Less than two months after the Federal Circuit released its ruling in The Forest Group, Inc. v. Bon Tool Co.,1 more than four dozen false patent marking complaints have been filed across the United States. Of these complaints, the vast majority have been brought by three plaintiffs seeking to take advantage of the patent laws’ reward of a portion of the imposed statutory fine for false marking. This suggests an emergence of “false marking trolls” similar to the “patent trolls” that arose following another Federal Circuit ruling in 1998.2 Now, as then, it initially appears likely that the only interest these plaintiffs have for filing these complaints is monetary. Regardless of the plaintiffs’ motivation, it is apparent that patentees should now, more than ever, regularly examine their patent marking practices to ensure that patent marking is correct. Failure to do so, as these complaints foreshadow, could result in undesired litigation expenses and possibly substantial liability.
The patent laws permit a patent owner, and anyone making or selling a patented article for or under the patent owner, to label the article with the patent number in order to give notice to the public that the article is patented.3 The patent laws also impose a fine of up to $500 per “offense” for labeling an “unpatented article” as patented “for the purpose of deceiving the public.” 4 Last year, two notable cases addressed what constituted an “unpatented article” and an “offense.” First, in Pequignot v. Solo Cup,5 the District Court for the Eastern District of Virginia concluded that once a patent has expired, a product once covered by that patent becomes “unpatented” for purposes of the false marking statute.6 Then, in Forest Group, the Federal Circuit took a different approach than most courts had previously taken and ruled that “offenses” for purposes of the patent laws must be calculated on a “per article” basis as opposed to a “per decision to mark any number of articles” basis.7 The plaintiffs in the recent spate of false marking cases may have concluded that these opinions make it more attractive than previously thought to bring false marking claims against manufacturers and retailers.8
Of the more than four dozen false patent marking complaints filed in the months since Solo Cup and Forest Group, nearly all, like Solo Cup, allege mismarking of commercially successful products with expired patent numbers. While some of the complaints, such as that filed against Bunn-O-Matic for false marking of its branded coffee makers, involve patents that expired more than 20 years ago, the vast majority involve patents expiring within the last five years.9 The targeted patentees also represent an array of industries and products, from designer watches and video games to electronic thermostats and vacuum cleaners, with some patentees even targeted by multiple plaintiffs.10 It remains to be seen whether any of these plaintiffs will be able to establish that any of these patentees intended to mismark their products “for the purpose of deceiving the public,” which is an element required under the false marking provision of the Patent Act.11 Even so, reasonably diligent patentees would be wise to reexamine their patent marking practices to eliminate or minimize the number of products mismarked if they wish to avoid what appears to be an increasingly real risk of false marking litigation.
A handful of the complaints also raise a few other areas of concern for patentees and those making or selling patented product alike. First, as in Forest Group, some of the complaints allege mismarking of commercially successful products with patents or pending patent applications that purportedly do not actually cover those specific products.12 While claims of this type are of concern, patentees should be able to avoid this type of mismarking by revisiting the claims of their patents and pending applications when making product-marking decisions. Written advice of outside counsel may prove extremely beneficial in this regard. Secondly, at least one of the complaints alleges false marking liability for advertising of products marked with patent numbers that do not cover those specific products.13 In recent months, several district courts have suggested that those who only advertise mismarked products may likewise be found to have done so “for the purpose of deceiving the public” when “drawing attention to the false marking” itself.14 Parties that advertise products marked as patented should be able to avoid such allegations by consulting with the respective patentees to eliminate or minimize the number of products mismarked before incorporating a claim of the product being patented or patent pending in their advertisements.