INTRODUCTION

Last week, in its highly-awaited Pequignot v. Solo Cup Co. case (No. 2009-1547), the Federal Circuit provided some much-needed clarity to patent false marking law. We note that the court’s decision favored false marking plaintiffs on a significant issue, but aided false marking defendants in other ways.

35 U.S.C. section 292 prohibits the use of a patent mark (e.g., “Protected by U.S. Patent X,XXX, XXX”) on an “unpatented article” (or its associated packaging or advertising) with the intent to deceive the public. Since the start of 2010, more than 130 false patent marking lawsuits have been filed nationwide. This surge of false marking suits was prompted in large part by the Federal Circuit’s December 2009 Forest Group decision, in which the court held that each mismarked product – not just each decision to mark, but each mismarked product – could result in a $500 penalty if the necessary intent to deceive the public were shown, with half of that penalty going to the plaintiff. See The Forest Group, Inc. v. Bon Tool Co., 590 F.3d 1295, 1301 (Fed. Cir. 2009).

However, Forest Group left numerous key questions about false marking unanswered, including the following...