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


False Marking - Update on Number and Type of New Cases, Pending Legislation

Since the Federal Circuit's December 28, 2009 Forest Group decision, at least 130 newly-filed litigations contain false marking claims.  Here is a breakdown of new case filings by month:

  • December 2009 - 1
  • January 2010 - 5
  • February 2010 - 61
  • March 2010 - 62

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.

It is also interesting to consider the type of false marking allegations being made in these new cases when compared to the false making cases filed pre-Forest GroupDocket Navigator® has analyzed this and concluded that while the majority of pre-Forest Group false marking allegations concerned whether the product was within the scope of the patent claims, the vast majority of post-Forest Group cases concern expired patents.  Illustrative charts (provided and shown here with permissions of Docket Navigator®) showing these difference are below.

Last week, members of the U.S. House of Representatives proposed legislation that would amend the false marking statute to limit the class of qui tam plaintiffs to those who have suffered a "competitive injury" due to the alleged false marking.  The proposed legislation would be retroactive and would apply to all cases pending on or after the date the legislation is enacted.  The full text of the proposed legislation can be found here.


Federal Circuit Reverses District Court's Finding of Indefiniteness

Hearing Components, Inc. v. Shure, Inc. (Fed. Cir. Apr. 1, 2010)

Today, the Federal Circuit reversed a district court's finding that the claim term "readily installed and replaced by a user" was indefinite as the patent specification supplied some standard for measuring the scope of the term.

The patent at issue related to a fibrous guard that is sound-porous but blocks ear wax.  One limitation of the claims required a wax guard "being readily installed and replaced by the user."  The district court found this limitation indefinite as it determined the word "readily" was not sufficiently explained in the specification and the specification's standard for the term was so subjective that the court could not determine what the term meant in the context of the patent.  The district court stated that "[i]t would be extremely difficult, if not impossible, for someone attempting to design around claim 1 to determine what test group of users would be used to measure ease of replacement and which degree of difficulty would be sufficient to avoid infringement.  The court therefore finds this claim term indefinite."

Plaintiff argued on appeal that the term was not ambiguous, as a person of ordinary skill in the art would know that the term means "simple to install, without tools or specialized skills," given language in the specification that disparaged prior art requiring tools and touted that the invention required no tools.  Plaintiff also argued that the term was not a claim limitation that required construction as the term appeared in the preamble and was not an essential component of the invention.

The Federal Circuit disagreed with the district court.  First, the Federal Circuit determined that the term was a claim limitation, as the plaintiff "clearly relied on the 'readily installed' phrase during prosecution to distinguish prior art."  The court went on to note, citing prior precedent, that "[a] patentee need not define his invention with mathematical precision in order to comply with the definiteness requirement … [n]ot all terms of degree are indefinite … the specification must provide some standard for measuring that degree." (internal citations omitted).  As the patent specification provided that one of the advantages of the wax guard was that it "is inexpensive and requires no tools for installation or removal", the written description "gives a clear example of a wax guard that is 'readily installed and replaced by a user': one that 'is inexpensive and requires no tools for installation or removal.'"  The specification also specifically "disparaged prior art guards that were not 'readily installed and replaced.'"  The Federal Circuit therefore found that the term was not indefinite as "[t]he specification clearly 'supplies some standard for measuring the scope of the phrase.'"  The court, however, did not construe the term in the first instance and remanded back to the district court for additional claim construction.

As a side note, it is unclear to the author how the term at issue could be considered part of the claim preamable given the linguistic structure of the claim.


Panel Disagrees Regarding Use of Incorporation by Reference to Identify Structure for Means-Plus-Function Claims

Pressure Products Medical Supplies, Inc. v. Greatbatch Ltd. (Fed. Cir. Mar. 24, 2010)

In this case, a split Federal Circuit panel reversed a district court's claim construction that was amended during trial.  The patent related to an introducer, which is a device that permits a surgeon to place and remove catheters or pacemaker leads into blood vessels during surgical procedures.  During the district court proceedings, a magistrate judge held a claim construction hearing and construed the function of a means-plus-function limitation in the patent claims as "score lines defined in the hemostatic value and introducer sheath, and equivalents thereof."  The magistrate judge then defined "score lines" as "one or more line(s) defined in the hemostatic valve and introducer sheath."  During trial, the district court, sua sponte, defined "score line" as a "linear perforation; slit; slot; tab; line; severing; weakening; or tear that can be partial or complete" in response to cross-examination of witnesses.  Defendant initially agreed with this supplemental claim construction, but later objected to it.  Ultimately, the district court found for the plaintiff.

The Federal Circuit had no problem with the district court's claim construction procedure, recognizing "the potential for surprise and prejudice in a late adjustment to the meaning of claim terms" but also acknowledging "that the trial court is in the best position to prevent gamesmanship and unfair advantage during trial … [and] a trial judge may learn more about the technology during the trial that necessitates some clarification of claim terms before the jury deliberates." 

Regarding the construction of "score lines" itself, the Federal Circuit found "the trial court erred in expanding the definition of 'score line' to include structures not disclosed in the specifications."  The issue here was that the trial court included structures in its definition that were disclosed within a list of prior art references mentioned in the specification.  The Federal Circuit noted that "[t]rial courts cannot look to the prior art, identified by nothing more than its title and citation in a patent, to provide corresponding structure for a means-plus-function limitation … [s]imply mentioning prior art references in a patent does not suffice as a specification description to give the patentee outright claim to all of the structures disclosed in those references."  Ultimately the Federal Circuit construed the "score lines" term consistent with the magistrate judge's initial construction and remanded the case for further proceedings consistent with this construction.

Judge Newman dissented, stating that "[n]o blanket rule prohibits reliance on prior art for known information [i.e. equivalents to a structure disclosed in the specification]."  She also explained that the majority's "ruling negating reliance on information incorporated by reference can have far-reaching consequences, in prohibiting reliance on incorporated published material, thereby requiring the applicant to reproduce possibly large amounts of published text, even if only to show variants known in the prior art, as here."


Split Federal Circuit Panel Finds Preamble Language Not Limiting

Marrin v. Griffin (Fed. Cir. Mar. 22, 2010)

In this case, a split panel of the Federal Circuit affirmed the district court's finding of anticipation as the only distinguishing feature of the claimed invention was a limitation found solely in the claim preamble.

The claims related to the idea of using a scratch-off label to mark beverage containers and cups so that attendees of a gathering or party could keep track of their beverage cups.  While the patentees admitted that the prior art disclosed various scratch-off devices, they contended that the prior art did not disclose scratch-off labels "for permitting a user to write thereon without the use of a marking implement", as stated in the preamble of the claims.  The district court ruled that the "for permitting" language was not a claim limitation as it only added a statement of a purpose or an intended use for the invention and the patentees did not demonstrate clear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art.

Judge Dyk, writing for the majority, noted that "use descriptions such as this are rarely treated as claim limitations" and while "[c]lear reliance on a preamble during prosecution can distinguish a claimed invention from the prior art and render the preamble a claim limitation … there was no such reliance here."  During prosecution, the patentees explained to the examiner while amending the claims to their current form that "'writing means' is not an element of Applicant's claims, and does not appear in the new claims."  As the patentees "expressly attested that the 'writing means' language was not a claim limitation, they cannot now assert that it was such a limitation."  The court therefore affirmed the district court decision.

Judge Newman wrote in dissent that "the court has misunderstood the law of 'anticipation' and has misapplied the rules of claim construction … [i]t is incorrect to construe a claim so as to delete limitations stated in the claim - including the 'preamble' clause - and then to hold the claim 'anticipated' by subject matter that is excluded by the limitations stated in the preamble clause."  Judge Newman disagreed with the majority's characterization of the prosecution history, finding that "[t]he '448 patent specification and prosecution history make clear that the [patentees'] claimed invention is not 'scratch-off' technology generally, for other uses of 'scratch-off' layers were known; their invention is a scratch-off label on which a user can inscribe information by scratching the surface without the need for a marking implement.  The 'for permitting' phrase in the preamble is the portion of the claim that makes this aspect clear."  Judge Newman went on to describe how the patentees distinguished prior art in their patent specification and noted that such differences "are ignored by my colleagues … [the majority] instead engrafts a meaning on the claim that the inventors did not present and the Patent Office did not examine."


First False Marking Declaratory Judgment Action Filed

North States Indus., Inc. v. Patent Compliance Group, Inc. (D. Minn., complaint filed Mar. 16, 2010)

North States Industries, Inc. was sued for false patent marking by the Patent Compliance Group in the Northern District of Texas on March 1st.  Patent Compliance Group has alleged that North States falsely marked pet gate products with the numbers of two expired patents.  In response, North States recently filed its own Declaratory Judgment Action against Patent Compliance Group in the District of Minnesota, asking for a judgment that North States has not violated the false marking statute.

Filing such a DJA is a novel strategy and it will be interesting to see if other entities accused of false marking follow suit.  It is currently unclear whether North States will also be filing a motion to dismiss in the Texas false marking litigation for lack of personal jurisdiction or venue grounds.

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.  A link to North States' DJA complaint can also be found on this chart.


BPAI Finds Broadest Reasonable Construction of "Computer Program Product" Includes Non-Statutory Subject Matter

Ex parte Peyrelevade (BPAI Mar. 17, 2010)

Today, the BPAI reversed an examiner's final rejection of claims and entered a new ground of rejection of claims related to a module that may be used in multiple websites.  While the BPAI found that the applicant overcame the prima facie showing of anticipation and obviousness of the claims at issue, the BPAI entered a new ground of rejection of certain claims as being directed to non-statutory subject matter.

These claims recited a "computer program product" that includes code.  Giving the claims their broadest reasonable interpretation, the BPAI found that the claims "encompass[] a computer program per se … [and] also encompass[] the computer program product being embodied on a carrier wave" since the claims recited "the open transitional phrase 'comprising and do[] not preclude the computer program product from being embodied in a carrier wave."  Citing In re Nuijten along with two documents available on the USPTO website, "Subject Matter Eligibility of Computer Readable Media" and "Interim Examination Instructions for Evaluating Subject Matter Eligibility under 35 U.S.C. 101", the BPAI found that the claims encompassed both a computer program per se as well as a signal, and were therefore directed to non-statutory subject matter.


Design Patent Claim Construction: Segregation of Functional From Ornamental Features Appropriate

Richardson v. Stanley Works, Inc. (Fed. Cir. Mar. 9, 2010)

Today the Federal Circuit approved a district court "distinguish[ing], as part of its claim construction, the ornamental aspects from the functional aspects of [the patentee's] design" in a design patent infringement case relating to a multi-function carpentry tool that combines a conventional hammer with a stud climbing tool and a crowbar.

The plaintiff had argued on appeal that "the district court erred in its claim construction by separating the functional aspects of the design from the ornamental ones, rather than considering the design as a whole" in violation of the Egyptian Goddess requirement that "the patented design be compared in its entirety with the accused design" and argued instead that separating out functional aspects of a design patent is only appropriate for designs that contain "purely functional" elements.

Finding that the issue before the court was not very different from that in OddzOn Prods., Inc. v. Just Toys, Inc., the Federal Circuit explained that "[i]f the patented design is primarily functional rather than ornamental, the patent is invalid. However, when the design also contains ornamental aspects, it is entitled to a design patent whose scope is limited to those aspects alone and does not extend to any functional elements of the claimed article." (internal citations omitted).  The court followed up by stating that "[a] claim to a design containing numerous functional elements, such as here, necessarily mandates a narrow construction.  Nothing in our en banc Egyptian Goddess opinion compels a different outcome."

Ultimately, the Federal Circuit approved the district court's segregation of functional elements from ornamental elements in the design patent claim construction.


False Marking: Senate Proposes to End False Marking Onslaught

If the comprehensive patent reform amendment announced today is passed, qui tam plaintiffs who have been hunting for expired patent numbers to bring false marking suits will be out of luck.  Only "competitive[ly] injure[d]" parties will be able to sue for false marking.  The Senate bill, if enacted, would have sweeping retroactive effect even for still-pending but earlier-filed actions.

Today, leaders of the Senate Judiciary Committee announced details of an agreement by key Senate leaders on legislation for patent reform.  Among the provisions of this proposed legislation is a modification of the false marking statute.  Presently, 35 U.S.C. 292(b) provides that "[a]ny person may sue for the [false marking] penalty, in which event one-half shall go to the person suing and the other to the use of the United States."  The proposed legislation amends 292(b) to read as follows:

(b) A person who has suffered a competitive injury as a result of a violation of this section may file a civil action in a district court of the United States for recovery of damages adequate to compensate for the injury.

The proposed legislation is retroactive as it states the amendment would "apply to all cases, without exception, pending on or after the date of the enactment of this Act."

Roughly 75 false marking lawsuits have been filed in the last two months against over 100 companies (up-to-date case information available here), with many of these qui tam plaintiffs apparently being individuals or entities specifically formed to litigate such false marking suits.  The full text of the Manager's Amendment is available for review here.


Public Patent Foundation Releases Free Claim Construction Dictionaries

On March 1st, the Public Patent Foundation ("PUBPAT") announced that it has released claim construction dictionaries authored by Dr. David Garrod (PUBPAT Senior Litigation Counsel) free of charge to the public.  The dictionaries are available for download through the PUBPAT web siteor through Google Docs.  Three dictionaries are available relating to (1) electronics, computer and business method arts; (2) mechanical, electro-mechanical and medical device arts; and (3) chemical, pharmaceutical and biotechnology arts.

As stated in PUBPAT's press release, "[e]ach of the released volumes covers district and appellate court decisions in the indicated subject areas, starting with the Federal Circuit's 1995 Markman decision and running through the end of 2009.  Content appears in an easy-to-read dictionary format, indexed by the exact claim language construed. Because the usefulness of any particular construction depends critically on the reason that the court adopted the construction in question (e.g., was it "plain meaning" or a definition in the patent), each entry is endnote-linked to the relevant decisional text, with the portions of the full-text that define the particular construction highlighted for easy reference."

Interested individuals can download the three claim construction dictionaries using links in PUBPAT's press release.


Patent Marking Police Strike Again - 100 Companies Now Affected by False Marking Suits

Yesterday, two plaintiffs (Patent Compliance Group and Bentley Hollander) who have already filed multiple false marking lawsuits since the Federal Circuit's Forest Group Inc. v. Bon Tool Co. decision, filed a total of five additional false marking suits in Texas and Pennsylvania.  This is on top of 27 false marking suits filed by a single plaintiff in Illinois last week.  These new cases bring the total number of false marking suits brought in the last two months to at least 68 lawsuits by 22 different plaintiffs against roughly 100 companies.

Gray on Claims has recently added a new feature to track these newly filed false marking cases, as well as those filed prior to the Forest Group decision.  Up-to-date false marking case information can be found here.

Other false marking resources available on Gray on Claims: