In recent months, there has been an explosion of cases filed “citizen bounty hunter” plaintiffs alleging that companies are guilty of “false patent marking” pursuant to 35 U.S.C. § 292. (See, April 2010 edition of LGP Newsletter). On June 10, 2010, the Court of Appeals for the Federal Circuit issued a decision that in the case of Pequinot v. Solo Cup Company, which will likely make it far more difficult for plaintiffs to prevail in such cases.
According to the false marking statute, a plaintiff must prove not only that the defendant marked the product with a patent that does not cover the product (either because it has expired or because the terms of the patent do not apply to the product), but also that the defendant falsely marked the product “for the purpose of deceiving the public.”
In the Pequinot case, the Federal Circuit (whose decisions are binding in patent cases throughout the country) held that a plaintiff must prove that the defendant acted with an actual “purpose of deceit,” not simply that the defendant had knowledge that the marking was false. In other words, the plaintiff must show that the defendant “consciously desired” that the public be deceived by the alleged false marking. “Mere knowledge that a mark is false is insufficient.” The court also stated that the bar for proving deceptive intent is “particularly high” because section 292 is a criminal statute.
In sum, the Federal Circuit’s decision is likely to make it far more difficult for plaintiffs to prevail in false marking cases.