Intellectual Property Law

Federal Circuit decisions address false marking statute in Solo Cup and Brooks Brothers cases

By McKee, Voorhees & Sease, P.L.C.

The Federal Circuit continues to address false marking cases. The court's recent decisions stress how important it is for patentees to monitor and update their labeling and other marking activities, particularly as patents expire.

In June, the court affirmed a summary judgment decision in favor of Solo Cup related to the company's practice of marking patents on beverage cup lids, and addressed whether each decision to mark or each article falsely marked is an act of false marking under the statute.  In August, the court addressed the issue of who has standing to bring a false marking case, reversing a district court's finding of lack of standing in a false marking case brought against Brooks Brothers. 

The Solo Cup case demonstrates the potential damage awards against companies that sell numerous products can be very large.  However, the court created a higher bar for plaintiffs seeking to cash in on the false marking statute and demonstrates the importance for a defendant to be able to show good faith actions to overcome any presumption of intent to deceive the public.

The Brooks Brothers case provides a lesson on standing under 35 U.S.C. § 292.   The Federal Circuit held a plaintiff has standing as a result of sufficiently alleging an injury in fact to the U.S. that was caused by Brooks Brothers' false marking of its bow ties, that may be redressed with the statutory fine created by § 292.  This removes a potential barrier to false marking suits being filed in the first instance.

More detail of these two cases after the jump.

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Full post as published by FileWrapper on September 27, 2010 (boomark / email).