On June 10, 2010, the U.S. Court of Appeals for the Federal Circuit issued an important opinion on false patent marking. In the Pequignot v. Solo Cup Co. case, the Court clarified the type of evidence necessary to satisfy the statutory requirement of proving “intent to deceive the public.” The Federal Circuit held that stamping expired patent numbers on products and packaging could constitute false marking, but determined that Solo Cup did not have the “intent to deceive the public” necessary for liability.

The Court ruled that a rebuttable presumption of intent to deceive arises when a manufacturer prints expired patent numbers on its products or packaging with knowledge that the patents are expired, but that this type of evidence creates only a “weak” presumption of intent. A party may rebut the presumption by proving that it did not consciously desire the result that the public be deceived.

The Court found that Solo Cup’s evidence rebutted the presumption of intent. The evidence included:

1. reliance on an opinion of counsel that the expired patent numbers need not be removed from the packaging;
2. Solo's policy of replacing molds that were marked with expired patent numbers when they became worn out with new molds that did not include the expired patent numbers;
3. Solo's use of the phrase "may be covered" by one or more patents was factually accurate; and
4. legitimate business and logistical reasons for not immediately removing the expired patent numbers from the packaging (i.e. cost of new molds and disruption of business).

Significantly, the Court stated it is highly questionable whether use of the language "may be covered" on packaging could be made for the purpose of deceiving the public. The Court explained that Solo did not state on its packaging that any product was definitely covered by a patent and observed that Solo provided the consumer with an easy way to verify whether a specific product was covered; the consumer could contact www.solocup.com for details.

As more opinions continue to be issued that clarify the false marking cause of action, it becomes increasingly important to evaluate your product labeling to ensure you are not at risk for a false marking suit.

We can help.

The intellectual property lawyers at Polsinelli Shughart can review your products, packaging and advertising to analyze whether they could be misleading to the public and/or potentially constitute false marking.

For More Information

If you would like more information on this topic, please contact the following Polsinelli Shughart attorneys:

• Keith Grady at kgrady@polsinelli.com or (314) 552-6883
• Patrick Woolley at pwoolley@polsinelli.com or (816) 360-4280
• Kevin Sweeney at krsweeney@polsinelli.com or (816) 572-4638
• Andrew Hoyne at ahoyne@polsinelli.com or (314) 552-6876

Related article:
"New Trends in Patent Litigation: False Marking Suits."

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