Patentees are generally only entitled to infringement damages once an infringer has notice of the infringement. The patent marking statute permits patentees to provide this notice to the public by marking a product that is covered by a patent, or the packaging that contains that product, with the patent number. This is why it is recommended that patentees mark their patented products or product packages with the number.
U.S. patent law also provides a penalty for falsely marking a product that is not covered by a patent. False marking with intent to deceive the public can result in a fine of up to $500 for each such offense. The statute permits “any person” to sue for this remedy and to share half of the recovery with the U.S. government. It is under this provision that Pequignot sued Solo.
Pequignot’s complaint alleged that, in addition to marking several products with numbers of expired patents, Solo also marked several products with, “This product may be covered by one or more U.S. or foreign pending or issued patents,” when the products were not in fact covered by any issued patents or pending patent applications.
First, Solo asked the court to dismiss the complaint for failure to state a claim, arguing that marking with an expired patent number cannot be false marking and indicating that a product “may be covered” by a patent is not false marking. The court denied Solo’s motion, holding that, as a matter of law, marking products with expired patent numbers may constitute false marking and that that the use of “may be covered” language does not constitute a safe harbor from false marking claims.
Second, Solo asked the court to dismiss the case because Pequignot lacked standing to sue under the Constitution because he had not personally suffered injury because of Solo’s conduct, or alternatively, that the law that permits this suit is unconstitutional because it allows a private citizen to enforce the law. The court permitted the government to file a brief in support of the constitutionality of the statute. On this issue, the court denied Solo’s motion to dismiss, finding that Pequignot did not have standing individually, but he had standing acting on behalf of the government as provided by the statute. Most of these types of statutes giving private citizens rights to enforce laws have been repealed over the years, but they do have a long history going back to England and the early years of the United States. Thus, the court found the statute to be constitutional. The court did note that “[i]t is likely an accident of history” that this statute survived.
Pequignot has filed a similar suit against Gillette Co. Seeing that he survived the first two hurdles in his suit against Solo, Gillette is instead defending its suit with the next hurdle that Pequignot must cross. Gillette has asked the court to dismiss the case because Pequignot cannot show that the company acted with “an intent to deceive.” This inquiry does seem to be a more significant hurdle for the plaintiff than the first two.
The lesson for patent owners from this case is to have patent counsel review the products being marked with patent numbers. This way, the patent owner will have a good faith argument that the product is covered by the patents that are listed, and the attorney can help the patent owner determine when patents have expired and should no longer be marked on the product.
Matthew R. Osenga