Law & Society

While not required under U.S. Patent law, marking is beneficial in providing constructive notice to others that the product is patented and damages for infringement may accrue from the date of constructive notice. Failure to mark a patented product results in the ability to only collect damages for infringement from the time actual notice is provided to the infringer. ”

However, there are penalties for falsely marking a product as patented. A false marking claim may be brought as a counterclaim in an infringement suit. Alternatively, a false marking claim may be brought by anyone on behalf of the government (known as “qui tam” action). The latter scenario is gaining popularity, especially in view of the decision in Forest Group Inc. v. Bon Tool Co. and the Federal Circuit’s indication that qui tam actions are beneficial at policing false patent marking. The following recent court decision is an example of a qui tam action.
The Recent Decision of Pequignot v. Solo Cup Co.
Solo Cup Company (“Solo”) manufactures disposable tableware, including cups, bowls, plates and utensils. Solo owned two U.S. Patents that were involved in this case: one for a plastic cold drink cup lid and another for a plastic hot drink cup lid. Soon after the patents were issued, Solo began marking the lids with the respective patent numbers.

The lids were made using stamping machines that employ “mold cavities.” The patent numbers were added to the mold cavities so each lid that was manufactured included the patent number. The molds can last up to twenty years and are costly to manufacture and replace. Pequignot v. Solo Cup Co., Fed. Cir. No. 2009-1547, p. 3 (2010).

After the patents expired, Solo continued to use the same molds, thus marking the lids with expired patent numbers. The plaintiff, Matthew Pequignot, a licensed patent attorney, sued Solo for falsely marking over 21 billion articles with the intent to deceive the public. Pequignot sought an award of $500 per article, half of which would be shared with the U.S. government. Id. at 5.

While the District Court agreed with the plaintiff that the articles were falsely marked, the court concluded that Solo had no intent to deceive the public, and hence, there was no violation of the law. The Federal Circuit affirmed the District Court and stated “the combination of a false statement and knowledge that the statement was false creates a rebuttable presumption of intent to deceive the public. . . .” Id. at 11. The Federal Circuit concluded that Solo was able to rebut the presumption, and thus there was no violation of the false marking statute.

Even though Solo was aware the patents marked on the lids were expired, it was able to rebut the presumption of intent to deceive the public because it had taken steps to remedy the problem once it came to its attention. Specifically, Solo contacted outside patent counsel to discuss this matter. Based on discussions with outside counsel, and in view of the fact that the mold cavities were costly to immediately replace, Solo adopted a policy of replacing old mold cavities and also changed the wording on the packages in which the lids were placed. Additionally, Solo invited the public to contact Solo with questions concerning its patents.

So, Is it Still Worth Marking your Patented Products?
It is still good practice to mark your patented products since the marking serves as notice to potential and actual infringers. However, to avoid a false marking claim, patentees are well served by policing their own marked products to ensure none are falsely marked. Implementation of policies and procedures to remove the marking from the products as soon as or just before, the patent expires or lapses may also assist patentees in avoid or defending a false marking claim.