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February 24, 2010Client Alert

Why the Recent Proliferation of False Patent Marking Lawsuits?

Anyone who monitors the court dockets may have noticed a recent spike in lawsuits for false patent marking under 35 USC § 292. For example, today's docket indicates that yesterday a single plaintiff represented by the same law firm filed 11 separate lawsuits in the United States District Court for the Northern District of Illinois against Pfizer, Blistex, CIBA Vision, Bunn-O-Matic, Hunter Fan, Kimberly-Clark, Merial, Mead Westvaco, Weber-Stephen Products, Oreck, and Fiskars Brands. A different plaintiff represented by that same law firm also sued Roche Diagnostics in the same court. Additionally, false marking lawsuits were filed in the United States District Court for the Eastern District of Texas against Procter & Gamble, Able Planet, Amazon.com, Century Martial Art Supply, Morningware, Target Stores and Wal-Mart Stores, Tweezerman International, Nutro Products, S&M NuTec, and Hunter Fan. There was also a false marking lawsuit filed in the Northern District of Texas against Activision Publishing, maker of the Guitar Hero video game.

The increased scrutiny of patent marking may be explained by the Federal Circuit’s recent decision in Forest Group Inc. v. Bon Tool Co., 93 USPQ2d 1097 (Fed. Cir. December 28, 2009). In that case, the Federal Circuit confirmed its view that 35 USC § 292 (b) allows anyone to sue, including so-called patent “marking trolls” whose primary, if not sole, purpose is to bring the litigation for personal gain, rather than because of any direct harm suffered. The personal gain arises from the fact that the statute permits a successful plaintiff to collect one half of the penalty of up to $500 per offense as a bounty. The Federal Circuit in Forest Group also confirmed that each product marked in violation of the statute constitutes a single “offense.” In situations where the number of accused products is high, the plaintiffs will almost certainly argue for a significant penalty.

Michael Best attorneys are familiar with recent legal developments related to false patent marking, and have experience defending claims asserted under 35 USC § 292.

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