False Marking: Solo Cup Properly Rebutted Presumption of Intent to Deceive

Pequignot v. Solo Cup (Fed. Cir. 2010)

Over the past year, hundreds of companies have been sued for false patent marking. The qui-tam style statute creates a cause of action against manufacturer who, with intent to deceive the public, mark unpatented products as patented. Any person may sue to collect the damages, however, half of the award goes to the Federal Government. Damage awards may be awarded up to $500 per falsely marked article.

35 USC 292(a): 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.

Most of the pending false-marking cases have a similar factual underpinning: The product being sold is marked was covered by a patent, and the manufacturer continued to mark the products as patented even with knowledge that the patents had expired. Solo cup made two separate arguments as to why these facts are insufficient to prove false marking: (1) that a product covered by an expired patent is not “unpatented” as required by the statute; and (2) that the fact of patent expiration is insufficient to show an intent to deceive the public.

Unpatented Article: Without question, a patented article is “unpatented” once the associated patents expire.

As the district court pointed out, “[a]n article that was once protected by a now-expired patent is no different [from] an article that has never received protection from a patent. Both are in the public domain.”

The court recognized that expiry dates are often difficult to calculate:

[D]etermining the expiration date of a patent can, at times, be difficult. The date of the patent grant is shown on the first page of a patent, but its term currently also depends on the date it was filed; in 1994, the effective term of a patent changed from seventeen years commencing at issuance to twenty years from filing. Furthermore, the term depends on whether there are patent term adjustments and whether the patent owner has paid maintenance fees. Thus, as with a never-patented article, an article marked with an expired patent number imposes on the public “the cost of determining whether the involved patents are valid and enforceable.”

Solo’s products that were once covered by now-expired patents are therefore “unpatented” within the meaning of the statute.

Rebuttable Presumption of Intent to Deceive: On appeal, the Federal Circuit held that a rebuttable presumption of intent to deceive is created when a manufacturer prints expired patent numbers on its products with knowledge that the patents are expired. However, this level of evidence leaves only a “weak” the presumption of intent that can be easily rebutted.

Here, the Federal Circuit agreed that Solo Cup did indeed rebut the presumption by providing “credible evidence that its purpose was not to deceive the public.” In particular, the court held that rebuttal evidence was provided by Solo Cup’s “good faith reliance on the advice of counsel” (who said that Solo need-not remove the expired patent listing) and “out of a desire to reduce costs and business disruption.”

Holding: No violation.

This decision will put a damper on the false-marking claims. However, some defendants may not have the same advice-of-counsel excuse.

78 thoughts on “False Marking: Solo Cup Properly Rebutted Presumption of Intent to Deceive

  1. 76

    Well for one thing, anyone can call for an examination at any time under the reexamination statute. I am not sure this is available in Canada.

    In Canada, anyone can request regular examination of any published application, if they’re willing to pay the exam fee. That wasn’t my point, though.

    What’s the big advantage of having a registration system for unenforceable unexamined patents, when we could just let them sit in the PTO as unexamined published applications with the same effect?

    It sounds like Congress could effectively implement your system by amending Section 131 to add “when requested by any person and upon payment of the prescribed fee” before the semicolon. Which is good, because it simply gives applicants an option, and it doesn’t look like a big scary overhaul of the patent system.

  2. 75

    reexamination is immediately available to anyone, at any time. The ambiguity can be settled.

    Just like it can be settled with regular examination Ned? OR is Re-exam somehow different than exam? Wasn’t the start of this thread having to do with the ineffectiveness of exam to take away the ambiguity?

  3. 74

    Well for one thing, anyone can call for an examination at any time under the reexamination statute. I am not sure this is available in Canada.

    The problem always identified with deferred examination is that the application just sits there threateningly, like the Sword of Damocles, with the public unsure of its scope and with no remedy whatsoever. However, with the system suggested, reexamination is immediately available to anyone, at any time. The ambiguity can be settled.

  4. 73

    They wouldn’t have to be expedited if they were the only examinations going on.

    I wonder what the practical differences would be between the registration system you propose and, say, the usual 18-month publication with a Canadian-style 5-to-20-year deferral of examination.

  5. 72

    IANAE, if a member of the public really wanted to know the scope of the unexamined patent, he or she could request (re-)examination at any time. Now if reexaminations, which by statute have to be expedited, would actually be expedited, the system just might work for both patent owners and the public.

  6. 71

    registration would be the ultimate form of deferred examination, provided we required actual examination before they could be enforced,

    That’s a really interesting system. I suppose the main disadvantage would be that you’d never know what an unexamined registration was intended to cover, because it presumably wouldn’t have any meaningful claims. The alternative, asking patentees to commit to claims without search or examination, would probably be unworkable.

  7. 70

    MaxDrei, the more you describe the English patent system the more I like it. I wonder why you Brits lowered yourself to join the EPO, or at least insisted that the French and Germans learn something about patent law from you guys before they crafted their utopia?

  8. 69

    Actually, registration would be the ultimate form of deferred examination, provided we required actual examination before they could be enforced, i.e., no damages until the PTO issued an examination certificate. If one considers the savings on attorney fees, this might be a very low cost alternative that many would pursue.

    One of the benefits of deferred examination, of course, is that the prior art is more reliably published. A second benefit is that one examines the patent with an infringer in mind. Good for the patentee. Not so good for the infringer.

  9. 68

    does that not fit with having the PTO do a thorough examination of obviousness, up to a preponderance standard of evidence?

    It’s certainly one approach. I do like the PTO as a finer filter, whether or not inter partes opposition is a part of that filter. The more questions we can keep out of court, by answering them at the PTO in a way that doesn’t require revisiting, the better the system will work for everyone. Except the litigators, but I’m okay with that.

  10. 67

    The English patents judges regard inter partes opposition proceedings at the EPO as a coarse filter, with discovery and x-exam in the English courts as a finer filter of what is valid. IANAE, does that not fit with having the PTO do a thorough examination of obviousness, up to a preponderance standard of evidence?

    ping, remember, you don’t do answers.

  11. 66

    Does it make any sense to give the “full treatment” only to those that are asserted, after they are asserted?

    Granted, the current approach is resource-intensive, but considering that a registration system has been tried before I presume that’s not what we’re after.

    If we could achieve the theoretical ideal of having the PTO do a complete assessment of patent validity, so that the courts would barely have to consider the question at all, that would save more than enough in legal overhead to pay for the extra PTO staff. That’s probably never going to be possible because a litigator on a litigator’s budget will always find more art and arguments than a prosecutor or an examiner, but I think it’s the right direction to be aiming.

    Also, a reasonably thorough examination on as many issues as possible results in narrower claims, which means less litigation over products that fall within the scope between (for example) novelty and validity.

  12. 65

    Curious–I once asked this question (“Why doesn’t the PTO print the expiration date of the patent on the first sheet of the patent?”) of someone at OIPE and (IIRC) they said it was because there are so many factors that can affect the expiration date that it would be 1) complicated to determine and 2) potentially misleading–for example, if later on maintenance fees were not paid.

  13. 64

    Does it make any sense to give the “full treatment” only to those that are asserted, after they are asserted? That would be an efficient use of scarce resources, wouldn’t it

    Does it make any sense to do what the UK used to do until forced to conform to the mainland European norm, namely examine novelty rigorously, pre-issue, but leave obviousness for the courts?

    Or is it better to have a registration only system?

    Or is it better to “do” obviousness on every app, every time, pre-issue? If yes, will you decide obviousness at that early stage using the secondary indicia favoured by the courts? Isn’t it fairer on the inventor to leave that till later?

  14. 63

    Ned: She makes a convincing point that many patents will never be enforced and will never need full examination. Giving every patent application the same “cadillac” treatment makes no sense.

    Many people will never be involved in a car accident. Why should they all wear seat belts and have expensive air bags in their cars? Why should all their Cadillacs get the USPTO treatment?

    If you can reliably figure out in advance which patent applications will be enforced and which won’t, I’ll go you one better and suggest we not examine the second group at all. It would require a statutory amendment, but it’s totally worth it.

  15. 62

    Maxie,

    Your sense of “balance” reminds me of the joke about being equal.

    I have no problem being equal, as long as my “equal” is a better “equal” than your “equal”.

    Your classification of the C+C as inordinate is simply wrong. You don’t like the C+C for whatever reason (your slavish adherence to EP principles) and you are jealous of how much better the competing US patent is. You have been repeatedly called on your attempts to push for changes that weaken the US patent and admit that the US patent is better, but you never seem to be able to make such admissions.

    Face it – we be better (warts and all).

  16. 61

    ping, do I understand you right, that the “best” for you is what is inordinate? I had always thought that stability comes when there is balance.

  17. 60

    Maxie,

    inordinately potent

    As my pal IANAE would say, that’s a feature, not a bug.

    Ya keep saying it be wrong – I keep correcting you. Ya cannot seem to grasp that be one reason why the US patent is the best in the world – your jealousy keeps getting in your way.

  18. 59

    To Anon and Ned I would offer the term “potency” by which I mean “intimidatory power”. As of now, with The Presumption of Validity, following nothing more than ex parte PTO examination, renders a duly issued US patent inordinately potent. At least in the unpredictable arts, that presumption is misplaced and undeserved.

    When an issued patent has survived inter partes assaults on its validity it should enjoy the potency of a Certificate of Contested Validity. But not before.

    Potency should be proportionate to the level of confidence one can place on the validity of the claim.

  19. 58

    anon, you do have a point there. However, we do have reduced fees for the less affluent now. I think they should be retained.

    As to your other points, I suggest you read the good professor’s piece linked in the Osenga thread. She makes a convincing point that many patents will never be enforced and will never need full examination. Giving every patent application the same “cadillac” treatment makes no sense. Conversely, giving every patent application little or no, or greatly delayed treatment makes no sense either.

    Osenga propose a compromise. I agree with her.

  20. 57

    This post is covered by zero or more of the following patents: ….

    I had something like that in my draft post, but then saw someone else had it. However, “out of a desire to reduce costs and business disruption”, I decided to leave it in my post as I found the effort to go back and erase it too great, would cause wear and tear on my computer keyboard, and affect future depreciation and value of my post, the items I used to generate the post and other post like it, and a likelyhood of loss of revenue due to the time I spent erasing it and not working on other matters.

  21. 56

    A Plurality wrote, “This post is covered by zero or more of the following patents: ….”

    Dang.

    Wish I’d thought of that.

  22. 55

    Ned,

    If we are opening changes up to a no-holds-barred, Congressionally-required forum, I think your suggestions still have major problems.

    Ping alludes to a “sport o’ kings”. Any time you make the power of a patent right contingent on spending more, you invite the powerful and wealthy to become more so. This alignment of a more powerful patent with higher fees goes against the long established policy of promoting the use of patents by the common man.

    You are falling to the temptation of trying to deter use of the patent system. The problem isn’t too many patent users – the problem is that the Office hasn’t scaled to accommodate the increase in patent system users. The very nature of “promoting” means that we should expect more than a geometric increase in use of the Office – it’s a sign that the philosophy is working.

    We need to shelve the “scarcity” attitude. It is a poison to the system, and a sibling to the anti-patent fever.

  23. 54

    ping, no. I suggested in a previous post that Congress probably would have to authorize this.

  24. 53

    Ned,

    So much bullocks – sport o’ kings, hard limits o actions – did you sleep through the claims and continuations debacle?

  25. 52

    Cy Nical,

    Why of course, self-selecting.

    Those applications requiring a high quality, high priority examination would require a very high fee, preferably by claim, so that the problem of numbers of claims would be self regulating.

    Uncle-Scrooge type applications would be given a much lower fee — much much lower — with a very limited time to search, and with a hard limit of just two actions on the merits and no after-final amendments except those suggested by the examiner to place the application in condition for allowance. These applications could not be appealed directly — they would first have to be examined on the high quality track before they could be appealed. In other words, a dissatisfied Uncle Scrooge applicant would have to file an RCE and pay the high quality fee in order to potentially appeal, take the claims allowed, or file a low cost, low priority RCE.

    A low priority Uncle Scrooge application should not be taken up for examination, on average, before a specified number of high priority applications filed at the same time were taken up.

    Just some thoughts on how to do it.

    BTW, most applications now are given the Uncle Scrooge treatment even without the rules requiring such.

  26. 51

    We truly need to place patents that need prompt and full examination in a separate queue entirely.

    And these patents would be those filed by your clients, I presume? Who are filing them solely to benefit humankind?

    How do you propose to sort out the “Uncle Scrooge-like patent applications” from the virtuous ones, other than by allowing the filers to self-select by paying more? Or are you simply proposing that IBM’s applications should be processed last?

  27. 50

    Ned,

    “The London Economics study illustrates…”

    Bah – how unscientific (if you listen to certain folks here).

  28. 49

    The below post probably belongs in the multi-track threads, but it does deserve a comment.

    There are companies like IBM who use patents like Uncle Scrooge uses gold — to add to the pile. The size of the pile is what’s important.

    But since Uncle Scrooge-type companies file so many patents, they tend to clog the system, absorbing critical and expensive national resources for marginal public or private benefit. This argues heavily that Uncle Scrooge-like patent applications need to be sidetracked as much as possible, and examined minimally, whatever minimum examination the statues will allow, as suggested by the good professor. If later the patent becomes the source of a dispute, it can be reexamined.

    We truly need to place patents that need prompt and full examination in a separate queue entirely. The problems associated with not doing so are set out below. The patents that need full examination now should be given both expedited examination, but also they should be given Cadillac searches.

    So how can we set up two queues? Probably we need legislation, but certainly the Director may be able to do something close to ideal using his own authority.

    Kappos, you are moving in the right direction here. But listen to Osenga. She is right.

    “The United States is leaving billions of dollars in potential economic growth on the table every year because of the massive backlogs at the Patent and Trademark Office. The estimated $6.4 billion loss, calculated by London Economics, a British research group, dwarfs that of other nations and for the first time puts the problem into perspective.”

    link to jsonline.com
    Posted by: PTO problems | Jun 10, 2010 at 10:44 PM

  29. 48

    This post is covered by zero or more of the following patents: ….

  30. 47

    Sorry Cy, I was shooting from the hip.

    How about simply “is covered by one or more of the following patents”

  31. 46

    Lionel: “The accused infringer would have to have some showing that the patent holder knew. What level that is I do not know. ”

    Most of the complaints I’ve read are charging hard at getting the lower court judges to essentially impute this knowledge on the basis of “shoulda known” because the companies are “sophisticated” and have in-house legal departments. This seems to be getting most of the plaintiffs through motions-to-dismiss despite there being no other “scintilla” of evidence in this regard.

  32. 45

    Hmmm..,

    Sorry, you are correct. I was a little sloppy there.

    The accused infringer would have to have some showing that the patent holder knew. What level that is I do not know.

  33. 44

    Lionel Hutz wrote, “Ping, the courts did not confirm that. They said marking with an expired patent raises a rebuttable presumption.”

    Lionel, Ping, the CAFC did NOT say that. It said that knowingly marking with an expired patent number raises a rebuttable presumption.

    If a plaintiff files a complaint on one of a company’s 469 products noting that the patent marked thereon expired March 27, 2010, what sort of showing of knowledge on the part of Company would be necessary to shift this production burden?

  34. 43

    But What About asked, “What about licensees that are required to mark products with the licensor’s patents? Can intent really be attributed to the licensee since the licensee arguably has no obligation to determine when a patent expires?”

    Taking your questions in reverse order: I’d argue that the licensee DOES have the obligation to determine when it expires. Licensee can even enlist Licensor’s aid in this matter.

    Going to your first question, though, may be trickier. Many times in litigation settlement the patents of both parties are cross licensed and both parties are obligated to mark their products appropriately. But no one ever wants to admit in such settlement agreements that their own product actually infringed the other’s patents, so the markings turn out like, “Protected by [my own] U.S. Pat. Nos. 123… [and] licensed under [other guy’s] U.S. Pat No. 456…”.

    So, will the “wiggle language” of “licensed under” save Licensee from an allegation of false marking where it turns out Licensor’s patent does NOT in fact cover the product? It’s factually correct, isn’t it?

  35. 42

    Big Lebowski wrote, “Nice that costs were awarded to Solo. Since we already know from Forest that the penalty per item can set extremely low, some of serial false marking plaintiffs may collect a smidgen from the defendants, but all it will take is a loss in one of those cases for the plaintiff to get hit with the full weight of defendant’s costs, which will probably outweigh all of the plaintiff’s gains in those other suits.”

    Outweigh? No weigh. ;-)

    I guess you wouldn’t know this if you didn’t have experience with litigation, but “costs” do not equal “full weight” of much of anything. Attorneys fees in particular are not “costs”.

    Also, note here costs were awarded because it was clear from the get-go that the Pt. simply didn’t have a leg to stand on when it came to intent. It’s not as if there was some real question of law here – instead, he was asking the appellate court to set aside the factfinder’s findings. It’s still his right to appeal, but he can at least face the (small) consequences of pushing for his rights under bad circumstances (i.e., getting costs assessed).

    Watch when Stauffer gets his appeal. Here’s an unsettled question of law. No costs will be assessed.

  36. 41

    I have logic and reason on my side.

    No, you do not. The court clearly states the inference is valid and focuses on the rebutting of that inference. All your “carefulness” cannot salvage your viewpoint.

    Have you been taking reading lessons from certain numbered examiners who like to post here?

  37. 40

    thought

    No, Run on old molds for six months, they don’t turn into pumpkins exactly on the 5 year mark, or drop the label from your product 6 months early. There’s probably 6 months supply in the pipeline anyway.

  38. 39

    Hypothetical: Molds need to be replaced every five years. Six months before a patent expires, the mold is replaced.

    Question: Should the manufacturer be allowed (no finding of intent to deceive) to use the “new” mold for 4.5 years? There would be significant expenses to replace it.

  39. 38

    Ping,

    I have logic and reason on my side. I believe you need to read the case a little more carefully.

  40. 37

    So you can do anything you want, say something is patented when it isn’t, torture people….what ever…as long as you get a lawyer to say you can?

    Anybody willing to tell me I can drive 85 is a 60?

  41. 36

    Also, it gets a little tiring when people cannot see beyond their personal interest and be objective.

    Ya mean like you are doing?

    And the court expressly did confirm the inference. No two ways about it. It is not a semantics thing unless you refuse to actually acknowledge what the court said. Then again, ya kinda havta in order to keep your world view intact.

  42. 35

    Ping, the courts did not confirm that. They said marking with an expired patent raises a rebuttable presumption. I wouldn’t equate that with an inference of fact, but perhaps that is a matter of semantics.

    Also, it gets a little tiring when people cannot see beyond their personal interest and be objective.

  43. 34

    Of course, if the patents judges had had, pre-bench, 20+ years of experience as patent litigators, plotting victory in rooms that used to be “smoke-filled”, as much for clients accused of patent infringement as for patent-asserting clients, they would then relibly make business-oriented, tough but sensitive, real world decisions. At least, that’s my experience in English patent litigation. Appeal Court judge Robin Jacob, for example, reminds us that whether a gun is good or bad depends on whether its barrel is pointing at you or away from you. Is that aspect an aspect of English patent litigation that can translate to the USA?

  44. 33

    From the case:

    “Instead, Solo has cited the specific advice of its counsel, along with evidence as to its true intent, to reduce costs and business disruption. Moreover, the policy Solo adopted conforms with its stated purpose. Rather than continuing to manufacture mold cavities with the expired patent markings, Solo took the good faith step of replacing worn out molds with unmarked molds. Solo also provided unrebutted evidence that it imple-mented and followed the policy.”

    This is what rational people have been saying since Solo was decided. There is a very real and large cost associated with not marking.

    I believe being able to show a genuine business cost and the taking of steps to stop marking should insulate a company in view of this decision.

  45. 32

    I also believe counsel’s opinion is entirely unnecessary. Leaving a patent on simply due to a real business cost to remove (and shutting down a production line is a real business cost for all you litigators) should be reason enough.

  46. 31

    The statute also applies to advertising. If a company has a, e.g., European patent covering a product but not a US one and the company simply claims in its US-run advertising that the product is “patented”, is this deceptive?

  47. 30

    What about licensees that are required to mark products with the licensor’s patents? Can intent really be attributed to the licensee since the licensee arguably has no obligation to determine when a patent expires?

  48. 29

    What if a company continues to mark a product with a patent number after they have filed a reissue for the patent? Intent to deceive or just sloppy?

  49. 28

    “The United States is leaving billions of dollars in potential economic growth on the table every year because of the massive backlogs at the Patent and Trademark Office. The estimated $6.4 billion loss, calculated by London Economics, a British research group, dwarfs that of other nations and for the first time puts the problem into perspective.”

    link to jsonline.com

  50. 26

    So now with the holding in this case, counsel will in the future never advise that expired patents need not be removed, right?

    They “need” to be removed, as it was just decided that the articles are no longer patented once the patents have expired.

    That rebuttal evidence will therefore not be available to future defendants in false marking cases that involve expired patents, making it harder for them to escape liability.

  51. 25

    “It’ll be interesting to see if those patent law equivalent of ambulance chasers now decide to fold up and go home, rather than risk being hit with costs.”

    I think you’re confusing “costs” with attorney fees.

  52. 24

    Nice that costs were awarded to Solo. Since we already know from Forest that the penalty per item can set extremely low, some of serial false marking plaintiffs may collect a smidgen from the defendants, but all it will take is a loss in one of those cases for the plaintiff to get hit with the full weight of defendant’s costs, which will probably outweigh all of the plaintiff’s gains in those other suits. It’ll be interesting to see if those patent law equivalent of ambulance chasers now decide to fold up and go home, rather than risk being hit with costs.

  53. 23

    No kidding. He needs to put down those oil sponges and get these machines retooled pronto!

  54. 22

    Why is President Obama wasting time on that oil spill when more important things like this desperately need to be addressed? It’s a travesty!

  55. 20

    Strict liability is the way to enforce this qui tam law

    Clearly not, since this qui tam law explicitly includes an intent requirement.

    It is utterly laughable for any Defendant or his mouthpiece to posit that the continued use of expired patents is anything other than (1) a knowing attempt to entice (deceive) a consumer or (2) a knowing attempt to threaten (deceive) a competitor.

    Clearly not, since there are legitimate business reasons to continue using existing molds with the patent number on them after the patent expires. An intent to save manufacturing costs is very different from an intent to deceive consumers or competitors.

    Now, if you order a new mold with the patent number on it after the patent expires, you have a problem.

  56. 19

    This should kill the vast majority of marking-troll suits, since the vast majority were for patents that had covered the product before they expired, with even better “no intent to deceive the public” facts than this case.
    Namely, the more typical cases where the attorney who counseled the markings is long gone and the patent numbers was left on by accident simply because no one using the dies or looking at product packaging ever thought to ask a patent attorney, so no patent attorney ever even knew about it. Furthermore, even if one looked at a product for patent numbers, unless it is really old just looking at a patent number does not tell if it is expired any more. As this court notes, it is now [suprisingly] difficult to accurately determine patent expiration dates in many cases.

  57. 18

    Dear IANAE:

    Strict liability is the way to enforce this qui tam law–we can let Defendants and their patent attorney’s resolve who’s responsible for payment of the fines through malpractice suits–if anybody needs a patent attorney Affidavit of Merit and trial testimony against Dewey, Cheatem & Howe, I’d be more than happy to oblige at the same billable rate charged by DC&H.

    It is utterly laughable for any Defendant or his mouthpiece to posit that the continued use of expired patents is anything other than (1) a knowing attempt to entice (deceive) a consumer or (2) a knowing attempt to threaten (deceive) a competitor. Welcome to the Rader Court. God help us all.

  58. 17

    “So, you plan in advance so that the day after expiration no further marking occurs. If that costs you a million dollars in retooling or down time because the molds haven’t yet worn out, then thats your chosen loss–”

    See, now right there is the problem with making no distinction between (a) purposive false marking by saying “patent pending” when you know dang well no patent is pending (which should be heavily punished); and (b) false marking by failing to scrape off your patent markings on the very day the patent expires.

    Case (b) calls for the injection of some amount of business practicability.

    If the law says you are entitled to a patent on your product, but also says that you can’t get the damages you are entitled to unless you mark, then the law also should not be that you must spend millions and walk a razor thin tightrope in order to stop marking on that exact date.

  59. 16

    If that costs you a million dollars in retooling or down time because the molds haven’t yet worn out, then thats your chosen loss

    If that costs you a million dollars in retooling or down time, the court has decided that’s too much to ask of your for-profit business in regard to a for-profit patent.

    Your patents aren’t supposed to stop you making your product. They’re supposed to stop other people making your product.

    I may not agree with the marking requirement, but as long as it exists this is a reasonable way to apply it.

  60. 15

    Dear check_n_recheck:

    So, you plan in advance so that the day after expiration no further marking occurs. If that costs you a million dollars in retooling or down time because the molds haven’t yet worn out, then thats your chosen loss–choose a more economically viable method of marking on the front end. After all, you asked the government for the monopoly, you paid Dewey, Cheatem and Howe to maintain the patent estate, and you are the one who has the obligation to properly steward the use of that patent estate, not the public (into whose domain the subject matter of the patent passed upon expiration).

  61. 14

    “should be permitted to flout the law ”

    Johnny “if-the-glove-don’t-fit” C.? is that you?

    Marking a product that, at the time of marking, is not covered is flouting the law. A case where one of twenty patent numbers is expired because you did not want to incur the expense of generating an entirely new die for a plastic part with the numbers cast thereinto is sound business judgement.

  62. 13

    “This product is covered at the time of marking, and was previously covered, by one or more of the following patents: 7,654,32X, 7,253,24X, … 4,357,89X”

    Brilliant! Except that it makes no sense. The product “is covered” and “was previously covered”? Previous to what? The time of marking?

  63. 12

    I chose a ridiculously expensive manner with which to mark my erstwhile patented product,

    Having the patent number as part of the mold is not a ridiculously expensive manner of marking. It’s almost incrementally free once you’re designing a new mold anyway. What’s expensive is getting a new mold done when you need to change the shape of the product, e.g. remove the embossed number of the expired patent. Unless you wait till you need to replace the mold anyway, in which case it’s nearly free again.

    Can you think of a better way to mark a patent number on 21 thousand-million molded cup lids?

    phasing out of the markings before expiration,

    Never a good idea, considering that you are more or less required to consistently mark throughout the life of the patent if you want to be able to enforce the patent.

    but rather should be permitted to flout the law

    It’s not flouting the law unless you’re doing something illegal. If your intent is to not shell out for new molds every time one of your patent expires, your intent is not to deceive, so you’re not violating the law in any way.

  64. 11

    “…discuss with me the phasing out of the markings before expiration,”

    If you phase out the markings pre-expiration, you may as well not mark at all.

    Your infringer need only show that you’ve put some un-marked product on the market, while your product was still marked, in order to take away all pre-actual notice damages.

    If your marking is to have any effect, you have to be able to show it was on there until the day the patent expired.

  65. 10

    So, I guess you can insulate yourself with the business judgment (lack of judgment) rule: I chose a ridiculously expensive manner with which to mark my erstwhile patented product, and therefore (notwithstanding that my over-paid in-house or out-house patent attorney probably had an obligation to advise me of the approach of the patent’s expiration and to proactively discuss with me the phasing out of the markings before expiration, but didn’t) I should not be held liable for false marking, but rather should be permitted to flout the law until my compliance therewith makes economic sense according to the vicissitudes of my own chosen business plan.

  66. 9

    “plug-a-hole”

    Now if we could only find a way to plug Mooney’s I-h8te-to-see-anyone-making-money pie hole…

  67. 8

    I think even without the advice of counsel (which is hardly an “excuse”), a good case can be made that expired patents appearing in an omnibus marking list along the lines of:

    “This product is covered at the time of marking, and was previously covered, by one or more of the following patents: 7,654,32X, 7,253,24X, … 4,357,89X”

    are not there to “deceive the public.”

    I see no need to remove expired patents from such a list – although it may not be a bad idea. If anything, such a comprehensive list could only help a potential infringer understand the true scope of the covering patent, and possibly find invalidating fodder.

  68. 7

    Getting old; gotta go get some cheaters. “…any real affiRmative proof…”

  69. 6

    So here is a scenario. Let’s say the defendant in the “person” of its legal or R&D department is aware that the patent is expired. Let’s also say that the defendant in the “person” of its package design group is aware that the patent it being marked on the products packaging.

    Doesn’t then the defendant as a whole have “knowledge of the falsity” such that the rebuttable presumption is engaged?

    But in this case, unless the left and right hands are talking, the only excuse the defendant has is “I didn’t intend to deceive”, and this has been held to be insufficient to rebut.

    I’m guessing that many of the current defendants are in this sort of boat and won’t be able to produce any real affimative proof of no intent to deceive.

    How much of a damper then will this decision really be?

  70. 4

    Another piece of the sky-is-falling-we-must-get-rid-of-Qui-Tam-lawsuits has been taken away.

    Another step in the “Federal-Circuit-will-plug-a-hole-in-the-false-marking-free-for-all” program.

  71. 2

    Why doesn’t the PTO print the expiration date of the patent on the first sheet of the patent?

  72. 1

    “[S]ome defendants may not have the same advice-of-counsel excuse.”

    “Solo’s products that were once covered by now-expired patents are therefore “unpatented” within the meaning of the statute.”

    idk. Prospectively, who would like to rely upon (or give) advice-of-counsel to continue marking products, once covered by now-expired patents? …

    Bueller? …

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