Need to Show Deceptive Intent Under the False Marking Statute

By The SE Texas Record | Jul 14, 2010

By Anthoula Pomrening

A Federal Circuit Court decision in Pequignot v. Solo Cup, the most recent in the flurry of false marking cases, provides good news for companies as it may serve to deter the filing of such cases in the future.

The case was filed by a patent attorney, Matthew A. Pequignot, accusing Solo Cup of false marking.

Pequignot alleged that Solo had manufactured several products marked with expired patent numbers. Based on the number of such products marked, the suit sought damages amounting to trillions of dollars.

In the lower court ruling, Judge Leonie M. Brinkema of the Eastern District of Virginia granted summary judgment in favor of Solo, holding that there was no intent to deceive and thus no violation of law. Pequignot appealed the decision to the Federal Circuit.

The Federal Circuit found in favor of Pequignot on the issue of whether the false marking statute covered the marking of products with the number of an expired patent.

Specifically, the court stated: "We agree with Pequignot that an article covered by a now-expired patent is 'unpatented.'"

Thus, marking with the number of expired patents does trigger the false marking consideration of 35 USC § 292.

But the more interesting aspect of the ruling was the decision in favor of Solo on the issue of deceptive intent. The Federal Circuit found that the statute requires that the false marking was done for the specific purpose of deceiving the public – rather than with mere knowledge that a statement is false.

Thus, if a party can show that it did not consciously desire the result that the public be deceived, it is not in violation of the false marking statute. And that is exactly what Solo successfully argued.

This decision brings good news for companies as it creates a high bar for a plaintiff seeking to establish deceptive intent in a false marking case.

In order to be found in violation of the false marking statute, a company must act with the specific purpose of deceiving the public.

Anthoula Pomrening is a partner at McDonnell Boehnen Hulbert & Berghoff LLP, an intellectual property firm in Chicago, Ill. She can be contacted at 312-935-2366 (direct)or

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