False Marking: The Inference From a Knowingly False Statement IS Rebuttable With Evidence of Good Faith

Pequignot v. Solo Cup Co., No. 2009-1547 (Fed. Cir. June 10, 2010).

Holding:

The combination of a false statement and knowledge that the statement was false creates a rebuttable presumption of intent to deceive the public, rather than irrebuttably proving such intent. Slip op. at 9.

An article covered by a now-expired patent is “unpatented” with the meaning of 35 U.S.C. § 292(a). Id.

Relevant Facts:

Peguignot brought a qui tam action under 35 U.S.C. § 292 against Solo for allegedly false marking its products with expired patents and the “may be covered” language. Solo claimed that it relied on counsel’s opinion in good faith for marking its products. The Federal Circuit affirmed the district court’s ruling that Solo has provided sufficient evidence that its purpose was not to deceive the public and thus is not liable for false marking.

Comments:

Recently, private parties have brought a large number of false marking cases in qui tam actions. Here, the Federal Circuit recognizes that “[t]he bar for proving deceptive intent here is particularly high, given that the false marking statute is a criminal one, despite being punishable only with a civil fine.” Slip op. at 12. As a result, the outcome of this case may curb future qui tam actions under 35 U.S.C. § 292.