A new working paper by Professor Elizabeth Winston (Catholic U) discusses problems in court interpretations of the false marking statute 35 U.S.C. § 292. Professor Winston argues that false marks should be presumptively actionable:

“A party who falsely marks their innovation as patented should be presumed to have done so with the intent to deceive the public, and the burden should rest on the marker to prove that they lacked such intent. Furthermore, the penalty should reflect the culpability of the marking party, taking into account various mitigating factors, including whether the public was actually deceived, the materiality of the marking and the harm to competitors caused by the marking. Only then can the false marking statute ring true as the effective and economically efficient vehicle it was designed to be.”

The statute is receiving attention in the courts as well. PubPat has filed suit against Cumberland Packing (Sweet-n-low), McNeil-PPC (Tylenol), Iovate (Xenadrine), and Glaxosmithkline (CITRUCEL) for false marking. Attorney Matthew Pequignot has filed suit against at least Gillette, Arrow Fastener, and Solo Cup for false marking.

Read Professor Winston’s Draft Article

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.).

• File Attachment: USDOJ Intervention (46 KB)
• File Attachment: SOLO Motion (496 KB)
• May 2008 Discussion of Pequignot cases

18 U.S.C. § 497 creates a the felony crime of forging a patent document. According to the statute:

“Whoever falsely makes, forges, counterfeits, or alters any letters patent granted or purporting to have been granted by the President of the United States; or Whoever passes, utters, or publishes, or attempts to pass, utter, or publish as genuine, any such letters patent, knowing the same to be forged, counterfeited or falsely altered–

The punishment is “not more than ten years” of federal prison.  I was unable to find any reported decisions that apply or even interpret Section 497.  Unlike the marking statute, there is no provision that would allow a private action against under this statute. 

A general fraud claim would create standing for a civil action. However, the plaintiff would need to show particular harm — unlike a Section 292 plaintiff.

A US patentee can only recover damages for patent infringement activity that occur after the infringer is “notified of the infringement.”  35 U.S.C. 287(a). The major exception to this limit on damages is through marking of goods. Goods that are properly marked as protected by a particular patent serve as a constructive notice to the world that the item is patented. Id.

Although marking serve as a benefit, the patentee must also be wary of statutory false marking. Under 35 U.S.C. 292, false marking includes marking unpatented product as “patented” or marking a product as “patent pending” when no patent is pending. These false marking activities are only actionable if done “for the purpose of deceiving the public.”

Section 292 is a criminal provision with only a monetary penalty – usually payable to the government.  The statute also spells out a qui tam right for “any person” to sue for false marking. One-half of any damages would then be awarded to the civil plaintiff, and the US Government collects the other half. Damages are limited to “not more than $500 for every such offense.” Some courts* appear to interpret “every such offense” broadly. Thus, for example, 100,000 mislabeled cups, would be seen as 100,000 offenses. The text from Section 292 has remained remarkably fixed since the Patent Act of 1870 the primary differences being that the old statute included a minimum penalty of $100 per offense and used the word “moiety” instead of “one-half.”

Recently, a Washington DC patent attorney, Matthew Pequignot, filed at least two Section 292 lawsuits in the Eastern District of Virginia alleging false marking. These include Pequignot v. Solo Cup and Pequignot v. Gillette and P&G.

In the first case, Pequignot alleged that Solo Cup marks its paper products with patents that had expired more than ten years ago. In a motion to dismiss, Solo Cup argued that marking with an expired patent cannot be considered false marking. Furthermore, the defendant argued, it should not be held liable because the markings were written in the tentative voice: indicating that the products “may be covered” by various patents.

Holding: Judge Brinkema denied Solo Cup’s motion to dismiss, holding: (1) that, as a matter of law, listing of expired patents may constitute false marking; and (2) the use of permissive language (“may be covered”) in the marking does not create a safe harbor against liability for patent marking. In his Treatise, Don Chisum addresses this point — finding “little authority on whether continued use of a patent number of an article after expiration of the patent constitutes culpable mismarking.”

The complaint against Gillette and P&G similarly lists over thirty products being marked by those companies with expired patents or patents that do not cover the marked product.

Documents:

• File Attachment: Pequignot v. Solo Cup Decision (2667 KB)
• File Attachment: Pequignot v. Gillette Complaint (376 KB)
• Section 287(a) reads as follows: “In the event of failure so to mark, no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice.”
• * Updated to add my own permissive language of “some” courts.