entitled.

    The way I see it, false marking liability can have one (or more) of three purposes. It can be (1) compensatory for presumed harm caused to the public; (2) punitive for the false-marker who has defrauded the public; or (3) a reward to the qui tam plaintiff for doing the government’s administrative job.

    Some of us disagree on what the real purpose of the false-marking provision is, but it seems like if it were anything but (3) it could have been much better drafted to fulfill its purpose without being triggered in cases where no harm has been done or rewarding the “first to file”.

  26. IBP writes, “Q: does 35 USC 292 preempt the enforcement of state consumer protection laws where false patent marking is concerned? How about the “patent pending” case, where no application has in fact been filed, and therefore no invocation of the laws under 35 USC has been made? ****** How about parallel actions–one under 35 USC 292, and a simultaneous one by a state AG under state law?”

    You might (but I doubt it) be able to sneak one past a state law judge by arguing that the claims in the 2 cases are so very different. In 292, you just have to prove false marking and intent to deceive. In a state consumer action (in any state I’ve read of), instead, you have to show that some actual harm occurred.

  27. Anon wrote in response to my 2-unexpired, 1-now expired marking, “Let’s say you prevail. Would you not expect to gain the benefit of having the product marked with that sixth patent? How would you justify having the fruits of the legal protection, but conversely, not having to have the legal responsibility of maintaining proper marking?”

    Yes but play this to its logical conclusion. I had the fruits of legal protection ONLY SO LONG AS the patent was still in force. After the patent expired (and I forgot to get it off my package) I was no longer entitled to the “fruits” such as being able to sue for infringement. So in the isolated context of your well-written hypothetical, if after the patent expires I’m no longer entitled to the legal “fruits”, why should I be liable?

  28. Lionel is obviously a shill or a mouthpiece given his lack of obvious knowledge of the law and its history.

    Lionel, do you always advise your clients based on how you want the law to be? Clearly, you want the benefit without the responsibility.

    If you think that you always have to be on watch for expiration, how in the world do you handle having to be on watch for three annuity payments? Oh the horror.

    I think anon wanted a legal basis for your opinion. You do not have a legal basis, because the Marking law is explicitly and purposely Qui Tam. Your legal basis is that you don’t like it. Join the rest of the whiners who want something for nothing.

  29. “You only need to think once to realize that a patent re-issued in 1976 is expired. I guess you could intend to deceive people by claiming the sky is red, but I’m not convinced that could or should be actionable as something in the nature of fraud.”

    Very eloquently put.

  30. “To Lionel’s diminishing comment about the value given to the patentee, would you object to the removal of this (small) legal benefit with the removal of the penalty? Why or why not? Please base your answer inthe foundation of the legislative intent that is available for this particular law (I already understand your opinion, but want to see what you think is the appropriate legal basis).”

    Not 100% sure what you mean. But in light of the recent cases we have removed all marking from all products (most were not marked to begin with). There is no benefit to marking mass produced products if a patentee always has to be on the watch for expiration.

    To your question, if you remove the legal benefit (which I do not consider small) then what’s the point of marking. The whole point of marking is that it provides notice and allows you to collect more damages. I do not consider that small. And given that benefit the appropriate remedy is loss of notice, which I do not consider small.

    To the people who mentioned the cachet of having a patent number on a product – Really? When was the last time you purchased something and looked for or noticed a patent marking. I know I don’t, but maybe that’s just me.

  31. Laws that clearly don’t serve their intended purpose should be amended, don’t you agree?

    IANAE, I agree completely that laws that do not serve their intended purpose should be amended. I sense that we will not agree on whether the false marking law falls into this category, and if it does, what the appropriate amendment might be. Recall that I would be perfectly fine with the trade-off of removing the punishment concurrently with removing any legal benefit.

    Ping may be a bit pedestrian about it, but I find myself agreeing with him: you do not have a clear picture of this law.

  32. Inviting Body Punches,

    Q: does 35 USC 292 preempt the enforcement of state consumer protection laws where false patent marking is concerned?

    Good question. Is there a reason you could not pursue both? (I would check into your parallel actions — under 35 USC 292 and under state law). While you may have state claims, they likely would be moved to the federal jurisdiction, but I don’t think you are asking about jurisdiction.

    How about the “patent pending” case, where no application has in fact been filed, and therefore no invocation of the laws under 35 USC has been made?

    Same answer. I do not think that you escape the federal level because you lack an actual application. There is indeed an invocation as the law deals with the matter of marking (a lack of actual application does not affect your breaking the federal law).

    If you advertised patent pending while your application was unpublished, and somebody requested basic information about the application while making specific reference to 35 USC 292, would you not rather provide a date, title, and inventor names, than be the target of a federal qui tam suit?

    I hesitate to give the mundane answer, but it fits: It depends. I have not been on the receiving end of such a suit, so I do not know how involved being a target of a federal qui tam suite would be. It may be a minimal effort of divulging under protection in a rather straight forward and minimal manner. If the driving reason for non-publication would be compromised (or if there was a strategic business reason for not divulging any information, I might enjoy watching you bring suit (it will no doubt cost you as well, would it not?). Chances are if you play nice and have a non-threatening reason why you want that information, they may play nice with you. From the sounds of it, I might lay odds that that is not the case. How would you answer if the tables were reversed?

  33. IBP,

    That’s an intersting wrinkle. What are the applicable state false patent marking laws?

    Report back when you find them.

  34. Wow, is this the same IANAE that is slam dunking all over Ned?

    Yous been done shown that intent is not dependent on the person receiving the deceipt. Yous been done shown that making an exact copy is expressly part of the patent agreement. Are you thnking that being wrong twice in the same reply will make your reply right?

  35. According to Solo’s own in-house counsel, marking their products will “…make them think twice about copying the product.”

    You only need to think once to realize that a patent re-issued in 1976 is expired. I guess you could intend to deceive people by claiming the sky is red, but I’m not convinced that could or should be actionable as something in the nature of fraud.

    Besides which, in what sane world do you need to put people on notice of anything before they think twice about making exact copies of your product?

  36. “What exactly was the nature of the intended deception in that case? Who did they intend to deceive, and in what way?”

    According to Solo’s own in-house counsel, marking their products will “…make them think twice about copying the product.”

  37. IANAE, much as you are my idol, this one for some reason you just don’t see clearly.

    I think the intended purpose is downright clear IANAE, don’t you? (Here’s a hint – you said it and I pointed out that it was a feature).

    Now just because some whiners don’t like it, doesn’t mean it aint clear.

  38. IANAE, you may want to review the evidnce inthe Solo Cup case. A smoking gun for leaving expired patent markings for deceptive intent is there.

    What exactly was the nature of the intended deception in that case? Who did they intend to deceive, and in what way?

    In either event, clearly breaking the law should be punished, would you not agree?

    Laws that clearly don’t serve their intended purpose should be amended, don’t you agree?

  39. It’s pretty clear to me that the penalty for false marking is designed to be purely punitive, and the qui tam nature is simply to enlist a vigilante enforcement squad so the government doesn’t have to bother with it directly.

    That’s not a bug, that’s a feature.

  40. The consumer still gets his perceived enhanced value and quality, such as it is

    And is asked to still pay a premium for it. In other words, Big Bizness gives the bizness and the consumer still gets it by exploiting a benefit Big Bizness does not deserve.

    Make ‘em pay big time I say!

  41. base your answer inthe foundation of the legislative intent that is available for this particular law

    What? Basing an answer in law? Why that’s just silly.

  42. It’s very, very difficult to make a case for either deception… in the case of an expired patent.

    IANAE, you may want to review the evidnce inthe Solo Cup case. A smoking gun for leaving expired patent markings for deceptive intent is there.

    Given the relative number of cases on the matter, having such an egregious example speaks to the opposite of what you would hold.

    In either event, clearly breaking the law should be punished, would you not agree?

  43. My hypothetical was indeed to a different situation and was meant to point out that the same people crying for elimination of the penalty, have no qualms about taking the benefit regardless of knowledge of whether that benefit is still deserved or not.

    Different Anonymous at May 04, 2010 at 05:58 PM correctly points out the fallacy of one mark being correct making the situation of multiple mixed good and bad marks acceptable.

    To Lionel’s diminishing comment about the value given to the patentee, would you object to the removal of this (small) legal benefit with the removal of the penalty? Why or why not? Please base your answer inthe foundation of the legislative intent that is available for this particular law (I already understand your opinion, but want to see what you think is the appropriate legal basis).

  44. IANAE–

    Of course, I was talking about patent pending, rather than expired patents.

    But on that subject, consider this: false marking is, logically, simply misrepresentation, either intentional, willfully blind, or negligent. When done with the intent of deceiving the public, it is actionable.

    It is a specialized form of false advertising, which in consumer contexts, is usually addressed by a state AG after a consumer complaint is lodged pursuant to state consumer protection laws. The legal action, if any, is initiated and pursued by the AG.

    Q: does 35 USC 292 preempt the enforcement of state consumer protection laws where false patent marking is concerned? How about the “patent pending” case, where no application has in fact been filed, and therefore no invocation of the laws under 35 USC has been made?

    How about parallel actions–one under 35 USC 292, and a simultaneous one by a state AG under state law?

  45. Similarly, such false marking can cause a consumer to pay a premium for the perceived quality associated with patent protection. If there was misrepresentation, there is obviously harm, which is compensible through an award of damages granted pursuant to a legal action (etc.)

    It’s very, very difficult to make a case for either deception or harm in the case of an expired patent. The consumer still gets his perceived enhanced value and quality, such as it is. The only thing that changes from the day before expiry to the day after is whether a copier can be liable for infringement. And that’s not even counting the highly questionable correlation between patents and consumer value, when compared to all the other devious and misleading ways companies choose to market their products to consumers who don’t know any better.

    Also, you have to contend with the nature of the statutory remedy itself. The damages go to the person bringing the action, irrespective of any harm suffered by him, and without obligation to account to anyone purportedly harmed by the false marking. It’s pretty clear to me that the penalty for false marking is designed to be purely punitive, and the qui tam nature is simply to enlist a vigilante enforcement squad so the government doesn’t have to bother with it directly.

  46. Lionel–

    I have to disagree with your comments that constructive notice to potential infringers is the sole benefit to the patent holder of marking, and that false marking results in no harm to the public.

    As an illustration of my objection, I offer the situation where a consumer good is advertised as either patented, or patent-pending.

    Such marking can create an impression in the mind of the potential purchaser that the product has enhanced value or quality. The person doing the marking knows this, and intends to produce this impression via the marking.

    Similarly, such false marking can cause a consumer to pay a premium for the perceived quality associated with patent protection. If there was misrepresentation, there is obviously harm, which is compensible through an award of damages granted pursuant to a legal action based on a contract theory such as intentional misrepresentation, or on a theory of negligence.

    Anon–

    If you advertised patent pending while your application was unpublished, and somebody requested basic information about the application while making specific reference to 35 USC 292, would you not rather provide a date, title, and inventor names, than be the target of a federal qui tam suit?

  47. “The ignorance on this topic amazes me.”

    Your ignorance on this topic amazes me.

    “The whole point of the false marking statutes was that the accused infringer cannot be reasonably said to have been given notice.”

    Maybe according to you…however, according to the entities that matter…the Courts (including the Supreme Court) and Congress, the point is entirely different. There is a fine spelled out in the statute. This can not be reconciled with your “opinion”.

    “I note that you have been unable or unwilling to provide one rationale to support your opinion.”

    One rationale (and there are others)…people are actually deceived in some cases. Whether you believe those people are too st_pid or ignorant to matter is irrelevant.

  48. Moreover, as I previously said, if someone brings suit on an expired patent then the plaintiff deserves stiff sanctions.

    Not if he pleads acts of infringement that occurred while the patent was still in force.

  49. Ping,

    “If he gets it wrong he already has a loss of the notice function, doof. In other words, there would be no penalty.”

    If there is only one patent then you are correct. Moreover, as I previously said, if someone brings suit on an expired patent then the plaintiff deserves stiff sanctions.

    However, if there are multiple patents and some are wrong, but some aren’t, then the ones that aren’t are still enforceable. There is simply a loss of notice. And that should be the entirety of the consequences.

    I note that you have been unable or unwilling to provide one rationale to support your opinion. Believe me, these cases are a nuisance for now, but they will be overturned eventually.

  50. he gets it wrong, the penalty should be loss of the notice function

    If he gets it wrong he already has a loss of the notice function, doof. In other words, there would be no penalty. Nothing like giving out benefit without right to that benefit and with no “responsibility”.

    I think anon may have it right – remove all legal benefit and simply say “buyer beware”.

  51. Lionel Hults

    Another member of the IMHO-Law making group that considers anyone else’s opinion to be evidently spurious.

    Except Lionel, it appears that the legislators actually made the law much more in line with my take on it.

    Funny how being right lets me be so much more flippant.

    Get over it you big whiner.

  52. The whole point of the false marking statutes was that the accused infringer cannot be reasonably said to have been given notice. Therefore, notice of any non-expired patents that do cover the product can only reasonably said to be given when a threatening letter is sent or suit is filed.

    If it turns out that the suit is actually based upon expired or patents that do not cover the product that is marked, and they do not cover the allegedly infringing product, then I am all for sanctions under Rule 11. That is absolutely the plaintiff’s job to get right. However, if the patent claims in suit cover the marked product, then those claims should proceed and the only loss to the patent holder should be notice prior to suit.

  53. Ping wrote

    “Running on the theme of BJA’s Pinto beans, this whole thing about marking is being played out like the patent holder is doing some great big favor to the public.

    What a bunch of BS.

    People gotsta remember what sections that the marking section be next to. Marking is a huge benefit to the patent holder. We should be charging more for allowing the patentee to mark, pulling that right quicker and penalizing heavier for misdeeds. Perhaps the Office Economist can figure out how much patentee’s save through marking as opposed to watching for infringers and providing actual notice and post these numbers for the big whiners out there who think that they should have the ability to mark all willy nilly.”

    Are you insane, or do you work for Niro? BJA’s post was bad enough, but I have to comment on this.

    The sole benefit marking gives the patent holder is constructive notice to an infringer. THAT’S IT! It means the ability collect back damages and will aid a case for willful infringement. False marking should never really come up except as a counter-claim.

    There is no harm to the public. It is simple to find out if a patent is expired as the term extension is printed on the face and it’s a simple matter to find out whether fees have been paid.

    Absolutely, the burden should be on the patent holder to get it right, but if he gets it wrong, the penalty should be loss of the notice function.

    The ignorance on this topic amazes me.

  54. Paraphrasing the law doesn’t mean the law isn’t silly.

    Uhoh – IANAE, you be spending too much time with Ned and you are starting to develop some IMHO-Law tendencies. His paraphrase is accurate and just becuse you don’t like it beign right doesn’t mean you gets to all change it by calling it silly.

    You can’t realistically expect to deceive anyone

    Intent to decieve aint dependent on the person being decieved.

    Neither of those people would be deceived in fact as long as at least one of the patent numbers is correctly marked.

    Not true – D A’s point about the different messages blows this away.

    Patent infringement is strict liability

    veddy interesting – was this brought up back in the equity discussion?

    Marking just makes them easier to find.

    Complete BS – you act like the benefit is all the comsumer’s. See my post at May 01, 2010 at 05:23 PM (I’m too lazy to repost it).

    and full circle back to “The tacit assumption in the statute that it’s okay to slavishly copy a patented but unmarked product is just plain silly.

    Not that it is okay to slavishly copy a patented but unmarked product, but it is okay to slavishly copy a unpatented or unmarked product or both. That’s the basics of the deal – once the bargained time is up, it belongs to everybody to slavishly copy. You don’t want to be slavishly copied? Put people on notice. You want to take the great advantage of putting people on notice by marking? Fine – but be prepared to pay the price when that advantage no longer rightly belongs to you.

    Let the evil doers burn.

    It’s silly to expect the patentee to go to similar lengths to determine whether or not he is correctly marking his product…that by all rights he should be able to enforce merely…

    O HE_LL NO. If he don’t have the rights, he don’t deserve the benefit. It aint silly at all to revoke all benefits when they no longer apply.

  55. I, unfortunately, just don’t have enough time to refute the rest…although I assure you it can be done…

    Okay then. I’ll ask Andrew Wiles to explain it to me.

  56. I, unfortunately, just don’t have enough time to refute the rest…although I assure you it can be done…

  57. Silly? No it’s not – no marking (and assuming no notice), no damages.

    Paraphrasing the law doesn’t mean the law isn’t silly.

  58. “As I’ve said numerous times, the mere existence of a patent system imposes that duty. Patent infringement is strict liability, whether or not there even exists a product on the market to which the patent applies. Marking just makes them easier to find. The tacit assumption in the statute that it’s okay to slavishly copy a patented but unmarked product is just plain silly.”

    Silly? No it’s not – no marking (and assuming no notice), no damages.

  59. All need to be investigated and a patent attorney recognizes this (as do many other people).

    You can’t realistically expect to deceive anyone who is going to read the patents, either with respect to claim scope or whether the patent is expired. If you intend to deceive, you can only intend to deceive someone who will have a visceral reaction to the mere presence of the patent number on the product, and who would either buy the product because “wow, it’s patented” or refrain from copying it exactly because “wow, it’s patented”. Neither of those people would be deceived in fact as long as at least one of the patent numbers is correctly marked.

    Moreover, by marking with multiple patents, you are imposing a duty on the members of the public wishing to copy that product to investigate all the marked patents, even those which might not protect the product.

    As I’ve said numerous times, the mere existence of a patent system imposes that duty. Patent infringement is strict liability, whether or not there even exists a product on the market to which the patent applies. Marking just makes them easier to find. The tacit assumption in the statute that it’s okay to slavishly copy a patented but unmarked product is just plain silly.

    So you’re saying that you should be able to falsely mark with a patent that doesn’t protect your product but covers a similar “knock-off”? Really?

    No, not really. I don’t think it’s false marking at all if you mark a product with a patent that would be infringed by a similar knockoff. If the knocker-off actually infringes, you didn’t intend to deceive him – you fairly put him on notice that by copying your product he would infringe your patent.

    So simple…if your product is covered, mark it. If it’s not, don’t. Why is this such a problem?

    It isn’t always a problem, but it sometimes is. Look at the money and effort that is expended in litigation on the issues of claim construction and infringement. It is often the case that the question of infringement (or patented character of the marked article) is reasonably debatable, especially as products evolve over time. It’s silly to expect the patentee to go to similar lengths to determine whether or not he is correctly marking his product with a patent that by all rights he should be able to enforce merely because it exists and is registered in a public place for all to see.

    Why is it that a registered assignment document that is not even easily viewable on the internet effects constructive notice of its contents and purported legal effect, but an issued patent with its entire file history on PAIR does not effect notice of its existence unless you write the number somewhere?

  60. “Five patent numbers or ten send the exact same message…”

    No they don’t – not even close. Think of a chair marked with patents – the chair having four legs, a seat, and a back rest. One patent might just cover the use of four legs alone, another patent might cover the back generally, and a third might cover a specifically configured back rest which provides lumbar support (etc., etc.). Each patent has a different scope and changes the possible design around equation. All need to be investigated and a patent attorney recognizes this (as do many other people). Marking with multiple patents gives the appearance of more protection because – in fact – one product can be protected by more than one patent. Moreover, by marking with multiple patents, you are imposing a duty on the members of the public wishing to copy that product to investigate all the marked patents, even those which might not protect the product. This costs money (i.e., more money – whatever the amount – per patent). Expand this hypothetical to a scenario where a company marks a single product with 70-100 patents (which is not really a hypothetical – such markings actually exist) and certainly this imposes a MUCH larger burden on the investigator than a single patent.

    “If we’re going to focus on the spirit of the law rather than the letter, I think marking a patent that could plausibly be infringed by knocking-off the marked product should not be considered false marking.”

    So you’re saying that you should be able to falsely mark with a patent that doesn’t protect your product but covers a similar “knock-off”? Really? Marking as such tells the public that they are not legally permitted to copy your product identically when in fact they can (in your hypothetical). That is ridiculous.

    So simple…if your product is covered, mark it. If it’s not, don’t. Why is this such a problem?

  61. Five patent numbers or ten send the exact same message

    I am not following you on this one IANAE.

    I think what you say is true only if there is no difference in those patents. The moment you have a difference, the message is different.

    anon,

    Like IANAE, I don’t follow the hypothetical. Unless your hypothetical is not directly about false marking and you are trying to make a point that true marking has a legal benefit that should not be divorced from its legal responsibility.

    More power to that. Patentees get away with too much as it is. Absolutely no reason to give benefit without extracting the price. The moment that price is not being paid, either if the patent lapses early, the product is changed or even if the term simply expires, the benefit should be yanked.

    OK, I don’t have to be a hard-_ss. You can take some reasonable time to unwind inventory or such things. Oh wait, that is already a considertion under the intent to decieve prong. For those that fail that prong – they should fry.

  62. The answer provided by ping shortly thereafter explains that the offense is in the inappropriate marking,

    That’s almost certainly the intent of the section, but what it states is as follows:

    “Whoever marks upon … any unpatented article the word “patent” or any word or number importing the same is patented, for the purpose of deceiving the public;”

    According to the section, the article must be unpatented and marked as patented. Try to draft a similar provision that is specific to an individual patent (rather than the current product-focused wording) without using awkward terms like “infringe” or “license”.

    Besides which, if you mark with ten patents of which five actually cover the product, do you really intend to deceive the public? Can you deceive the public, which is properly on notice that it cannot lawfully copy the product? Five patent numbers or ten send the exact same message, especially if we tacitly assume that the public is not expected to actually look up the patents – don’t copy this product or we will sue you for patent infringement and win.

    A new entrant in your market has obtained five licenses one for each of five patents (but not the sixth) and begins to undercut you with a knockoff of your product. Let’s make it a given that their product infringes the sixth patent.

    An interesting hypothetical. I’m playing to my stated bias here, but I don’t think a party sophisticated enough to license five patents should be able to weasel out of liability for the sixth on the off chance that it’s incorrectly marked.

    For that matter, if the basis of the false marking is that your product is not covered by the patent, then you are not in fact making a product covered by that patent, and you have no requirement to give notice by marking – and yet you have evidently made the defendant aware of the patent (that does apparently protect your market space to some extent) by marking it on a product to which it was at least tangentially relevant.

    If we’re going to focus on the spirit of the law rather than the letter, I think marking a patent that could plausibly be infringed by knocking-off the marked product should not be considered false marking.

  63. IBP,

    It sounds more like you are dealing with an unpublished non-provisional. Those that choose the unpublished route typically do so for a strategic reason and you are not likely to find out anything specific. I do not think that even suing them will help you, contrary to what IANAE posts, as the marking provision does not include any disclosure factor that would overcome 35 USC 122. The Judge may simply take a look and confirm the pending status.

    biHHHBU,

    Your hypothetical does not have enough facts to determine whether the action would be successful. Your question sounds similar to the earlier post by IANAE wherein he discussed his difficulty interpreting the provision to read on a per patent basis (Apr 30, 2010 at 11:25 AM). The answer provided by ping shortly thereafter explains that the offense is in the inappropriate marking, which eases the multiple patent scenario (a mixture of good and bad markings would be punishable for the bad markings). So in your hypothetical, the earlier expired mark may present an actionable case because at least one mark has met one of the two prongs.

    You might ask yourself a slightly different question with a slightly different fact pattern. Let’s say you have separate licenses on the six patents. As before, all six have claims clearly covering a certain product. A new entrant in your market has obtained five licenses one for each of five patents (but not the sixth) and begins to undercut you with a knockoff of your product. Let’s make it a given that their product infringes the sixth patent.

    Would you expect to be able to sue for infringement based on that sixth patent, even though the product is also covered by five other patents for which the new entrant has acceptable license?

    Let’s say you prevail. Would you not expect to gain the benefit of having the product marked with that sixth patent? How would you justify having the fruits of the legal protection, but conversely, not having to have the legal responsibility of maintaining proper marking?

  64. anon & IANAE–

    Yes, I considered that. The preliminary inquiry I made was for an app #, if published, or a title, date, and inventors on any unpublished apps.

    Person did not supply any information, only asked to be “contacted directly”, which I can only assume means by telephone. Initial contacts were by email.

  65. Patent pending is a bit tougher

    Suing them for false marking is certainly one way to find out about those unpublished applications.

  66. when I could find no apparently applicable application.

    Patent pending is a bit tougher because
    a) the item may be covered under a provisional filings, which you are not likely to find.
    b) alternatively, the item may be covered by an application with a non-publication request.

  67. Here’s my last question and I’m done with this interesting lunch break.

    What about a patent marking including 6 patents, all of which have claims clearly covering the product. Most of the patents expire b/t 2014 and 2017, but one of the patents expired (e.g.) in February 2010. Actionable false marking?

  68. DA – part (a) was based on a running commentary by the peanut gallery above. Part (b) if you’d like includes the other obvious things such as art of which you or your client is already aware.

    So, do you run out and look at your client’s competitors’ patent markings in your FTO analysis?

  69. What about paragraph 3?

    Is every single brochure falsely advertising “patent pending” a separate instance?

    More interestingly, is every single “impression” of a web page falsely advertising “patent pending” a separate instance?

    I’ve made preliminary inquiries of a business owner operating a website that claims “patent pending”, when I could find no apparently applicable application. I was directed to the site by one of my clients who works in a related field.

    $$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$$

  70. Baboooon -

    Why would you possibly presume a and b are the only two factual scenarios that arise (unless you’re a professional searcher or something and not an attorney)?

  71. General question for those who believe that retention of a now-expired patent marking on a package is false marking:

    When should the patentee stop marking the packaging? Is there any “lee-way” to be had? (Asking this specifically because a quickie survey of the 200+ (whatever it is today) defendants’ patents show in a number of cases that the false marking suits were filed just 2 or 3 months after expiration).

    NB that if even one non-marked product can be shown to have been released by the patentee prior to expiration, all 6 years of infringement damages are in jeopardy, so the patentee certainly doesn’t want to start pro-actively changing his packaging ahead of expirations.

  72. IANAE writes, “Patent marking should only deter competition from a competitor with the second-lowest possible degree of patent sophistication…”

    I’ll go one further and posit that patent marking is no deterrent to any competitor.

    Come on, all you guys who advise clients on freedom to operate issues – when a client comes to you with a proposed new product or product change, which of the following is the basis for your FTO opinion:
    - (a) see what similar products his competitors have, then buy such to examine the patent markings?
    - (b) hire a good search of the patent art and review relevant patents and pending published apps against his proposed new product?

    Anyone out there for whom the answer is NOT “(b)”?

    Anyone out there who, for FTO purposes, instead (or EVER) surveys related products for patent markings?

  73. Bad Joke Ahead,

    I believe that you misunderstand me. If people want to get rid of the punishment, they also must consider getting rid of the legal benefits. I do not see the tradeoff as being that bad.

    There is nothing wrong with secondary benefits if companies want to pursue them, and this would remove the onus of keeping up on the status. you would not need anyone making sure that patent markings were legitimate, because they would be meaningless (in the important legal sense).

    Let people mark to their hearts content, but remove the legal notice function, since that function is not intentionally being pursued anyway, by the sounds of those so disgruntled with the law. You cannot legally intend to give notice if you misunderstand the state of your patent right, can you? We can easily set the official notice and damage provisions to only operate when a patent holder affirmatively wishes to let someone else know that they may be infringing their rights. The Office can even create a special Notice form.

    If people are so upset at having to maintain the actual status, let’s make it so they don’t have that worry. But let’s not give legal benefit without any regard to legal responsibility.

  74. The benefit of marking is waiving off potential competitors.

    The statute provides an additional benefit.

    Also, any sensible competitor should be reading the marked patents (and any other patents you have) before deciding whether or not to enter the market. Patent marking should only deter competition from a competitor with the second-lowest possible degree of patent sophistication – one who vaguely knows patents are a bad thing, but doesn’t even bother to glance at the patents to see if they’re expired or if they appear on their face to cover the product he wants to sell.

  75. anon, that’s nonsense. The benefit of marking is waiving off potential competitors. If you get rid of the Qui Tam, I’m going to start marking my office action responses as patented just to keep people from using them as a blueprint. Why not? There’s nothing anyone can do about it. I’m also going to advise to put random pat numbers on all of the products on their shelves. Why not? It’s not like there’s any reason not to.

  76. Get rid of both the benefit of marking and the Qui Tam control – would that make everyone happy?

  77. No, they did NOT break the law, unless they are proven to have intentionally marked…

    poor Paul.

    As I said to Lionel – “(given the other part of the law being met – that’s a big gimmie that’s being assumed to have been met with my position).”

    Another reason to ha__te all the WHINERS out there who think the world will fall to pieces. Both prongs have to be met. Paul, the court DID look at intention and DID find that prong met, so they DID break the law. Don’t pity the fools. Those who do pass the intent prong have NOTHING to worry about.

    You are absolutely right that CAFC decisions should spell that out. Not sure I completely buy the neglect angle though. As I also said, them’s a big benefit for the patent holder, and that’s plenty of motivation to conveniently “forget.” I am all in favor of a presumptive intent to deceive for gross negligence (if it makes you feel any better, if a patent holder “forgets” to pay his maintenance fee, his patent STILL goes abandoned, so “forgetting” just doesn’t rank that high). I have no problem whatsoever with having a similar Unintentional/Unavoidable style metric keyed to how soon the “oops” is discovered and the appropriate actions taken after that “oops” is pointed out (and how often the perp, er um, the patentee oopsies).

    On the other hand, sophisticated “Big Bizness” deserves NO breaks. They know the rules and should be expected to play by them. Don’t want to hear the whining about “I have so many marks, blah blah blah” – don’t forget that marking is a benefit for that WHINER.

    I say make ‘em pay.

    As for “new lawyer income scheme“, Ima gonna have to place you with the WHINERS on that one, Paul, since ANYONE can bring the Qui Tam (it ain’t just for lawyers). And it aint new (ok – it is newly recognized, but the actual law’s been there for more than fifty years now).

  78. No, they did NOT break the law, unless they are proven to have intentionally marked “for the purpose of deceiving the public” because that is what this law specifically requires. Leaving a patent number on a product after it expires by accident or even neglect is simply not a violation of this statute. But apparently we will have to get CAFC decisions that spell that out with sanctions to stop this new lawyer income scheme, since, unfortunately, that was not really in dispute in the recent CAFC panel decision that started this new litigation plague without really considering the most likely consequences.

  79. Running on the theme of BJA’s Pinto beans, this whole thing about marking is being played out like the patent holder is doing some great big favor to the public.

    What a bunch of BS.

    People gotsta remember what sections that the marking section be next to. Marking is a huge benefit to the patent holder. We should be charging more for allowing the patentee to mark, pulling that right quicker and penalizing heavier for misdeeds. Perhaps the Office Economist can figure out how much patentee’s save through marking as opposed to watching for infringers and providing actual notice and post these numbers for the big whiners out there who think that they should have the ability to mark all willy nilly.

    When self-serving people get upset because they have to follow the law which benefits them to begin with, ya gotta wonder why no one’s smackin them upsides the head about this. Congress had it right when they first wrote this – make it worth the while for Joe Schmoe to take Big Bizness down a peg. You don’t need to be a lawyer for this lottery.

    It’s like Ford saying you should pay them when you don’t fireball in a Pinto collision.

  80. Paul,

    It’s worse than “Patent expiration dates are so complicated to figure out these days, with all the term extension provisions“.

    Given the fact (well “fact” is a bit strong, how about “word on the sreet”) that maintenance fee payments have been abandoned at some of the highest rates in recent memory, and, in like most of the industrial firms that I’ve worked with, that product changes after the initial launch are almost never reviewed to see if the “improved” product is still covered by the claims of the marked patent, there might be a lot of law breaking people out there.

    Then again, how many people do you see speeding on the highway each week?

  81. Whatever the remedy/damages, it has to be sufficient to make the false markers stop doing it.

    It’s the old ford pinto problem. If the company calculates that it’ll cost them less to just let the known problem go and pay the legal costs, they will. In the pinto case, they used punitive damages to help the company get to the right choice.

    That said, obviously there should be some supply chain and good faith defenses that apply for a limited period. If you’re making a billion cup lids a year and you sell even a couple hundred million mismarked lids after the patent expires, that shouldn’t matter as long as that third hundred million is fixed because you made the change when the patent expired. If you’re making two machines a year, you might be able to get by with marking the first, but the second should be corrected.

  82. Lionel,

    but they clearly violate the spirit

    Sorry – just don’t see that. I think that the law was exactly for marking with expired patents or inaccurate patents or both (given the other part of the law being met – that’s a big gimmie that’s being assumed to have been met with my position). I think that your “spirit” isn’t aligned with the actual “spirit”.

    As far as what the appropriate remedy “should be, that ain’t for you to decide – that was already decided by the people who wrote the law, and they were pretty clear about letter and spirit there, no?

  83. Ping,

    These cases are being brought per the letter of the law, but they clearly violate the spirit. The law was never intended to harm patentees marking with expired patents or with a list of patents where one or two were inaccurate.

    Also, regardless of that fact, the appropriate remedy should be loss of constructive notice, costing the patentee any damages before actual notice to the infringer.

  84. In the interest of the height of laziness, here is 35 USC 292:

    35 U.S.C. 292 False marking.
    (a)Whoever, without the consent of the patentee,
    marks upon, or affixes to, or uses in advertising in connection with anything made, used, offered for sale, or sold by such person within the United States, or imported by the person into the United States, the name or any imitation of the name of the patentee, the patent number, or the words “patent,” “patentee,” or the like, with the intent of counterfeiting or imitating the mark of the patentee, or of deceiving the public and inducing them to believe that the thing was made, offered for sale, sold, or imported into the United States by or with the consent of the patentee; or

    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; or

    Whoever marks upon, or affixes to, or uses in advertising in connection with any article the words “patent applied for,” “patent pending,” or any word importing that an application for patent has been made, when no application for patent has been made, or if made, is not pending, for the purpose of deceiving
    the public —

    Shall be fined not more than $500 for every such offense.

    (b)Any person may sue for the penalty, in which event one-half shall go to the person suing and the other to the use of the United States.

    IANAE – just think of it as a per mark of each false patent number. In IBP’s hypo, the guilty party placed five bad marks.

  85. Patent expiration dates are so complicated to figure out these days, with all the term extension provisions for delays by the PTO and the applicants in 80% of issuances, that even the PTO could not calculate it correctly, according to the recent CAFC decision. Malpractice for guessing wrong would be tough to win. It does NOT correlate with the due dates of maintenance fees, which are simply counted from the issue date.

  86. Sorry, by “item”, I meant “article of manufacture”, or something similar.

    I understand the hypothetical. I know that items are articles. I understand that the intent of the false marking provision is for articles to be marked with patents they “infringe” and only those patents.

    The problem is, I can’t think of a way to read the provision such that the patented-ness or falsity of marking is determined on a per-patent basis, other than hand-waving based on what it’s supposed to mean. Can you?

  87. Am I missing something? In this particular case, the problem was that the patent identified on the product didn’t actually apply to the product – yes?

    If you (with the consent of the patentee) mark a product with the number of an expired patent that DID apply to the product, is it not better for the public to be able to determine that there WAS a relevant patent that has now expired than not to have that information? Anyone that’s really interested is going to look at the patent to see exactly what it covers and check its status, they’re not gonna go – “uh-oh, patented, I can’t touch that”.

    Does 35 USC 292 even apply to marking with an expired patent number that WAS relevant to the marked product?

  88. IANAE,

    I think (?) that the term “falsely marked” carries the presumption in IBP’s hypo that at least for the 5 false marks, that the corresponding patent is indeed “unpatented” (this could be due to product change or to patent expiration).

    I do not think that “unpatented” applies to an aggregate condition – it’s a per-patent number kinda thing.

    Dear Tired,

    Because they broke the law. Laws are meant to be obeyed. This country is kinda funny that way.

    sign me:

    Tired of Seeing People Break the Law Just Because They Can and Tired of Seeing People Whine and Complain That Lawbreakers Pay Their Dues.

  89. IANAE–

    Sorry, by “item”, I meant “article of manufacture”, or something similar.

    We have all seen articles where an entire patent family, or history, is marked. In fact I’m looking at my von Nessen desk lamp, with 5 numbers stamped into the pivot. I remember purchasing a pick-and-place machine with 30+ patents marked. I copied the tag for my library!

    What about caveats like “may be covered by one or more of the following patents”?

    And what about compositions of components where the marked patents cover individual components, but are not marked on those individual components, but are marked on the assembled composition? In the case of an expired patent it wouldn’t matter where it was marked, it would be false. But what about unexpired patents?

    Too many questions. Sorry I don’t posit any answers, not enough time now.

  90. Ridiculous. There was no showing that the winner here lost out b/c of the false marking – why the f^&* should the company that sold the stilts have to fork over everything?

    I hope the solo cup lids are assessed at 1/100000 of a cent per item – which the CAFC said the district court could do. Or that Congress gets rid of all these suits pronto.

  91. question: if, one 1 item, 10 patent numbers are marked, and 5 are “falsely marked”, how many “acts” of false marking does that represent?

    I want to say zero because it is not an “unpatented article”, but that can’t be right.

  92. Enter the doctrine of efficient breach, sort of.

    If I’m selling a $50,000 machine, false marking for a possible $500 fine could be economically efficient.

    Also, when multiple articles are sold, each is an act of false marking–so,

    question: if, one 1 item, 10 patent numbers are marked, and 5 are “falsely marked”, how many “acts” of false marking does that represent?

  93. admit that marking with expired patents does no harm to anyone and actually helps competitors in the market? No, instead we have this ridiculous line of cases that will exist until the law is changed to reflect people living in reality.

    Except, you might check into reality and check out the counsel statements in the paper cup case.

    Facts is facts dude – marking does have power.

    I see nothing wrong with making people pay for the power of marking. In fact, we should up this price.

  94. 1234567,

    Having to change a package every time a patent expires is a ridiculous requirement to impose on the patentee, when including expired patents does no harm to the competitor. It’s very simple to determine a patent is expired and the competitor now knows exactly what aspects of the seller’s product is in the public domain.

  95. “Here’s a thought for those General Counsels whose companies are spending fortunes defending against false marking suits for their continued use of an expired patent number: Why not sue your BIG IP firm for malpractice for failing to docket and advise you of the approach of the patent’s expiration date at the time they charged you for forwarding the third and final Maintenance Fee Notice?”

    Or how about we quit playing ridiculous anti-patent games and admit that marking with expired patents does no harm to anyone and actually helps competitors in the market? No, instead we have this ridiculous line of cases that will exist until the law is changed to reflect people living in reality.

  96. 100% of revenue?!?!?!?! Time for me to form a plaintiffs firm and only pursue mismarking cases under the quitam statute…. whhooo hooooo. One big case and I can retire!!!!

  97. I suggest you arrange for a single cup lid to sell at auction for a few thousand dollars before you bring your qui tam action.

    I wonder how much it would cost to pay Justin Whathisname to drink out of a particular cup lid for this worthy cause.

  98. Maybe the total value would have been more. The decision indicates that discovery may have shown more than the 30 stilts sold. maybe thousands were sold but the discovery was thwarted. by denying discovery by discretion, the judge said to the qui tammer, here is your money but you won’t get to know the full units.
    The moral here for plaintiffs is to conduct comprehensive discovery and get the full units at issue, and then go to the highest value.

  99. “minor technicality that wasn’t clearly their responsibility”–LOFL!!! WAS IT THE PLAINTIFF’S RESPONSIBILITY?!?!??

    HERE’S A FURTHER THOUGHT: MAYBE THE GUY SUING YOUR COMPANY KNOWS YOUR PRODUCT, THE PATENT LAWS, AND THE SCOPE OF YOUR PATENT PROTECTION BETTER THAN THOSE BIG IP PARTNERS WHO ARE SO QUICK TO DISCLAIM REPSONSIBILITY.

    IF ANY GC NEEDS AN AFFIDAVIT OF MERIT FOR SUCH A MALPRACTICE SUIT JUST CHIME IN!!!

  100. Why not sue your BIG IP firm for malpractice

    Same reason you don’t insult your waiter. More harm than good can come of antagonizing a supplier, especially a service provider, and especially over some minor technicality that wasn’t clearly their responsibility.

  101. Finally getting rid of this case is probably a huge weight off Judge Atlas’s shoulders. *rimshot*

    Thanks, I’ll be here all week.

  102. Here’s a thought for those General Counsels whose companies are spending fortunes defending against false marking suits for their continued use of an expired patent number: Why not sue your BIG IP firm for malpractice for failing to docket and advise you of the approach of the patent’s expiration date at the time they charged you for forwarding the third and final Maintenance Fee Notice?

    Any of you BIG IP partners want to tackle that one–or is it easier just to call the plaintiffs trolls? If you were doing your jobs your clients wouldn’t have any false marking problems.

  103. MM: and for failing to carry your Patent Bar Membership Card at all times.

    Good thing the PTO is in Virginia and not in Arizona.

    TJ: What I don’t get is why they didn’t drop the counterclaim when it became clear that the potential recovery was capped at $9500.

    Probably just being vindictive so-and-sos. I assume the important point was that the articles were falsely marked, and therefore presumably didn’t give constructive notice.

  104. IANAE, I get that it was for a counterclaim, and I get why they included the counterclaim in the answer. What I don’t get is why they didn’t drop the counterclaim when it became clear that the potential recovery was capped at $9500. It is like going to trial on liability when the damages are capped at $9500–even if you have already filed the lawsuit, the rational thing to do is to drop it.

  105. Whew – It’s good to see that Malcolm wasn’t hit by that falling Cottage-Industry-of-Marking-Trolls sky.

    IANAE – you have that auction set up on Ebay?

  106. IANAE someone suggested the death penalty for the CEO of any company that infringed a patent. Seems about right for false marking, too.

    Also for failing to disclose a material reference to an Examiner, and for failing to carry your Patent Bar Membership Card at all times.

  107. Can anybody tell me why this issue was even briefed and argued?

    It appears to be a counterclaim, so it was probably thrown in for good measure because defense counsel couldn’t get the kitchen sink detached from the wall in time.

  108. Can anybody tell me why this issue was even briefed and argued? By my calculation, the maximum possible recovery for Bon Tool was $9500. That shouldn’t even be enough to cover the attorneys fees for drafting the summary judgment motion.

  109. I wonder what this calculation turns out to be for 8,750,000 cup lids.

    I suggest you arrange for a single cup lid to sell at auction for a few thousand dollars before you bring your qui tam action. That will nicely support a finding of fact that the lids sold “at prices between $0.001 and $5000″.

  110. Of course, there’s always the third option….. don’t falsely mark your goods.

    Right. Not breaking the law is always an option, so we probably shouldn’t concern ourselves with whether the penalties for breaking the law are reasonable.

    A while back in another thread, someone suggested the death penalty for the CEO of any company that infringed a patent. Seems about right for false marking, too.

  111. And better yet, that “Cottage-Industry-of-Marking-Trolls sky isn’t falling.

    (good thing too – I don’t think my umbrella would protect me from such awfulness of people actually paying attention to the law).

  112. I too think this is a reasonable fine, based not just on the amount but on the reasoning behind obtaining the amount.

  113. Because only 38 pair of falsely marked stilts were sold, the total fine was relatively small — less than $7,000.

    Terrific. A fine greater than the total gross sale price of the marked articles is “appropriate”, and that determination is not worth appealing for the sake of saving $4500.

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