Leaving expired patent number markings on products after the patents have expired, even knowingly, does not show a purpose of deceiving the public.

The patentee was sued by a qui tam relator for false marking. Based on the advice of counsel, and for financial and business reasons, the patentee continued to mark covered products with expired patent numbers. Additionally, counsel advised the patentee to mark its products with the phrase “this product may be covered” by U.S. patents, and again for business and financial reasons, the patentee marked all of its products with this phrase, including products not covered by any patents. The district court granted summary judgment for the patentee, finding that the patentee had no intent to deceive the public. The Federal Circuit affirmed.

Because the patentee’s products, which were once covered by now-expired patents, are “un-patented” under the marking statute, the court focused on whether the patentee had an intent to deceive the public. The burden of proof for an intent to deceive the public is a preponderance of the evidence. Under Supreme Court and Federal Circuit precedent, “the combination of a false statement and knowledge that the statement was false creates a rebuttable presumption of intent to deceive the public.” The patentee can rebut this presumption by showing “a good faith belief that an action is appropriate.” The presumption of an intent to deceive is especially rebutted when the patentee’s actions are “taken for a purpose other than deceiving the public.”

In this case, the patentee consulted counsel regarding removing the expired patent numbers. The patentee followed counsel’s advice to remove the expired patent numbers when the equipment stamping the patent numbers was replaced. As for the intent to deceive, the court found that there could not be any intent to deceive for adding the phrase that “this product may be covered” by U.S. patents “because the alternative was inconvenient from a logistical and financial perspective.”

A copy of the opinion can be found here.