In a much-anticipated ruling, the U.S. Court of Appeals for the Federal Circuit unanimously upheld a summary judgment ruling that Solo Cup Company successfully rebutted the intent element required for culpability under the false marking statute, 35 U.S.C. § 292. Matthew A. Pequignot v. Solo Cup Company, Case No. 09-1547 (Fed. Cir. June 10, 2010) (Lourie, J.). The companion issue of how to count the number of ($500) “offenses” that may have occurred will have to wait. (In this paper products case, the number could have been in the trillions of dollars).
The products at issue bore the following patent markings, including expired patents, owing to older molds used to make the product (which were in the process of being replaced with unmarked molds as they were needed): “This product may be covered by one or more U.S. or foreign pending or issued patents.” Some of the products were not covered by patents at any time.
The Federal Circuit agreed that marking a product with an expired patent falls within the meaning of “unpatented” under § 292. However, the Federal Circuit found that Solo successfully met its burden of rebutting the presumption of intent created by the combination of false statement and knowledge of its falsity. The court noted that the bar for deceptive intent is high since, while a § 292 violation results in only a civil fine, the statute is criminal. The court noted that an allegation of merely marking with an expired patent marking, without “anything else,” is “weak.”
Solo proceeded on advice of counsel that the expired patent markings used on all Solo products should be fine, as long as Solo made its future molds without the numbers. The advice was based on the understanding that identifying particular patented products was impractical and cost-prohibitive. The court determined that Solo’s decision was made in good faith with the intent of controlling costs, not deceiving the public.