Lessons on Qualifying Language in Patent Marking from Pequignot v. Solo Cup Don't Say Too Little, Don't Say Too Much, Say What You Believe is 'Just Right'

Recently the Court of Appeals of the Federal Circuit affirmed a decision involving a patent mismarking claim under 35 USC 292 which involved the lack of deceptive intent of the patent owner in Pequignot v. Solo Cup Co. ___ F3d ___ (Fed. Cir., 2010). The case involved two primary issues: (1) whether it was actionable mismarking to continue to mark product with patent numbers once the subject patents had expired and (2) whether the general language to the effect that a product "may be covered by one or more ... pending or issued patents" was actionable mismarking. While mentioning the decision on the first issue, the focus will be on the second issue for purposes of this article.

1. Basics of Modern Patent Mismarking

   1. Elements

      A thorough breakdown of elements of actionable mismarking was discussed by the court in Third Party Verification, Inc. v. Signaturelink, 492 F.Supp.2d 1314, 1326 (M.D. Fla., 2007), although other courts occasionally formulate the elements slightly differently. Third Party Verification stated:

      "A pleader may establish a prima facie case of false marking under the statute by alleging that: (1) an article was falsely marked or advertised with the word "patent" or any word or number that imports that the article is patented, (2) the article so marked or advertised was an unpatented article, and (3) the marking or advertisement was made with the intent to deceive the public. Clontech Labs., Inc. v. Invitrogen Corp., 406 F.3d 1347, 1352 (Fed.Cir.2005)."

      These elements effectuate the statute:

      (a) . . . Whoever marks upon . . . in connection with any unpatented article, the word "patent" or any word or number importing that the same is patented, for the purpose of deceiving the public;

      Shall be fined not more than $500 for every such offense.

      (b) Any person may sue for the penalty, in which event one-half shall go to the person suing and the other to the use of the United States. 35 U.S.C. § 292

      It is clear that mismarking is not a strict liability offense. This qui tam statute1 is punitive in nature. It is the plaintiff's burden of proof, and proof of deceptive intent is essential to a case. Knowing falsity gives rise to a presumption to deceive, but this can be rebutted by a preponderance of evidence.

   2. Marking

      Solo Cup marked in two fashions at issue in the case. First, they correctly marked patent numbers on products covered by patents in-force, but they continued that marking after the patents expired. Second, Solo included on its packaging the general legend: "This product may be covered by one or more U.S. or foreign pending or issued patents. For details, contact www.solocup.com". Thus, the facts of two markings were present. The next issue was whether the marking was false.

   3. Falsity of Marking –Mismarking

      1. Expired Patent Numbers -- Mismarking

         Solo urged, but the Federal Circuit rejected, the argument that the statute's qualification as "unpatented" meant, essentially, "never patented." The Federal Circuit stated:

         ...