BLOGS: Patent Markings

Tuesday, April 19, 2011, 10:03 AM

Defendants Continue Winning Battles on What Constitutes "False Marking"

By: Jim Lennon
Last week two district courts added clarity on what constitutes false patent marking in violation of 35 U.S.C. § 292.

It is Permissible to Mark Method Patents on Products:

The U.S. District Court for the Northern District of California dismissed a recent claim, ruling that producers could mark method patents on products without necessarily violating the statute. San Francisco Technology Inc. v. Elkay Plastics Company, Inc., 3-11-cv-00291 (CAND April 15, 2011, Order) (Alsup, J.).

Instruction Manuals and Website Markings NOT Covered by Statute:

The U.S. District Court for the Eastern District of Pennsylvania granted summary judgment to the defendant, Timex, ruling that their patent markings in instruction manuals were not covered by the statute because they were not themselves “unpatented articles” nor were they “affixed to unpatented articles”. Hollander v. Timex Group USA, Inc., 2-10-cv-00429, pp. 7-8 (PAED April 13, 2011, Order) (Schiller, J.). The court further ruled that their manuals and the “Terms of Use” sections of their website were not “use[s] in advertising” as contemplated by the statute. Id. at pp. 8-11. Finally the court ruled that Hollander, the qui tam relator, had “failed to introduce evidence that Timex acted with the requisite intent to trigger liability under § 292.” Id. at pp. 11-19.
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