Last December, we reported the decision by the United States Court of Appeals for the Federal Circuit in The Forest Group, Inc. v. Bon Tool Co., 590 F.3d 1295, (Fed. Cir. Dec. 28, 2009), which interpreted the false patent marking statute, 35 U.S.C. § 292, to require a per article penalty for falsely marking goods. Recently, the Federal Circuit issued another false marking decision, shedding additional light on what minimal type of evidence may be presented to rebut a presumption of intent.

On June 10, 2010, the Federal Circuit issued its decision in Pequignot v. Solo Cup (No. 2009-1547), an appeal of a summary judgment finding for Solo by the United States District Court for the Eastern District of Virginia. At issue in Solo Cup was (1) whether a product marked with an expired patent is an “unpatented product” within the scope of 35 U.S.C. § 292, and (2) whether Solo presented sufficient evidence to rebut the presumption of its intent to deceive created by falsely marking products and knowing that the products were falsely marked. The Federal Circuit confirmed that a product marked with an expired patent (even though the expired patent previously covered the product marked) is still an “unpatented product” and falsely marked within the scope of § 292. However, the court decided in favor of Solo, accepting its arguments that the improper marking activities were tempered by its reliance on the advice of counsel and the economic desire to replace only worn out product molds and did not manifest the requisite intent to deceive the public.