Constitutionality of the Marking Statute

Pequignot v. Solo Cup (E.D.Va. 2008)

Earlier this year, I discussed patent attorney Matthew Pequignot’s two “false marking” lawsuits pending in the Eastern District of Virginia. 35 U.S.C. § 292 is a penal statute and calls for damages of “not more than $500” for each false marking offense.

In an interesting turn, Solo Cup recently moved to dismiss the case based on its argument that Section 292 is unconstitutional. Now, the US Government has filed a motion to intervene and will argue (in support of the plaintiff) that the false marking statute is valid. 

On the other side, Solo Cup argues that the statute gives the courts extraconstitutional power. The statute allows any party to sue and collect half of the statutory reward, but the statute does not explicitly provide that the private lawsuit be filed on “behalf of the US Government.” These two facts lead to Solo’s argument that the court lacks Article III jurisdiction. (And that Congress had no power to enact the statute – leading to separation of power problems). 

Pequignot response will likely win the day: “given that qui tam statutes are older than the Republic, Solo fails to cite even one judicial decision holding that such provisions, including § 292, violate the Separation of Powers doctrine.”

According to the USDOJ brief, the same issue has been raised in two other pending cases: Harrington v. CIBA Vision Corp., No. 3:08cv00251 (W.D. N.C.) and North Carolina Farmers’ Assistance Fund, Inc. v. Monsanto Co., et al., No. 1:08-cv- 409 (M.D. N.C.).

23 thoughts on “Constitutionality of the Marking Statute

  1. 23

    Hey Ackh! Me retirement grease,
    My Adobe® Reader® 9 states “Protected by U.S. Patents 4,667,247…” There should be enough promise there for you to take down your shingle.

  2. 22

    Paul F. Morgan,

    Check out pages 1352-3. Intent to deceive is subjective, but is established by two objective criteria: 1) fact of misrepresentation; and 2) proof that the mispresenting party had knowledge of the falsity. This is “enough to warrant drawing the inference that there is fraudulent intent.” And the court then says that knowledge of falsity can be shown by prepond. of evid. that the party had no reasonable belief the articles were properly marked, which should be easy to show in the case of an expired patent (it was reasonable for them not to know their patent was expired?!?)

    Admittedly, Clontech isn’t about the expired patent issue, but that question (whether products marked with expired patents are “unpatented articles” under 292) is clear from courts like E.D. Va. (Pequignot) and S.D. Tex. (DP Wagner).

    As for the language you cite from Clontech, that’s totally consistent with above. In that portion of the opinion, there was an issue of whether those particular products were covered, and thus were not “unpatented articles,” so the case was remanded. There’s no such question for expired patents, however.

    Finally, take a look at 1356-57, where the court disposes of the “no harm, no foul” argument and lays out the policies behind 292.


  3. 21

    Since an above commentator instructed me to read the [2005 Fed. Cir.]Clontech Laboratories decision, I did. I did not find it relevant, or even clear. Apparently UNexpired patents in suit had their numbers marked on the patent owners products, which patents knowingly, and admittedly, were not covering those products. Even then, I did not see any [alleged] legal discussion of “implied intent.” And what is to be made of the following language from this decision on “intent”?
    “Moreover, assuming that these questions are answered in the negative, review would be facilitated by findings on Invitrogen’s intent as it relates to these products. Unfortunately, these issues receive no attention in the opinion of the trial court making futile our attempt to fully review the judgment that kits were falsely marked. Therefore, to the extent the trial court based its judgment of false marking of the kits on its findings that SS and SSII failed to meet the “substantially no RNase H activity” limitation, the judgment is reversed.”

  4. 20

    I’m surprised the parties missed the most recent qui tam statute: 17 USC 1326, passed only ten years ago and mimics the language of 292.

    Has anyone even seen such a design copyright marking?

  5. 19

    My Jack Frost® Gel-Pack (cold/hot pack for injuries or soreness) has the following marking:

    U.S. Pat. Nos. 4,756,311; 4,920,964 (Validity of U.S. Pats. on appeal)

    Is that thorough enough marking? Perhaps it should have read:

    (Validity of U.S. Pats. on appeal of unenforeability judgment; we think the district judge erred on the materiality issue; our attorneys estimate a 20% chance of winning the appeal; Jeez, patent litigation is expensive; $2 per page for a fax? WTF?)

  6. 18

    I realize that one can often find a witness somewhere to testify to almost anything, but I will be interested in who is going to testify that they were mislead into buying one particular source of cheap disposable plastic cups by the expired patent numbers on their bottoms.
    [That is not the same thing as selling “patent medicine,” for example]

  7. 17

    Ackh! Me retirement grease! 35 USC 292 sits as the secret retirement cache of many pantent attorneys. After a successful career as a patent attorney, the plan is to find some poor sap printing false patent markings on their products (a not so hard thing to do.). Then, sue them and collect $500 for each item that has a false marking offense. Settle for a quick $3,000,000 and move to Rio.

  8. 16

    On extended consideration and before Mooney pulls his gun and starts blowing away my prior comment:

    the use of 35 U.S.C. § 292 to discourage a from patentee putting notice of a valid patent on products not covered by the patent is, of course, valuable and necessary. But that needs to be spelled out in the statute with explicit reference to over-stepping patent scope.

  9. 15

    35 U.S.C. § 292 is another of the many, many US patent statutes in need of over-hauling.

    First, like 35 U.S.C. § 112, Congress didn’t have the wherewithal to identify the paragraphs, so the world wastes a lot of time, ink and valuable keystrokes writing “First paragraph,” “second paragraph,” etc. No wonder there’s so much repetitive stress injury.

    292(a) first paragraph seems a very reasonable law. No issues there. But this litigation is about the second paragraph, which applies not to pirates, but to patentees. That paragraph punishes patentees for marking “unpatented” products and needs badly to be revised or eliminated.

    In 1870 when it was written, the second paragraph served a purpose because there was no way for the public to determine if a patent had expired without schlepping to the Patent Office and pulling the shoes — or paying someone to. So patentees could scare off competitors fairly easily. Now all you have to do is grab your bifocals and fire up the computer — it’s a 30 second deal.

    There is no longer any possible public purpose that I can see for penalizing a patentee for stamping the patent number on the product after the patent expires. It’s just an invitation for qui tam blockheads to start screwing people.

    The law is suspect for a number of reasons. What does “unpatented” mean in the context of paragraph two, i.e. a patentee? Once patented but no more? Patent invalidated de novo? Not within the scope of the claims of existing patent? Any law this vague belongs in the trash can, especially when combined with a qui tam paragraph.

    Finally, clearly if you stamp the patent number on 30 million pieces on Dec 31 and the patent expires on Jan 1, you’re go to go because the pieces were not “unpatented” at the time they were marked. So what’s the present 21st century point of the second paragraph? To encourage large inventories?

  10. 14

    Paul F. Morgan,

    Have you read Clontech? Intent to deceive can be inferred if the patentee had no reasonable basis to believe his marked article was properly covered by at least one claim of each patent listed. And waving your hands saying “I acted in good faith” won’t suffice.

    Why should any competitor have to pay a patent attorney one cent to research a marking that should never have been placed? And how can the expired patents help to design around? If they are expired, no design around is necessary. Additionally, potential purchasers can also be deceived by the marketing value of having a “patented” product. Again, the policy behind 292 is spellled out cleanly in Clontech.


  11. 13

    Assuming the final decision in this case goes to the CAFC, it would be nice if some of these issues OTHER than the Consititutional issue, (like the meaning of “each offense”) finally get clairified.
    But since 35 USC 292 requires proving that the incorrect patent marking is “for the purpose of deceiving the public” why are such cases not disposed of on summary judgement motions on that basis, since it it highly unlikely that credible evidence of such “deception” can be provided, especially for EXPIRED patents. The only possible effective deception could only be of a potential competitive manufacturer, the only member of the public with any interest. But a potential manufacturer, unless just oblivious to, or otherwise unconcerned by, the product marking, would obviously ask a patent attorney to check it out, and promptly get enlightened.
    EXPIRED patent number markings are actually be publicly HELPFUL. They can provide additional assistance for “designing around” potential infringement suit risks, and thus help provide competitive products for the public with those expired patent features faster.

  12. 12

    Money Saver,

    To answer your question, I think that yes, there would be a legitimate claim under 292. See the Pequignot opinion re 12(b)(6) from last spring, and Clontech. Marking with expired numbers is problematic.

    Even more so with your admission that it would require “crystal-balling” as to scope. That’s precisely the type of activity that should not be externalized onto the public and would-be infringers, but rather should be internalized by the patentee who wants to get the benefit of the patent. The Federal Circuit in Clontech gives these precise policy reasons.


  13. 11

    Hey, I have a practice question on marking:
    my client polices when to drop expired patents, so he is OK there, but …

    He groups his products by family, and he does one patent notice for every product in each patent family, saying “This X-family product is covered by at least one of the following US patents: [list of 5 to 10 extant patents]”

    To do otherwise would be crazy burdensome on costs & SKU’s, and it would require a lot of crystal-balling on the scope of each patent.

    Would Pequignot have much of a legitimate claim? I don’t see how he could show an intent to mislead.

  14. 10

    In their concurrence, Justices Stevens and Ginsburg quote Warth v. Seldin. This case was cited by Solo on pages 8-9 (and footnote 11) in their brief.

  15. 9

    One “private attorney general” case adressed by the Court in Part II of Nike v. Kasky found here:

    link to

    Here is the language from a concurring opinion by Justices Stevens and Ginsburg:

    “The second reason why, in my view, this Court lacks jurisdiction to hear Nike’s claims is that neither party has standing to invoke the jurisdiction of the federal courts. See Whitmore v. Arkansas, 495 U. S. 149, 154-155 (1990) (“Article III, of course, gives the federal courts jurisdiction over only ‘cases and controversies,’ and the doctrine of standing serves to identify those disputes which are appropriately resolved through the judicial process”). Without alleging that he has any personal stake in the outcome of this case, respondent is proceeding as a private attorney general seeking to enforce two California statutes on behalf of the general public of the State of California. He has not asserted any federal claim; even if he had attempted to do so, he could not invoke the jurisdiction of a federal court because he failed to allege any injury to himself that is “distinct and palpable.” Warth v. Seldin, 422 U. S. 490, 501 (1975). Thus, respondent does not have Article III standing. For that reason, were the federal rules of justiciability to apply in state courts, this suit would have been “dismissed at the outset.” ASARCO Inc. v. Kadish, 490 U. S. 605, 617 (1989).2.”

  16. 8

    Isn’t this action the same as a “private attorney general” action? If so, I seem to remember that Justice Scalia and other members of the Court disfavored such action unless specifically created a few years ago (don’t know the name of the case).

  17. 7


    Have you provided a link to the Pequignot response? If not, could you please orovide? Thanks.

  18. 6

    False Marker –

    Many thanks for the clarification. I honestly re-read (I’m operating on the assumption that I had previously read it) Article III and didn’t find anything other than the court jurisdiction 6000 mentioned above. This makes MUCH more sense now.

  19. 5

    That makes more sense False, DC’s summary didn’t make sense as to why courts would not have jurisdiction.

  20. 4

    Here’s the succinct statement of the constitutional question at issue (as found in the May 1 motion):

    “In short, Solo’s Take Care clause argument, raises a constitutional question relating to 35 U.S.C. § 292; namely, does the fact that a private party may pursue a section 292 action violate the Take Care clause of Article II of the United States Constitution.”

  21. 3

    DC — you may want to post the May 1, 2008 motion of the US where they outline their rationale (acknowledging the Constitutional issue despite SoloCup not having argued outright for unconstitutionality).

  22. 2

    These DOJ attorneys need to improve their proofreading: “Thus, the United State respectfully suggests…” (page 2 of motion to intervene)

    What is this United State, of which you speak, DOJ?

  23. 1

    A few corrections, DC:

    1) It’s the United States (i.e., the Department of Justice) that has decided to intervene, not the PTO;

    2) Solo’s constitutionality argument is based on Article II, not Article III. Because, they say, 292 lacks any method by which the Executive branch can enter and manage the case (contrast to the qui tam statute of the False Claims Act), it violates the Take Care clause of Article II.

    Still, very interesting.

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