False Marking

Design Patents and False Marking

February 24, 2011

The false marking statute (35 U.S.C. § 292) expressly authorizes members of the public to bring an action on behalf of the U.S. government (i.e., a qui tam action) for a product falsely marked with a patent number with the intent of deceiving the public. Theoretically, the penalty for falsely marking a product can be a hefty one as the false marking statute allows the court to assess a sanction of up to $500 for every offense. The Federal Circuit in Bon Tool held in late 2009 that “offense” means on a per article basis. Ever since the Bon Tool decision, the number of false-marking lawsuits has surged because of the economic windfall that might result from mass-produced, falsely marked products. Products marked with design patent numbers are not exempt from such actions.

One recent complaint filed by Main Hastingsagainst the Village Company in the Eastern District of Texas alleges the Village Company violated § 292 by marking a Mr. Bubble bottle with design patent no. D-408,290 (“the ‘290 patent). Specifically, Main Hastings alleges that the Village Company marked the Mr. Bubble bottle knowing that that the ‘290 patent does not cover the ornamental design of the Mr. Bubble bottle. In Exhibit B of the complaint, Main Hastings sets forth a comparative analysis between two Mr. Bubble bottles and Figure 2 of the ‘290 patent to demonstrate the alleged false marking. Included below are images from the second comparison of Exhibit B of Main Hastings’ complaint.

Federal Circuit Rules False Marking Claims Must Be Pled With Particularity

March 29, 2011

As a follow-on to our previous blog entry on the recent surge in the number of false marking lawsuits being filed, on March 15, 2011, the Federal Circuit in In Re BP Lubricants USA Inc., Misc. Doc. No. 960 (C.A.F.C., March 15, 2011) granted a petition for a writ of mandamus directing the United States District Court for the Northern District of Illinois to grant a motion to dismiss a complaint pursuant to the False Marking Statute, 35 U.S.C. § 292. In granting this petition, the Federal Circuit held as a matter of first impression that the complaint did not meet Fed. R. Civ. P. Rule 9(b)’s particularity requirement.

In the complaint, Thomas Simonian, a patent attorney, had alleged that BP Lubricants USA Inc. (BP) continued to falsely mark certain CASTROL® branded bottles with design patent number D314,509 after the design patent covering the bottles had expired. Simonian claimed that: “(1) BP knew or should have known that the patent expired; (2) BP is a sophisticated company and has experience applying for, obtaining, and litigating patents; and (3) BP marked the CASTROL products with the patent numbers for the purpose of deceiving the public and its competitors into believing that something contained or embodied in the products is covered or protected by the expired patent.”

Patent Marking and Design Patents

July 9, 2014

It is important to remember that patent marking applies to design patents as well as utility patents. The Federal Circuit made this clear in Nike Inc. v. Wal-Mart Stores, 138 F.3d 1437 (Fed. Cir. 1998), by holding that the term “damages” as it appears in the marking statute, 35 U.S.C. § 287(a) applies to recovering the infringer’s profit under 35 U.S.C. § 289 as well as to the recovery of damages under 35 U.S.C. § 284.

In reaching their decision, the Court reviewed the statutory history of the damages and profits statutes for both design and utility patents, as well as the statutory history of the marking statutes. The Court found that the Patent Act of 1887, which was specific to design patents and removed the apportionment requirement when recovery of the infringer’s profit was sought, “was enacted to overcome the allocation problem for designs, and did not deplete the remedies available for either utility or design patent infringement.” Id. at 1441-43. Additionally, the Court found that the history of the marking statute supported the “conclusion that the marking statute with its use of the word ‘damages’ applies broadly to include recovery of the infringer’s profits under the special provision for design patent infringement.” Id. at 1445.

Consequently, the new America Invents Act (“AIA”) virtual marking provision, 35 U.S.C. § 287(a), is useful for design patent owners. The virtual marking provision states:

[p]atentees, and persons making, offering for sale, or selling within the United States any patented article for or under them, or importing any patented article into the United States may give notice to the public that the same is patented, either by fixing thereon the word ‘patent’ or the abbreviation ‘pat.’ together with the number of the patent, or by fixing thereon the word ‘patent’ or the abbreviation ‘pat.’ together with an address of a posting on the Internet, accessible to the public without charge for accessing the address . . .

35 U.S.C. § 287(a) (emphasis added). Thus, an article covered by one or more patents, including design patents, need not list each individual patent that covers a product. Instead, the product can be marked with the word “pat.” and list a website where the patents applicable to the article in question may be listed.

Finally, design patent owners should also be aware that the false marking statute, 35 U.S.C. § 292, applies to design patents. See e.g. Marvellous Day Elec. (S.Z.) Co. v. Ace Hardware Corp., No. 11-8756, 2013 U.S. Dist. LEXIS 122212 (N.D. Ill. Aug. 27, 2013) (assessing whether Ace intended to deceive consumers into believing that Christmas lights advertised as “patented” were made or sold by Marvellous Day); Buehlhorn v. Universal Valve Co., Inc., No. 10-559, 2011 U.S. Dist. LEXIS 34429 (S.D. Ill. Mar. 31, 2011) (determining whether Universal Valve Co intended to deceive consumers by marking its products with an expired design patent number). Accordingly, it is important to remember to not mark products with a design patent number that does not cover the product or with the number of an invalid or expired patent.

Andrew Ollis and Katherine Cappaert contributed to this post.