False Marking Revisited: Proof Of An Intent To Deceive Is Required, Even When The Product Was Knowingly Falsely Marked
By Aslan Baghdadi & Gabriel S. Sukman
The Federal Circuits decision last week in Pequignot v. Solo Cup Co. (Case No. 2009-1547, June 10, 2010) (Solo) allows defendants in qui tam false marking cases to rebut the presumption that they acted with an intent to deceive when knowingly falsely marking their products. This ruling should provide a potentially effective defense for companies accused of falsely marking their products with patent numbers.
Late last year, in Forest Group, Inc. v. Bon Tool Co., 590 F.3d 1295 (Fed. Cir. 2009), the Federal Circuit opened up a potential floodgate for qui tam litigation by ruling that each sale of an unpatented article that was falsely marked with a patent number was a separate offense under 35 U.S.C. § 292(a). As of June 1, 2010, over 150 lawsuits alleging false marking have been filed in the wake of the Forest Group decision.