Trolling Along: Floodgates Continue to Open for Patent False Marking Claims
As reported previously (see Floodgates), there has been a wave of false patent marking lawsuits filed in recent months following the Federal Circuit 
ruling in Forest Group Inc. v. Bon Tool Co., 590 F.3d. 1295 (Fed. Cir. 2009), mostly by a new brand of patent troll. The Bon Tool case was sent back to the District Court for calculation of the "fine." On remand, the District Court found that the trial recrd established that Forest sold the falsely-marked S2 model stilts in a price range of $103 to $180 and then found that "the appropriate fine in this case is $180.00 per article, the highest point of the price range. This will deprive Forest of more than it received for the falsely-marked stilts, fulfilling the deterrent goal of § 292’s fine provision." Fortunately for Forest, the Court found that Forest only sold 38 falsely-marked stilts and thus imposed a fine of $6,840. To read the entire order, see Order (pdf).
False Marking Lawsuits -- Have the Floodgates Opened?
In recent months commencing with the decision in Forest Group Inc. v. Bon Tool Co., 590 F.3d. 1295 (Fed. Cir. 2009), prospective plaintiffs have commenced filing lawsuits against patent holders for improperly marking product with false or expired patent numbers. Pundits have predicted that there would be a flood of patent false marking suits. Indeed, in the past month or so, this wave of lawsuits hit the District of Oregon when Oregon-based Lightspeed Aviation sued Bose Corp. (see, Expired Patents and False Marking) .
Though some of these lawsuits appear to be filed by current litigants in related patent litigation, some of these suits are brought by attorneys and political action groups seeking reward or looking to force action on the patent holders. It is the "policing" activity of such third parties unrelated to the market of the patented products that has prompted some pundits to dub these plaintiffs as a new breed of patent troll -- "false marking trolls."
Many of these cases assert that marking an expired patent number on a product constitutes false marking under the theory that the patent owner is clearly acting with the requisite intent to deceive because they know that patent is expired. Personally, rather than being deceiving, I find it useful for a product to be marked by an expired patent number. If you see a product marked with patent numbers, it is a simple matter to determine those patents are expired, much easier than seeing an unmarked product and trying to searching the patent records to find any patents of the manufacturer covering the product. Thus if a product contains marking of one or more patent numbers, and all those patents have expired, there should be a high degree of confidence that all the owner's patent rights have expired.
Fortunately, there is some recent activity in bills proposed in both the U.S. Senate and the House of Representatives seeking to head off this "flood" of patent false marking cases. So until the courts or Congress clarifies the situation, it's probably prudent for patent holders to check their product marking for incorrect or expired patents and make the necessary corrections.
Expired Patents and False Marking
Oregon-based Lightspeed Aviation sued Bose Corp. in the District of Oregon for false patent marking (see complaint [PDF]). According to the complaint, Bose marks a number of its headphones as "patented" even though the corresponding patents are expired, and, according to Lightspeed, this constitutes false patent marking. Lighspeed and Bose are also involved in another patent lawsuit in the District of Massachusetts.
This is not the first false patent marking case that involves expired patents. Recently, Matthew Pequignot, a Washington D.C. patent attorney, sued Solo Cup and Gillette under the false marking statute (35 U.S.C. § 292) for marking their products with expired patent numbers. The court in the Solo Cup case dismissed Pequignot's claim finding that Pequignot did not prove that Solo Cup marked its products "for the purpose of deceiving the public" as required in § 292. The Solo Cup case is pending before the U.S. Court of Appeals for Federal Circuit. The Gillette case is stayed pending the outcome of the Solo Cup case.
