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Federal Circuit Discusses False Marking Statute for First Time

May 05, 2005

Decision icon Decision

Last Month at the Federal Circuit - June 2005

Judges: Clevenger (author), Dyk and Prost

In Clontech Laboratories, Inc. v. Invitrogen Corp., No. 03-1464 (Fed. Cir. May 5, 2005), the Federal Circuit affirmed-in-part, reversed-in-part, and vacated-in-part a district court's decision holding that Invitrogen Corporation ("Invitrogen") had falsely marked certain of its molecular biology products. The claims of the four patents involved in this litigation are generally directed to RNase H deficient Reverse Transcriptase ("RT") polypeptides. Invitrogen markets RTs known as SUPERSCRIPT ("SS") and SUPERSCRIPT II ("SSII"), and marks these products with the four patent numbers of the patents-in-suit.

The district court found that Invitrogen's SS and SSII products and a cDNA library product had been falsely marked with the numbers of the patents-in-suit.

The Federal Circuit announced that this case presented it with virtually an issue of first impression concerning the proper scope of 35 U.S.C. § 292(a). The Court first ruled that in order to determine if an article is patented for purposes of § 292, the claim in question must first be interpreted to ascertain its correct scope, and then it must be ascertained whether the claim reads on the article in question. The Court saw no reason to interpret this statute as one of strict liability for mismarking. However, it concluded that the mere assertion by a party that it did not intend to deceive will not suffice to escape statutory liability. Rather, in order to establish knowledge of false marking, the plaintiff must show by a preponderance of the evidence that the party accused of false marking did not have a reasonable belief that the articles were properly marked. Absent such proof of lack of reasonable belief, no liability under the statute ensues.

Concerning the "reasonable belief" requirement in this case, Clontech Laboratories, Inc. had argued, and the district court agreed, that Invitrogen had run tests in 2000 and learned that its products were not covered by the patents, and, thus, Invitrogen's patent markings were statutorily deceptive. The Federal Circuit disagreed, concluding that the district court, having viewed the testimony and evidence as a whole, had erred in deciding that the results of the 2000 experiments were sufficiently conclusive to put Invitrogen on notice that its products were not covered by the patents-in-suit.