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Justin E. Gray

IP Litigation Attorney at Foley & Lardner LLP

Former Adjunct Professor at Northwestern University School of Law

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Federal Circuit Affirms Finding of No False Marking in Solo Cup Case

Pequignot v. Solo Cup Co. (Fed. Cir. Jun. 10, 2010)

In this false marking case, the Federal Circuit found that Solo Cup lacked intent to deceive the public and therefore affirmed the trial court's ruling of no false marking.

Solo Cup was accused of falsely marking over 21 billion cup lids with the numbers of two expired patents.  Under the false marking statute, the maximum penalty in this case could amount to over $10 trillion.  Solo Cup argued its cup lids were not "unpatented articles" under the statute as the now expired patents at one point did cover the lids and it had no intent to deceive the public.

Regarding whether an article covered by a now-expired patent is an "unpatented article" under the false marking statute, the Federal Circuit stated that "an article covered by a now-expired patent is 'unpatented.'"

Regarding intent to deceive, the Federal Circuit stated that "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."  The Court described that the bar for proving deceptive intent "is particularly high, given that the false marking statute is a criminal one, despite being punishable only with a civil fine … [b]ecause the statute requires that the false marker act 'for the purpose of deceiving the public,' a purpose of deceit, rather than simply knowledge that a statement is false, is required."

Regarding the use of "may be covered" language in marking, the Court stated that "it is highly questionable whether such a statement could be made 'for the purpose of deceiving the public,' when the public would not reasonably be deceived into believing the products were definitely covered by a patent."

Gray on Claims, in conjunction with Docket Navigator®, is providing a false marking chart that is updated daily with new false marking cases as well as status updates on pending cases.  A downloadable PDF chart is available on this page as well including information on the specific patents and products at issue in each litigation.  Other writings on false marking can be found here.