False marking gained a bit of publicity this year with a number of qui tam suits being filed against companies who allegedly violated 35 U.S.C. 292 by marking products with expired patents. (See e.g., Public Patent Foundation, Inc v. Cumberland Packing Corp, 09-cv-04360. S.D.N.Y.; Perquignot v. Solo Cup Co., 07 cv 897, E.D.Va.).
The elements of a false marking claim are fairly straight forward: (1) marking an unpatented article with the word “patent” or other indication that the article is patented and (2) intent to deceive the public. Under Section 292, the penalty for false marking is that the party “shall be fined not more than $500 for every such offense.” Section 292 also includes a qui tam provision that provides that “any person may sue for the penalty, in which event one-half shall to the person suing and the other to the use of the United States.” What was unclear, until now, was whether “every such offense” was to be applied on a per article basis or as a single fine for a continuous act of marking. The difference is clearly huge. Would a defendant such as Cumberland Packing Corp. be facing a single fine of up to $500 or facing this fine for each and every one of the billions of packets of Sweet n’ Low that it sold?
In The Forest Group, Inc. v. Bon Tool Company, 2009-1044, the Federal Circuit resolved the debate and held that “per offense” means per article marked, and not a single fine for continuous false marking. In tempering this holding somewhat, the Federal Circuit noted the statute requires a fine of “not more than $500” and “by allowing a range of penalties, the statute provides district courts the discretion to strike a balance between encouraging enforcement of an important public policy and imposing disproportionately large penalties for small, inexpensive items produced in large quantities. In the case of inexpensive mass-produced articles, a court has the discretion to determine that a fraction of a penny per article is a proper penalty.”
Even with the guidance provided that would support fines of only “a fraction of a penny per article,” the holding in the Forest Group may still create an incentive for more qui tam actions being brought for false marking. After all, even a fraction of a penny applied to a billion items can still amount to millions of dollars in potential recovery. With the new year approaching, and new guidance from the Federal Circuit that may invigorate a new class of litigation prospectors, the time is right to review your patent marking and clean up any marking that may no longer be applicable.
