News Article

WILMINGTON, Del.—BIC Corp, represented by Womble Carlyle attorneys Jim Lennon, Bill Ragland and John Morrow has defeated a major false patent marking claim in federal court. The August 25^th dismissal is promising news for other companies facing similar false patent marking claims.

In dismissing the claim, Judge Sue Robinson said the plaintiff did not sufficiently make the case that BIC intended to deceive the public by intentionally marking its lighters with expired patent numbers. Ragland, Lennon and Morrow argued that this was a simple mistake, not willful deception, an argument with which the court agreed, stating:

"Here, it appears just as likely on the facts pled that Bic made a marking error,” and “Inconsistency (to the extent the complaint implies such) does not amount to intent to

deceive.” This decision marks the first time that the District of Delaware has affirmatively held that a heightened pleading standard applies to patent false marking claims.

 

The legal basis for these lawsuits is a 100-year-old statute that allows any member of the public to seek damages for products incorrectly marked with patent information, if the mismarking was “for the purpose of deceiving the public.” The statute sets the fine at up to $500 per mismarking “offense”. 

 

A December 2009 U.S. Court of Appeals ruling stated that each mismarked article constitutes a separate fineable offense. In the case of mass-produced articles, that opened the door for opportunistic false patent marking plaintiffs (“relators”) to seek exorbitant damages. Not surprisingly, courts were flooded with these cases in early 2010, as these relators looked to cash in. But the U.S. District Court ruling provides hope that common sense and fairness will prevail.

 

The BIC case was heard in the U.S. District Court for the District of Delaware. Judge Robinson also dismissed a similar claim from the same plaintiff against Bayer Healthcare LLC.
 

Coverage of Bic’s victory has already appeared in August 27, 2010 editions of the legal publications Law 360 and American Lawyer.

"The court applied an appropriate threshold for alleging intent to deceive in false marking cases, which was not met in this case," Ragland told American Lawyer. "In general, Defendants should not be forced to defend cases alleging intent to deceive the public with little more than allegations based on "information and belief."

Womble Carlyle’s False Patent Marking Defense Team is currently defending other clients in three additional jurisdictions. Our patent and litigation attorneys assess the threat at the earliest point possible, and then decide on the appropriate response to mitigate the damage and defend the company’s reputation. We also review patent markings to help companies avoid compliance-related lawsuits.