Yesterday, the Federal Circuit affirmed the grant of summary judgment of no liability for false marking in Pequignot v. Solo Cup. I had previously discussed the district court proceedings in this case last year.
The Federal Circuit agreed with the district court that marking a product with the patent number of an expired patent is false marking. Thus, Solo Cup made a false statement when it marked its products with expired patent numbers.
To be liable under the statute, however, Pequignot also had to prove that Solo Cup falsely marked its products with intent to deceive the public. The court held that “the combination of a false statement and knowledge that the statement was false creates a rebuttable presumption of intent to deceive the public.”
The court reasoned that mere knowledge that the statement is false is not enough. Instead, it must be proven that the false marking was done with the conscious desire to deceive the public. Solo Cup provided enough evidence, such as advice from legal counsel, that it rebutted the presumption that it intended to deceive the public. The Federal Circuit even held that Solo Cup’s markings that certain products “may be covered” by one or more of a long list of patents to be evidence of rebuttal that it did not intend to deceive the public.
A question that I have after this case is: if using weasel language such as that a product “may be covered” by a huge list of patent numbers does not constitute false marking if the product is not in fact covered by some or all of the listed patents, how does such a listing comply with the marking statute’s notice requirement? Is the court suggesting that it is the public’s duty to research each patent in a large list to determine which, if any, cover a particular product? This seems to defeat the intent of the marking statute.
