Defending Against False Patent Marking Cases

In Forest Group Inc. v. Bon Tool Co., the Federal Circuit revisited and redefined the available remedies for false patent marking claims under 35 U.S.C. § 292. The statute provides that “whoever marks upon, or affixes to, or uses in advertising in connection with any unpatented article, the word ‘patent’ or any word or number importing that the same is patented for the purpose of deceiving the public… [s]hall be fined not more than $500 for every such offense.” Historically, courts had interpreted the statute’s use “every offense” as imposing a single fine for each continuous act of false marking. In Forest Group Inc., the Federal Circuit abandoned this approach by holding that “every offense” applies to every false marked article. As a result, district courts now have the discretion to assess the per article fine in any amount not to exceed $500.

Following Forest Group, the Courts have experienced an explosion of new cases being filed alleging false patent marking under § 292. Congress enacted § 292 as a qui tam statute in order to encourage private citizens to police against false marking. Prior to Forest Group, courts limited fines to  a single fine per continuous act of false marketing. Following Forest Group, courts may now fashion a penalty based on each article that was improperly marked.

While the court has made false marking cases seemingly more lucrative, companies facing these claims still have formidable defenses to help fend off false marking allegations. To prevail on a false marking claim, a plaintiff must establish that the defendant marked a patent number on an unpatented article with the intent to deceive the public into believing an article is protected by a patent when, in actuality, it is not. An “unpatented article” can be an article that has no patent or one for which the patent has expired. The intent requirement precludes claims against manufacturers for honest mistakes. A plaintiff must prove that the accused party knew that its product was falsely marked. An inference of intent may be found where the plaintiff has proved by a preponderance of the evidence that the defendant did not have an honest good faith belief in marking its products. However, the presumption of intent can be rebutted by showing actual evidence that the defendant had acted in good faith when it had marked its products. In cases involving an expired patent the presumption of intent is weakened, which allows a defendant to rebut the presumption with an even lesser showing of good faith.  Thus, while Forest Group Inc. has opened the door to a wave of new lawsuits under § 292, companies facing these law suits can defend themselves successfully where patent markings were made inadvertently and without any intent to deceive the public.

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