Subscribe and Connect

Justin E. Gray

IP Litigation Attorney at Foley & Lardner LLP

Former Adjunct Professor at Northwestern University School of Law

Send questions, comments and suggestions to

« Federal Circuit Holds Rule 9(b) Applies to False Marking Cases | Main | United States Files Motion to Intervene and for Reconsideration of Order Finding False Marking Statute Unconstitutional »

District Court Grants Defendant's Motion for Summary Judgment in False Making Case

Heathcote Holdings Corp. v. William K. Walthers, Inc. (N.D. Ill. Mar. 11, 2011)

In this case, the Court concluded on summary judgment that "defendant did not knowingly include false patent markings on [the accused product] packaging" and "[p]laintiff has failed to identify sufficient evidence to enable a reasonable jury to conclude that defendant acted with the deceptive intent required under [Sec.] 292." 

The Court stated, among other things, that "Here, there is simply no evidence that anyone knew the patent information on the [accused product] packaging was false, much less that anyone armed with that knowledge decided to include it anyway.  (And even if someone had, that fact alone still would not be enough for liability under [Sec.] 292, which requires 'a purpose of deceit, rather than simply knowledge that a statement is false.'  Pequignot, 608 F.3d at 1363.)".

The Court also explained that "on the one hand, [the product packaging team] knew that [the accused product] packaging included patent numbers; but none of these individuals knew that the listed patents had expired or did not cover the products to which they were affixed.  On the other hand … an employee of defendant who was involved in the company's due diligence at the time of [an] acquisition, knew that only one patent was recorded among the assets purchased; but he apparently had no idea that [the accused product] packaging was marked with any patent numbers at all, much less that it was marked with patents other than (or really, in addition to) the one assigned to defendants in the course of the … acquisition.  In short, no single corporate agent possessed the various pieces of information necessary to form the requisite deceptive intent."

As the Court concluded the defendant did not knowingly include false patent markings on the accused product packaging, it determined it "need not analyze the remainder of plaintiff's legal argument, which relies on the burden-shifting analysis of Clontech Laboratories, Inc. v. Invitrogen Corp."

A PDF copy of the Court's opinion can be found here.