Federal Circuit Confirms That Any person has Standing to Bring Action under 35 U.S.C. §292

In Raymond E. Stauffer v. Brooks Brothers, Inc. and Retail Brand Alliance, Inc. v. United States, 2010 U.S. App. LEXIS 18144 (Fed. Cir. August 31, 2010),  Raymond E. Stauffer brought a qui tam lawsuit in the U.S. District Court of New York, Southern District under 35 U.S.C. §292. In the lawsuit, Stauffer alleged that bow ties purchased by Stauffer from Brooks Brothers were falsely marked with the patent numbers of patents that were long expired.

Feature Comment: New and Expanded Uses of Patent Marking Liability

By James G. McEwen[1] I.        INTRODUCTION While previously not a hot topic for most companies, patent marking is generating a great deal of interest in the U.S.  As background, 35 U.S.C. §287(a) establishes a mechanism for putting potential infringers on notice of a particular patent where the patent owner labels products manufactured or sold in the United States with the corresponding patent number.  The marking is supposed to be on the product itself, although there are exceptions when there is no practicable mechanism for affixing the label directly to the product.[2]  The benefit to applying the marking is that the patent owner can obtain pre-litigation damages.  Thus, instead of accruing damages after a lawsuit has begun or when the patent owner otherwise puts the infringer on notice, the damages begin when the marked product is put into commerce (i.e., shipped). While patent marking is not mandatory, it is an important tool to discourage infringement by competitors.  However, to prevent discouraging

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Federal Circuit Reemphasizes the Need to Find Intent to Deceive In False Marking Actions

In Matthew A. Pequignot v. Solo Cup Company, No. 07-CV-0897 (Fed. Cir. June 10, 2010), Solo Cup Company (Solo) manufactures various dinnerware and beverage items, including a plastic drink cup lid which was issued two patents in 1976.  While the patent was active, the company mass-produced the plastic lids from molds in the shape of the lids, which included the patent number. Once the patents expired, the company continued to produce the lids from the molds with the patent numbers still ingrained.  Appellant, Matthew A. Pequignot (Pequignot) then brought suit against Solo under U.S.C. § 292 alleging that Solo had falsely marked its products with the expired patent numbers, knowing those patents had expired, for the purpose of deceiving the public. At trial level, the court granted summary judgment of no liability or the false marking. Pequignot v. Solo Cup Co., 646 F. Supp. 2d 790, 795-800 (E.D. Va. 2009)  It also tried to define the definition of “offense” according

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Federal Circuit Finds False Marking Statute Imposes Liability for Each Infringing Article

In Forest Group Inc. v. Bon Tool Co., 93 USPQ2d 1097 (Fed. Cir. 2009), Forest Group, Inc. owned U.S. Patent No. 5,645,515 (the ’515 patent).  The ‘515 patent is drawn to a stilt.  Forest Group licensed the patent to Southland Supply Company (Southland).  Southland sold the patented stilts to Bon Tool.  Subsequently, Bon Tool began purchasing exact replicas of the patented stilts made by a Chinese supplier.  Forest Group sued Bon Tool for patent infringement for the sales of the replicas. As a defense, Bon Tool alleged, among other defense, that the patent was invalid and counterclaimed for damages for false patent marking in violation of 35 U.S.C. §292.  At trial, the district court construed the claims in a manner which precluded infringement.  Thus, the district court dismissed the infringement claim at a first summary judgment, but found the patent otherwise valid. In regards to the counterclaim of false marking, the district court found that the stilts were improperly marked

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