False Patent Marking Defense
Companies are under fire from an explosion of lawsuits challenging the validity of patent labeling and marking on consumer goods.
The legal basis for these lawsuits is an obscure, 100-year-old statute. The law effectively deputizes any member of the general public to enforce and 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 $500 per mismarking “offense”. A December 2009 U.S. Court of Appeals ruling, Forest Group, Inc. v. Bon Tool Co., clarified that each mismarked article constitutes a separate offense. The ruling spurred a cottage industry of opportunistic false marking plaintiffs.
District courts throughout the U.S. witnessed a sharp increase in false patent marking litigation in early 2010, with dozens of new lawsuits filed in late February alone. Targeted products range from video games to cigarette lighters, and the basis is typically the identification of an expired patent. Fortunately some district courts are pushing back. For example, the District of Delaware, in Brinkmeier v. Graco Children's Products Inc., recently dismissed patent false marking claims as to 24 of 25 allegedly mismarked patents. The court only allowed the plaintiff’s false marking claim to proceed on an expired patent that Graco asserted in two prior patent litigations, which suggested Graco was more aware of that patent’s term.
Womble Carlyle’s False Patent Marking Defense Team is currently defending clients in a large and rapidly growing number of cases. 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.