False Marking: A Temporary Flash in the Pan

There are several reasons why the onslaught of false marking litigation should be seen as merely a temporary flash in the pan.

  1. Business Practices: For the past several decades, manufacturers and retailers had become lax in policing the false marking of their products. For the most part that laxity no longer exists. It is easy for a company to take steps to avoid false marking charges and the prospect of litigation now provides sufficient incentive.
  2. Legal Rules Requiring Pleading in Particular: In the case In re BP Lucricants, ___ F.3d ___ (Fed. Cir. March 15, 2011) (on mandamus), the Federal Circuit recently held that a false marking plaintiff must plead the their case with particularity under Fed. R. Civ. Pro. R. 9(b). Rule 9(b) states that “In alleging fraud or mistake, a party must state with particularity the circumstances constituting fraud or mistake. Malice, intent, knowledge, and other conditions of a person’s mind may be alleged generally.” Here, the court held that a complaint must at least “provide some objective indication to reasonably infer” that the defendant had knowledge of the falsity. In the language of Exergen, the false marking plaintiff must provide detail on “the specific who, what, when, where, and how” of the alleged fraud. Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1327 (Fed. Cir. 2009). This heightened pleading requirement seems likely to result in a large number of cases being dismissed – unless the plaintiff has inside knowledge of the manufacturer’s decision making process.
  3. Other Legal Limitations: There continues to be ongoing uncertainty as to what evidence will really be required in order to prove that the manufacturer had intent to deceive the public. In addition, at least one court has held the false marking statute unconstitutional and the Federal Circuit is hearing that issue on appeal.
  4. Likely Low Fine: The courts have not developed any jurisprudence for calculating the fine – other than the obvious notion that the fine must be less than $500 per offense. It is quite likely that the fines eventually assessed will be low. Of course, the problem for defendants is the uncertainty.

76 thoughts on “False Marking: A Temporary Flash in the Pan

  1. OK, now if we get the mechanics of the complaint correct:

    link to chicagoiplitigation.com

    PCG’s amended complaint attaching Patent Office documents identifying the expiration dates of the allegedly expired patents and identifying Brunswick’s in-house patent counsel was sufficient

  2. What would happen if the equivalent of a cease and desist letter were sent out to the alleged false marking offender, providing something like 30 days to stop selling false marked products. Either the alleged offender complier, or does not comply. If not, then could this be used as solid evidence of intend to deceive?

  3. Advertising is also governed by laws and if you choose to advertise, you need to obeys the laws that govern such choice.

    Yes – but different laws, correct?

    And that leads inexorably to the final conclusion that patent laws are different than other advertising laws and thus – my observations are golden – it be you that miss the “mark” – or at least the significance of (P)atent (M)arking.

    Thanks for playing.

  4. Counterpoint:

    link to law360.com

    In part:

    In ruling on the law’s constitutionality, Judge Berman reached the opposite conclusion from another judge who ruled in February that the law’s qui tam provision violated the take care clause of Article II of the U.S. Constitution.

    GlaxoSmithKline made the same argument in its motion to dismiss the Citrucel suit, but Judge Berman was unpersuaded.

    The case is Public Patent Foundation Inc. v. GlaxoSmithKline Consumer Healthcare LP, case number 2:09-cv-05881, in the U.S. District Court for the Southern District of New York.

    Just an (fluffy) observation.

  5. “Patent marking is not a right, but a privilege. If you choose to mark, you need to obey the laws that govern such a choice.”

    We are in agreement in that neither of us really sees patent marking as a species of advertising.

    However, as for the part of your post quoted above – you can substitute “advertising” and “advertise” into the respective sentences and they are still correct statements. Advertising is also governed by laws and if you choose to advertise, you need to obeys the laws that govern such choice.

  6. Still, I think you missed my point.

    No, 3hmp, you missed my point.

    In essence I think we agree that patent marking is not a species of false advertising in so far as patent marking is not a freely done exercise.

    Patent marking is not a right, but a privilege. If youchoose to mark, you need to obey the laws that govern such a choice.

    It really is as simple as that.

  7. Mr. Brooks, good luck with that. Please let us know if your judge goes for the sanctions or not. The fact that district and appeal level federal courts are seriously entertaining the question of constitutionality of this particular statute may give you an uphill battle on this one.

  8. Ping, your point would perhaps make even more sense if only not for that little fact that no constructive notice is required to capture past damages for process patents.

    Still, I think you missed my point. Mr. Brooks likened patent marking to being not more than a species of false advertising. But it’s not. I can’t as a private citizen go sue companies for false advertising, no matter what sort of an advantage they may gain thereby.

  9. Reigning explanation at the moment is more like battered wife syndrome.

    What the sam hill are you talking about, Sunshine?

    Med Check, Med Check – One Med Check for Sunshine Malcolm.

  10. It’s not a non-sequitur, pingaling. You align yourself with any patent-fluffin’ character that comes here. I’m just trying to understand if there is a rational basis for the loving you showered on your Anon buddy. I highly doubt that, but just checking. Reigning explanation at the moment is more like battered wife syndrome.

  11. 3 hundred million. I will be seeking sanctions pursuant to 28 USC section 1927 for the defendant who asserted the unconstitutionality argument in one of my false marking cases. The Prize Cases and Marvin v. Trout long ago decided the issues concerning qui tam. What has happened is that modern law schools do not like teaching the original construct of the Federal Government. It is clear that Congress can control the Executive branch. Just look at the Prize Cases. Quit tam has been held by the Supreme Court of the United States as being appropriate since before the Republic was formed. See Marvin v. Trout.

  12. think there is one salient difference.

    There be another – any other ‘ol advertising is free ta be done (more or less) and don’t carry with it the bountiful benefit of constructive notice.

    So I guess, it be you that miss the “mark” – or at least the significance of (P)atent (M)arking.

    Hey, if they wanna do away with any type of contructive notice benefit and leave all patent marking to be just like any ‘ol advertising, Iza be down with that. Until then though – I dont like people messin with abusin the system by marking when they shouldnt.

  13. (Beg pardon – “stage AG’s office” should be “state AG’s office”. The Office of Typo Corrections regrets this error.)

  14. “… There is no reason for a different result to occur in false marking that when there is false advertising. …False marking has not gone away. It is now where it was intended to be . . . a species of false advertising.”

    I think there is one salient difference. Can you, as a private citizen, sue for false advertising?

    Despite the “any person” language in the Lanham Act, the courts have held this means injured competitors.

    What you can do about false advertising as a private citizen is complain to the proper authorities (stage AG’s office, e.g.).

    So saying that patent marking is a species of false advertising would seem to miss the “mark”.

  15. Labeling a product with expired patents inherently does not deceive the public.

    That fails the laugh test LH.

    It also denigrates the meaning of the word “patent.” “Patent” is supposed to mean somethin special – it aint your everyday marketing tool advertisement gimmick (least wise, it aint supposed to be).

  16. No, they are leaving them on post expiration rather than expend the administrative and retooloing costs to remove them.

    In a few cases, they are including a clearly expired ancient patent for pride purposes.

  17. And no one ever provided an answer that provided the laugh test. Labeling a product with expired patents inherently does not deceive the public.

  18. Malcom Mooney the Answer is simple. It would be the same outcome if the toilet paper said made in USA when it was, in fact, made in China. It is false advertising pure and simple. There is no reason for a different result to occur in false marking that when there is false advertising. One cannot make a material misrepresentation concerning a product. If the patent number is part of the indicia perceived by the customer in the ordinary course of purchasing a product it is presumed to be enterained by the consumer during the decision to purchase. I have already overcome one motion to dismiss based upon this argument. False marking has not gone away. It is now where it was intended to be . . . a species of false advertising.

  19. So, ping, how difficult is it to

    Non Sequitur City – it aint a quesdtion of “how difficult.”

    Keep the “fluffy” chuckles commin, my boy. That way ya dont actually havta comment on what the law atually says (heaven forbid ya do anyting actually substantive).

  20. So, ping, how difficult is it to determine if a randomly picked patent is still enforcedable? Typically, is it:

    1) typically extremely difficult, requiring “special training” in patent law
    2) typically quite difficult, but possible given a small flow chart
    3) typically rather easy, if provided a small flow chart
    4) incredibly easy in almost all cases given one or two simple rules

    You seem to believe it’s (1), based on your statements upthread in support of your new Anonymous buddy.

  21. Sorry if this is a re-post, but…

    Anytime I see a roll of TP with a patent number printed on it, I think it’s a novelty item.

    If I actually ever saw one, I’d buy it and show it to my clients, to prove to them that some patents are actually worth shitt

  22. What does an “average consumer” think…

    Asked and answered already Sunshine – pay attention.

  23. How hard is it to say, “You’re correct, what I initially wrote was sloppy and inaccurate”?

    Lol lol lol lol lol

    no wait,

    Lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol

    You first Sunshine.

    yeah, thought so.

  24. ANdy,

    If you do not want the snark, then dont post such crrp that invite the snark. Really, your post is such subjective crrp.

    Really no plausible way? – Um , no. Clearly, the law deals with changes in status and yep, that includes expiration.

    have turn it into a strict liability – Um no – seriously? because suits are filed, it turns into a strict liability? C’mon dude, get your subjective feelings under control – the scienter requirement aint waived.

    limited to competitive injuries – sure – in the new bill (if it survives). But not in present law (your other buds should pick this up). Ya gotta love: “The informer action is included as additional to an ordinary criminal action” – lolz – additional to.

    Didya notice one glaring absence? – Qui Tam is not mentioned anywhere – relator is. Relator suits are not strictly Qui Tam suits. Geesh – cmon people lets get the terms right (and that includes the courts).

  25. KB As a result, if you have an expired patent on a roll of toilet paper . . . you better watch it.

    So let’s there is an expired patent on a roll of toilet paper. In what way is the “average consumer” deceived? What does an “average consumer” think when they see a patent number on a product?

  26. The statute operates a a curtailment on commercial free speech, which Congress has the authority to prohibit under its enumerated powers. Quite simply it is an anti-puffing statute. Deceptive purpose can be found, in my opinion, if the patent number was displayed in such as manner as to be prominent to the consumer to get the consumer to think that the product is some how more novel or have a unique characteristic. The fact that the validity of the patent can be ascertained by searching a database is irrelevant. Firstly, a consumer should be able to rely upon the packaging to determine the nature of the goods. What you advocate is the same as requiring a consumer to conduct a chemical analysis of the contents of food before they could sue in tort for toxins contained within the food.

    I believe that the analysis that I see is measured by one of ordinary skill in the art. This is the wrong analysis. The statute deals with advertising a product falsely marked. It must be measured in the shoes of the average consumer, or, if you will the likely purchaser. As a result, the courts will borrow heavily from a Lanham Act analysis for purposes of infringement of a trademark. If the likely purchaser would be deceived by the marking then there is liability.
    As a result, if you have an expired patent on a roll of toilet paper . . . you better watch it. If you have it on a new rotor for a centrifuge, well maybe not, becuase that purchaser would be highly sophisticated.

    So you see, you have to abandon the person of average skill analysis for purposes of this statute. Liability must be measured from the shoes of the likely purchaser-otherwise the statute is meaningless.

  27. How hard is it to say, “You’re correct, what I initially wrote was sloppy and inaccurate”?

    Apparently it’s next to impossible for some anonymous commenters.

  28. You’ve just reminded me why I largely don’t like to read the comments or post on this board…you make absolutely no sense whatsoever.

  29. Anon Actually, I am not

    Yes, we agree that you’ve moved the goalpost. But you were wrong in your original comment.

    trained attorneys get patent expirations wrong…even with patents involved in significant disputes

    Yes, everyone makes mistakes and sometimes it can be difficult to determine the exact date on which a patent expires. But that’s not what you said earlier. You said: “it is certainly not easy for someone not specifically trained in patent law [to determine whether a patent remains in force]”

    In fact, as I pointed out to you, in nearly all instances it is incredibly easy to tell if a patent is in force or not and very little “special training” is needed. Does it take “special training” to make macaroni and cheese out of box? I suppose it might, if you’re blind or if you think that ovens are possessed by demons that will slay you if you stand on both feet for more than two seconds. But such special cases don’t change the fundamentally facile nature of the task.

  30. If you look at the legislative history (1952), there is precious little there about the false marking statute. In fact, it’s so brief I can post it right here:

    Section 292 is a criminal statute relating to falsely marking an article as being patented when it was not patented, which is now the present law. But this section revises it and makes a few changes, and also makes it an ordinary criminal action as well as an informer action as in the present statute.

    * * *

    SECTION 292-SECTION REVISED

    Based on title 35, U.S.C., 1946 ed., sec. 50 (R.S. 4901).
    This is a criminal provision. The first two paragraphs of the corresponding section of existing statute are consolidated, a new paragraph relating to false marking of ‘patent applied for‘ is added, and false advertising is included in all the offenses. The minimum fine, which has been interpreted by the courts as a maximum, is replaced by a higher maximum. The informer action is included as additional to an ordinary criminal action.

    1952 U.S.C.C.A.N. 2394, 2403 & 2425.

    Of course, false marking goes way back before the Patent Act of 1952.

    Whatever one thinks of the statute, there is really no plausible way of claiming that Congress meant as a policy matter to have relators sue any and all patentees that left patent numbers on products after expiration. This was supposed to be limited to false marking with deceptive intent, but relators have turn it into a strict liability statute by suing in practically every instance they can find of expired patent marking.

    There can be no question about the intent of Congress expressed in the legislation that just passed the Senate — false marking will be limited to competitive injuries if that bill becomes law. The party is almost over for relators, and it’s only a matter of time until Congress or the Federal Circuit turns out the lights.

  31. “You were wrong.”

    Actually, I am not, and at least one Federal Circuit opinion backs my specific position up. In fact, trained attorneys get patent expirations wrong…even with patents involved in significant disputes. There is at least one example – different from the one mentioned immediately above – of a Federal Circuit opinion dealing with a patent accidentally litigated even though it was expired. The attorney miscalculated the expiration date in that case.

    I’ve given you one example of the complications which arise when calculating patent terms (from the MPEP). I’m not going to post all the additional scenarios for the simple reason that I have a job and can’t spend all my time on here spelling out every nuance of the potential complications for you.

  32. Nice goalpost moving, Anon.

    You wrote it is certainly not easy for someone not specifically trained in patent law [to determine whether a patent remains in force]

    As you now seem to admit, that is simply false. The existence of math-incompetent or otherwise braindead attorneys does not change the incorrect nature of your previous statement.

    You were wrong.

    I’m sure I could train certain high schoolers to write patent applications, interpret patent scopes, and write legal briefs

    Then why don’t you? You could pay them very little and make a lot of money for yourself. Good luck.

  33. Further to my argument, I’m sure I could train certain high schoolers to write patent applications, interpret patent scopes, and write legal briefs…and I’m sure some could do it well. On the other hand, there are some high schoolers…as well as some attorneys…that I wouldn’t trust to perform simple arithmetic correctly.

    But that’s not the point is it? The law, as it exists, is there for a particular reason. It dove tails quite nicely with 35 U.S.C. 287. Mark when your product is currently protected by patent. Don’t mark when it is not.

    Quite simple really.

  34. “Really? Putting patent markings on products only after the patent has expired? I’m not aware of anyone who thinks that this is or should be legal.”

    Yes, really. After abandonments as well. It happens much more frequently than people acknowledge in these debates.

    “Actually a high schooler could be easily trained to do it and, given 1000 patents filed over the past 40 years, he/she would reach the correct answer at least 99% of the time.”

    I’m sure some high schoolers could be trained to do it, but that’s my point…it takes specialized training. I don’t think I’ve ever seen a lay person correctly determine the expiration of a patent, and yet I’ve seen many people (including at sophisticated clients) try. And, then, of course, there are many curve balls and/or unusual situations out there. See this example from the MPEP:

    “Before June 8, 1995, the terminal disclaimer date was printed on the face of the patent; the date was determined from the expected expiration date of the earlier issued patent based on a seventeen year term measured from grant. When 35 U.S.C. 154 was amended such that all patents (other than design patents) that were in force on June 8, 1995, or that issued on an application that was filed before June 8, 1995, have a term that is the greater of the “twenty year term” or seventeen years from the patent grant, the terminal disclaimer date as printed on many patents became incorrect.”

  35. Anonymous Companies are out there creating new patent markings after expirations

    Really? Putting patent markings on products only after the patent has expired? I’m not aware of anyone who thinks that this is or should be legal.

    it is certainly not easy for someone not specifically trained in patent law [to determine whether a patent remains in force] (and certainly not always easy, even for a patent attorney)

    Actually a high schooler could be easily trained to do it and, given 1000 patents filed over the past 40 years, he/she would reach the correct answer at least 99% of the time.

  36. “Having the patent number marked on a product is of great benefit to the public, and thus helps to advance science and the useful arts, if products, even with expired patents, are marked with the patent number. It gives you easy access to looking up patent documents on the technology, and easy access to looking up if the patent has lapsed due to non-payment of maintenance fees, or has expired.”

    Companies are out there creating new patent markings after expirations, not simply leaving those on which existed prior to expiration. Do you really believe that, as commercial entities, they are doing this to help their competition? (I don’t really expect an answer here)

    “With relatively rare exception, it can now be easily determined whether a US Patent remains in force.”

    Although I disagree with your statement from the outset – it is certainly not easy for someone not specifically trained in patent law (and certainly not always easy, even for a patent attorney) – the same argument could be made about patent scope. With the availability of patents online, everyone can now try and interpret the scope of every patent marked on a product. Sometimes determining patent scope with respect to a particular product is easier than calculating the term of a patent, but most times it’s not. So, where do you draw the line? Allow companies to falsely mark as long as its easy to determine that the company is lying with its mark on a fact specific basis?

  37. Good suggestion from Blindman, to think about what might be the public policy objective behind the marking provisions of the Statute. Take Germany, for example. There are marking provisions. They prescribe what your marking benefits are, and what duties you have, when those reading the markings ask you about the status of the numbered patents. They prescribe whether a marking deprives the infringer of an “innocent infringement” defence, and what happens when the patent expires but the marking remains. I expect the judges in the US courts (or the legislators) in due course to find their way to much the same checks and balances. Mind you, the results ought to be better, because the law-makers in the USA now have so much litigation experience to help them.

  38. To: Paul F. Morgan

    You are absolutely correct.
    The False Marking statute in its current form is a relic of the PRE-INFORMATION AGE.

    With relatively rare exception, it can now be easily determined whether a US Patent remains in force.

    Having the patent number marked on a product is of great benefit to the public, and thus helps to advance science and the useful arts, if products, even with expired patents, are marked with the patent number. It gives you easy access to looking up patent documents on the technology, and easy access to looking up if the patent has lapsed due to non-payment of maintenance fees, or has expired.

    While Ping will have some condescending remark otherwise, the whole false marking statute needs to be revisited in context of THE INTERNET and the present INFORMATION AGE and the USPTO instantly available public records. Thinking about the statute it as if it is still 1952, much less the previous century, simply ignores the reality of presently available “free to the public” information. And, requiring product sellers to take patent numbers off of products under the present possible false marking penalty does a disservice to both the public and to the seller.

    Change the statute, and let expired patent numbers stay on products. Perhaps, even encourage it. Try to spread the patent info by not erasing the patent numbers. The public would very soon learn of any such change in the law. Looking up patent numbers and maintenance fee status is a lot cheaper than having to search designs via “freedom to operate” searches and getting opinions on the same. (Maybe that’s what Ping does for a living….)

  39. RE: temporary flash in the pan

    In 1L property law today we were discussing joint tenancies. An important topic that came up was why some grantors would choose to describe their grant as creating a “joint tenancy with rights of survivorship, and not as tenants in common” rather than simply as a “joint tenancy.”

  40. ping whatta ya think “in a nutshell” signifies.

    Based solely on your usage of the phrase, I suppose it must mean “to put it incorrectly” or “to put it in a way that mixes up the issues”.

    ya leaving out the past part of the actual law – the mark is the status

    Not sure what you mean by the “past part”, nor why I should care that you or some other person believes that “the mark is the status.” As I’ve pointed out, the existence of expired marks on products does not “deceive” anyone, at least not anyone that could possibly be injured by the mark.

  41. Andy,

    If ya know enough about the process claim issue, yet don’t know enough about marking basics – ya deserve rudeness. Sides – you tell me how a process claim is going ta be marked. BZZZZT.

    Sides which (part two), ya make the mistake to think that I care that you actually respond (mighty thin skin ya have – for an attorney – if that ya be). There be enough chuckles bein generated from Sunshine, and any chuckles coin from you are probably (cuttin ya some slack here) just made in ignorance. Now Sunshine – he be way past that. And the chuckle factory turns it up cuase he think he be an Elite.

  42. Dude – dont be dense: whatta ya think “in a nutshell” signifies.

    And ya leaving out the past part of the actual law – the mark is the status.

    My how fluffy.

  43. Process claim owners don’t have that burden, ping. They can recover for up to six years of infringement even though the infringer hadn’t the slightest idea the patent existed. This is a burden the system places on manufacturers.

    Separately, I don’t enjoy rudeness in such discussions. If you want me to respond to your questions, you will refrain from insulting me.

  44. The flip side, of course, is that marking does carry a burden with this benefit. That burden, in a nutshell, was that you were forbiddin to falsely mark in order to deceive the public

    That’s not a “burden”, pingaling. That’s a “limitation.”

    The actual burden is that you have to (1) put the mark on your product, and (2) you have to remove the mark and stop further marking when your patent expires or you risk being sued in a qui tam action.

    While the public may be “deceived” in a undesirable manner by a loathesome individual or company who puts a fake patent number on his/her patent for the deceitful purpose of “proving” that the product works (ironically, something that a patent does not actually prove), there is in fact no injurious “deception” occuring to anyone when a patent number printed on a coffee cup lid or a drug turns out to be expired. The reason being that competing manufacturers would never be “deceived” by the presense of such a mark, and it’s trivial for them to determine whether the patent is expired.

  45. Ya see Andy, your view is all sidewise. That be why ya dont get it.

    The connection is that marking is not a freebie – never was. The governmnet allows ya get to mark in order to capture the benefit of constructive notice (you do know that marking is not a right – correct?). This benefit of marking saves you the trouble and time of individually scouring the marketplace and putting infringers on actual notice.

    That is a HUGE benefit.

    Now just because you dont understand the basics of marking surely doesnt change the fact that marking is a benefit.

    The flip side, of course, is that marking does carry a burden with this benefit. That burden, in a nutshell, was that you were forbiddin to falsely mark in order to deceive the public. And since everybody knows or should know that patent rights are for limited times (right there in the Big C), when you put a mark on something, you know that eventually you have to take the mark off. “Oops I forgot” really don’t cut it, specially as that same line when it comes time to paythe maintenance fees every coupls O years results in the loss of your patent rights (funny – how people seem to remember that).

    Just an observation. 6 is bein stingy with his collection of NAL references (dont worry 6 – if ya share them they wont go away).

  46. I’ve never teabagged professionally but I can rightfully say that such a nation as you have suggested would be quite fantastic.

  47. I don’t see the connection there, ping. And I wouldn’t call marking a benefit. It’s rather a burden placed on patentees, else they risk losing the ability to recover for infringement prior to suit.

  48. lolz – ya mean the clinic you are currently visiting for your multiple persons disorder?

    Say hey to her from me and 6.

  49. Andy,

    Are you in favor of getting ridof the benefit of marking just as fast? Ya know, the constructive notice thingie?

    Sounds only fair, right? This way we can stick it to patentee’s even more – make them search out for those violatin their (C)onstitutional (R)ights.

    (casts out the fish line…)

  50. Paulie,

    This has been hashed through before – at quite some length. Dont be actin all Gee-golly-surprised.

    6,

    Do you have NAL’s treatise on this subject fav’ed? I don’t but I should cause she done steal my thoughts and invented her position on this through mental telepathy (a la Mikey).

    As near as I members Paulie, teh thing is that the mark IS the (S)tatus, not an invitation to figure out the status.

    We done see how easy it is for the Office ta screw that up with PTA calcs. Also, other things besides natural term can change the status – like design changes or not payin the maintenance fees.

    The argument against marks helping is that marks be keep out zones – ya know, that treble damage thingie – so it dont quite help the public as it keeps competition from helping lower costs to the public.

    The reason why this been pointed out is covered in NAL’s fifteen page thesis on the subject.

    Since 6′s fantasies revolved around NAL, he should be able to point us to the exact pages of reference material.

  51. I’ve seen the other side… I had a case where the government was the owner of a trademark… they sent in an undercover agents and arrest a person for “trademark counterfeiting”. The fine was $250, and the guy did it totally unknowingly.

    Compare that to “false marking.” Look at both ends of it…

  52. What seems to have been all too often conveniently overlooked by shedders of crocodile tears until now is that:
    (1) 35 USC 292 is NOT violated, and it is NOT illegal, just to have a wrong or expired patent on a product, UNLESS that was done “For the PURPOSE of DECEIVING the public.” [A specific act with specific intent, required by the statute itself.]
    (2) there are two very different possible fact situations: (a) marking a product with a LIVE patent that does not actually cover that product, or (b) leaving a patent number that DID cover the product on subsequen products after the patent expires.
    The former [(a)] MIGHT posibly have the effect [but not necessarily the intent] of “deceiving the public” in some cases? But where is there any case in which anyone was ever deceived by an expired patent? How COULD anyone be deceived, since it is so easy to determine that the patent is expired. To be able to accomplish “deceiving” would seem to require someone who notices the marked patent number to possibly care and act differently, such as a potential competitor being deterred by the marking or assuming the product was was licensed? Ironically, having expired patent numbers on a product actually HELPS the public. It makes it much easier to determine what feature of that product are now in the public domain and thus potentially free to be copied. Why the CAFC has not previously more clearly pointed any of this out to the lower courts to discourage this flood of unnecessary litigation [which it engendered] is beyond me.

  53. And this is a bad thing…?

    I think nearly all informed people would agree that conferring standing to private litigants to sue (and profit from said lawsuit) based only on a defendant’s violation of a law is indeed “a bad thing.”

    That said, I suppose a nation of bounty hunters charged with enforcing all Federal civil and criminal laws is something of a txxbagger’s dream, at least once all the laws the txxbagger disapproves of are removed from the books.

  54. Yes, it is a bad thing that nearly all of the false marking cases are shakedowns. Wishing that the meritless ones are “dealt with properly” is a bit like wishing for world peace. The likelihood of winning Rule 11 sanctions or section 285 attorney fees is very low. Even if a defendant gets them, good luck collecting them from the LLC set up to be the false marking relator.

    The demise of this statute just can’t arrive soon enough.

  55. In other words, Money for Nothin’

    And chicks for free.

    And this is a bad thing…?

    As I have always posited (even though Sunshine has severe memory lapses) – I am all in favor of prosecuting the false marking cases that have merit. As I also posited – those without merit are most definitely not confined to the False Marking realm and all such cases should be dealt with properly.

  56. Yes, Ping, there are a handful of legitimate cases involving actual violations of the false marking statute. It’s hard to spot them among the 800+ shakedowns, though.

    Most cases seem to fit this description:

    1) Send intern or unemployed relative to Wal-Mart in search of old patent numbers on products.

    2) Sue the manufacturer for false marking. It’s a “sophisticated company” that really should have known better.

    3) Offer to settle for nuisance value (which in a patent case is quite a nice plaintiff payday).

    Alternate approach: let someone else do 1-3, then file a copy-cat case in another district, underbid the first guy and cut a deal with the defendant. We’ve seen several examples of this. link to blogs.wsj.com (pp. 27-30).

    In other words, Money for Nothin’ link to law.com

  57. Fluffy non-answer there Sunshine

    Actually it’s a fairly direct answer to your first question. Of course, I can’t possibly know for sure what Andrew is thinking. Maybe he agrees with you. Maybe he was “presummin” that the cases are baseless.

    But I doubt it.

  58. pingaling, it seems to me that Andrew’s saying that the law is silly and is going to be repealed soon, so it would be prudent to avoid settelement.

    You look pretty awesome sitting on that white pony, though. I dig the bells.

  59. avoid paying the ransom

    Interestin choice O words there Andy – kind presummin that all 292 cases (and no matter how many times it be said – 292 aint Qui Tam) be baseless, arentcha?

    Kind just turn a very selective blind eye to the particular law ya dont like, huh?

  60. I agree, Dennis. While I’m very biased on this question, I honestly think the qui tam aspect of false marking is in its twilight. It will likely be repealed by Congress or struck down by the Federal Circuit within the next few months.

    If defendants in pending false marking cases can just hang on a little longer (via a 12(b) motion or motion to stay pending the outcome of the constitutional challenge in Wham-O), they can avoid paying the ransom.

  61. It is easy for a company to take steps to avoid false marking charges and the prospect of litigation now provides sufficient incentive.

    Hmm, incentive to simply follow the law…

    Then the law works, yes?

    although in the absence of potential sanctions against the plaintiffs

    I can only think that ya mean this that bring suit without just cause, Phillies. IN those cases, shouldn’t the Judiciary entail some type of Rule 11 sanction? See the Eskimo for a similar line of thought.

    If, on the other hand, ya just be railing against proper suit – and just dont like the suit – then your sanctimony should be stuffed.

  62. Agreed. If nothing else, the onslaught of false marking suits has and will continue to lead to publicity that will result in fewer items being mis-marked – even if Congress leaves section 292 intact. What I find curious is that in Pequinot, the CAFC said it’s up to $500 per falsely marked item; but it also made clear that the trial court had discretion to set the amount exceedingly low. That second part seems to have been ignored by defendants. A few courts saying that each instance of false marking is worth, oh, 10^-12 cents ($ 0.00000000000001) would take much of the threat out of such suits…although in the absence of potential sanctions against the plaintiffs, it may still be cheaper to settle. God bless the U.S. judicial system.

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