False Patent Marking Statute Requires a per Article Penalty


On December 28, 2009, the United States Court of Appeals for the Federal Circuit interpreted the false patent marking statute, 35 U.S.C. § 292, to require a per article penalty for false marking, at the discretion of the court, which could encourage larger and more frequent awards for false marking in future cases. Proper patent marking, or actual notice to an infringer, is typically required to recover damages under 35 U.S.C. § 287.

At issue in The Forest Group, Inc. v. Bon Tool Co., No. 09-1044 (Fed. Cir. Dec. 28, 2009), was whether the false patent marking statute requires a per article penalty or a penalty assessed per each decision to mark any number of articles. The Forest Group, Inc., owner of U.S. Patent No. 5,645,515 (“the ‘515 patent”), filed a lawsuit in the U.S. District Court for the Southern District of Texas against Bon Tool Company for allegedly infringing the ‘515 patent directed toward parallelogram stilts, typically used in the construction industry. Because the stilts sold by Bon Tool did not contain a feature (a resiliently lined yoke) required by the ‘515 patent, summary judgment of non-infringement was granted to Bon Tool. Bon Tool also counterclaimed alleging false patent marking of the stilts sold by Forest Group because their products were marked with the patent number but also did not include the required feature.

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