June 2010

Looking Ahead

Qui tam actions under 35 U.S.C. § 292 (false marking) have become a growing trend in the field of intellectual property litigation.  On June 10, 2010, the Federal Circuit issued an important decision in this area in the case of Pequignot v. Solo Cup Co., 09−1547 (Fed. Cir. June 10, 2010).  In that case, the Federal Circuit affirmed the decision of the Eastern District of Virginia that Solo Cup Company (“Solo Cup”) was not liable for false marking because it did not exhibit the requisite intent to falsely mark its products.  While the Court acknowledged that articles marked with expired patent numbers are, in fact, falsely marked, it concluded that the false marking statute also requires that the marker act “for the purpose of deceiving the public.”  Thus, false marking, combined with knowledge of the falsity, merely creates a rebuttable presumption of intent to deceive.  In this case, the Federal Circuit held that Solo Cup had rebutted the presumption of intent to deceive by seeking advice of counsel, instituting a policy of replacing worn “marked” cup molds with new “unmarked” molds, and incorporating language that its cups “may be covered” by particular patents. 

Look for a summary of the Solo Cup case in next month’s edition of Last Month at the Federal Circuit.