A Fanciful False Marking Fiction By a Cottage Industrialist

Fig. 1 of US Patent No. 5,147,343 (now expired), previously owned by Kimberly-Clark Corp., and which pertains to Goodnites® Sleep Shorts.

The day starts out quiet enough. I wake up and scoop my contacts out of the Clear Care® contact lens solution they’re swimming in. Blinking rapidly to settle my contacts, I focus on some tiny numbers printed on the contact solution box. Patent numbers. I’ve been using the solution for years and wonder how old the patents must be. I do a quick Google search and discover that the patents have expired. Strange that expired patents would be printed on the box…  My 3 year old interrupts my thoughts as she walks up to me still rubbing her eyes, complaining that her Goodnites® Sleep Shorts are soggy. Knowing that absorbent products containing hydrogels with ability to swell against pressure don’t change themselves, I quickly get her some dry pants. Doing so, I check the box and sure enough, more expired patent numbers. Next I head to the kitchen to look at my “to-do” list for the day. As I look over my list, I check my blood sugar with my nifty Accu-Chek® device. On it I find more expired patent numbers. I’ve never noticed patent numbers before, but suddenly the world seems populated with products stamped with the indicia of expired monopoly rights.

First item of the day is to give Scruffy his Heartgard®. I look for my favorite pair of scissors to cut open the box. No one else is allowed to use my Fiskars®, so I know exactly where they are in the drawer, right behind my Mead® envelopes. Once again, more expired patent numbers on both. Once Scruffy has broken free of my vise-like grip, I see tufts of his hair floating about as a result of our tussle. You’d think he’d be grateful that I’m protecting him from heartworms, but no, he has to fight like a caged lion and litter my floor with fur balls. No matter, I head to the broom closet and pull out my trusty Oreck®. Sure enough, more expired patent numbers. Seems like they’re everywhere. As I put the vacuum cleaner way, I realize I’m running late. Not having time to put on my make-up, I make do with some moisturizer and Blistex®. Another expired patent number. I can feel a head-ache coming on, so I pop a couple of Advil® on my way to lock the sliding door, where I notice the lid to the Weber® grill on the back porch is askew from last night’s wind storm. Two more expired patent numbers. After setting it to rights, turning down my Hunter $et’N’$ave thermostat, grabbing my keys and the girl, I head out for breakfast.

At the local diner, I notice in the background the classic Bunn® coffee maker, complete with orange handled decaf carafe sitting on the top. I quietly make my way to the counter, and nonchalantly begin to set the removable parts of the machine to the side. I glance around me, and then quickly lean the machine back into the cook’s window so I can get a good look at the bottom. Ah ha! I quickly grab my phone, snap a few photos and carefully lower the Grand Poobah of coffee makers back into place. A waitress stares at me as I walk back to my booth. Little does she know that the joke is on her – everyone knows that if patent numbers like the ones seen on the bottom of the Bunn start with a “3” they are expired!!!

A maniacal laugh escapes my lips as I snatch my daughter’s crayons and begin to frantically write down the list of products I have used today. I start to do the math in my head, knowing that 3 to the 20th power, multiplied by the square root of 14 and carrying 4 will certainly give me the exact answer I need. I smile as the realization washes over me: I just made 42 bajillion dollars today. And it’s not even 9 am.

On a more serious note, in Forest Group, Inc. v. Bon Tool Co., the Federal Circuit responded to plaintiff’s argument “that interpreting the fine of § 292 to apply on a per article basis would encourage ‘a new cottage industry’ of false marking litigation by plaintiffs who have not suffered any direct harm” with this statement: “This, however, is what the clear language of the statute allows. Section 292(b) provides that ‘[a]ny person may sue for the penalty, in which event one-half shall go to the person suing and the other to the use of the United States.’ 35 U.S.C. § 292(b).”

The recent explosion of False Marking cases is evidence that the “cottage industry” has indeed begun, and people are now finding expired patent numbers everywhere. Each product mentioned in the above fictional narrative was listed in False Marking complaints found in Wednesday’s Docket Report, which contained a total of 25 new cases, 17 of those for False Marking. Today’s Docket Report contained 10 more False Marking cases out of 19 total new cases. For a more serious discussion of these cases, please see Justin Gray’s blog, Gray on Claims. To see a daily summary of these events, along with every noteworthy event in patent litigation in the US District Courts, subscribe to the Docket Report or ask for a free trial.


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Join the Discussion

11 comments so far.

  • [Avatar for Noise above Law]
    Noise above Law
    February 27, 2010 06:34 pm

    *expressly – not in the direct legal sense – sorry for the loose legal language – see more current decisions on this very topic.

    E.D. Va may agree now – it will not when all is said and done.

  • [Avatar for Noise above Law]
    Noise above Law
    February 27, 2010 06:33 pm

    for example – “Brinkema also rejected Pequignot’s arguments, backed by the consumer groups, that each cup or lid was a separate “offense” ” has now been expressly overruled.

  • [Avatar for Noise above Law]
    Noise above Law
    February 27, 2010 06:31 pm

    the case is not final – expect the law to be applied as I indicated

  • [Avatar for Noise above Law]
    Noise above Law
    February 27, 2010 06:29 pm

    look at the rationale for the dismissal

  • [Avatar for hotboxing examiner]
    hotboxing examiner
    February 26, 2010 08:02 pm

    Noise Above Law says “Sorry, you do not. E.D. Va does not agree with you”

    I assume the first poster was talking about the Solo Cup case involving expired patents. The judge dismissed that case (http://www.dailyherald.com/story/?id=317069). So I don’t understand you, Noise Above Law. Did that case deal with a different issue?

  • [Avatar for Noise above Law]
    Noise above Law
    February 26, 2010 04:00 pm

    Patent terms are known to be a limited time item. Paying for a patent means that you should know when it expires. The mens rea is very easy to reach in any such cases of expired patents.

    The more difficult cases will be for those products that experience product changes during the course of petent terms (typically product improvement drives in production) that make that product fall outside the claims of a patent.

    Even though this would be difficult, the fact of the matter is that you do not have to mark, and that marking carries with it certain risks along with the legal benefits. I could very much see courts taking a line here that companies wanting those legal benefits do not get to ignore the law that holds that the mark IS the status, and not an invitation to look up the status. Mens rea may be inherent in the choice to grab the legal benefits of marking.

  • [Avatar for Vincent LoTempio]
    Vincent LoTempio
    February 26, 2010 01:41 pm

    If you think that constitutes a “cottage industry” what will happen if one of these cases gets a huge damages award? How many would be “Patent Police” will come out of the woodwork? Boy i would love to make 42 bajillion dollars today too. I love math your skills.
    It will be interesting to see if the courts will find the necessary mens rea to find false marking and what the courts will do in the “exercise of their discretion” as to the size of damage awards.

  • [Avatar for Noise above Law]
    Noise above Law
    February 26, 2010 12:22 pm

    ” I have the right to mark my product with a patent number that means these things.”

    Sorry, you do not. E.D. Va does not agree with you.

    It would behoove you to check the law before giving such errant advice.

  • [Avatar for Overlawyered Pushback]
    Overlawyered Pushback
    February 26, 2010 11:44 am

    “Marking is a priveledge, not a right.”

    The truth is a right though. Truth, as in, “this product is described in a patent and was, at one time, considered new and nonobvious. The maker of this product is clever.” If I have the right to truthfully state these things, I have the right to mark my product with a patent number that means these things. I’m glad at least the E.D. Va agrees.

  • [Avatar for Jerry Miller]
    Jerry Miller
    February 26, 2010 09:05 am

    Fun story. Along the same vein, I have pondered whether anyone has considered suing the USPTO for false marking the T-shirts they sell in the gift shop that say “Patent Pending”. :~)

  • [Avatar for Noise above Law]
    Noise above Law
    February 26, 2010 03:02 am

    Cute story.
    Simple answers.

    Marking is a priveledge, not a right.
    Marking IS the status, not an invitation to check the status.
    As status changes, so must marking.

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