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Justin E. Gray

Partner at Eversheds Sutherland (US) LLP

Former Adjunct Professor at Northwestern University School of Law

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Federal Circuit Affirms Dismissal of False Marking Case Without Leave to Amend

Juniper Networks, Inc. v. Shipley (Fed. Cir. Apr. 29, 2011)

In this case, the Federal Circuit affirmed a district court's dismissal of a false patent marking cases for failure to state a claim.  The defendant allegedly developed software used on the defendant's website, and that software was listed on the defendant's website as associated with specific patent numbers.  The software itself was allegedly destroyed in 1999 due a hard drive crash, but the description of the software as well as the patent numbers remained on defendant's website.  In an amended complaint, plaintiff alleged that defendant falsely marked "the Website and any firewall or other security products or services operating thereon, as well as web pages generated by the Website."

The district court dismissed plaintiff's amended complaint for failure to state a claim and did not grant leave to further amend, finding that plaintiff had not pled facts showing defendant had marked an "unpatented article" because "when considered in context," the marking on the website referred to the specific software project, not that the specific was functioning or operating on the website.

The Federal Circuit affirmed.  The Court pointed out that plaintiff did not allege that the specific software associated with the patent numbers on the website was falsely marked; instead the plaintiff alleged that it was the website and web pages themselves that were falsely marked.  The Court then considered whether websites can qualify as "unpatented articles" within the scope of Section 292, and determined that "because websites may both embody intellectual property and contain identifying markings, this Court holds that websites can qualify as unpatented articles within the scope of [Section] 292."

Next the Court analyzed issues surrounding the website at issue in this particular case.  While the website indicated the specific software was a "current project", the Court found that nothing on the website reasonably suggested that the specific software at issue actually protected the website and agreed with the district court that "it is beyond cavil that, when considered in context, the reference to 'functioning' relates to the progress of the [software] project, not that the software was functioning or operating on the Website."  Ultimately, the Federal Circuit affirmed the dismissal of the plaintiff's amended complaint and did not give leave to further amend, finding no error in the district court's determination that the amended complaint "could not be saved by further amendment."

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.  Gray on Claims is also providing information on false marking settlements.  Other writings on false marking can be found here.