Wednesday, July 08, 2009

"Patent Marking" Case Against Solo Cup Dismissed in ED Va.

Matther A. Pequignot v. Solo Cup Co., No. 1:07-cv-897 (E.D. Va., July 2, 2009, order) (L. Brinkema)

Washington DC patent attorney Matthew Pequignot filed at least two lawsuits against Solo Cup and Gillette (P&G) alleging that the defendants were engaging in "false marking" of their products.

Under 35 U.S.C. 292, marking an unpatented product as “patented” or marking a product as “patent pending” when no patent is pending can be punishable by “not more than $500 for every such offense.” The false marking activities are only actionable if done “for the purpose of deceiving the public.” As a qui tam right, a private citizen could sue, and if successful, split half of the damages with the government.

Pequignot alleged that Solo Cup marks its paper products with patents that had expired more than ten years ago. Previously, the district court denied Solo's motion to dismiss at an earlier stage in the litigation. More recently, Solo Cup moved for Summary Judgment arguing, in part, that Solo could not have acted with "the purpose of deceiving the public."

The judge agreed with Solo and dismissed the case:
For the reasons stated in open court, to be fully explained in a memorandum opinion, defendant's Motion for Summary Judgment is GRANTED, plaintiff's Motion for Partial Summary Judgment is DENIED, and it is hereby ORDERED that the jury trial scheduled to begin on July 27, 2009 be and is cancelled.
Download a copy of the order here (link)

See AP: "Judge closes door on legal quirk in patent law" (link)

11 Comentários:

Anonymous said...

Oh yeah, determining intent on summary judgment . . . can't wait to see Brinkema's memorandum on that. When was the last time intent was not a fact issue for the jury?

Peter, your post said: "a private citizen could sue, and if successful, split half of the damages with the government."

I believe you mean "split the damages with the government". Splitting half the damages with the government would give the platiniff a quarter.

Also, did you know your comments app doesn't work on Firefox? Anyone with half a brain is moving as far away from IE as they can get, so you're likely losing some of your best comments. :-)

Babel Boy

Anonymous said...

Good decision. If an attorney-plaintiff can't tell that a patent has expired by looking up the number in a public database, he likely shouldn't be an attorney (or a plaintiff).

One need not change production equipment the day a patent expires, but can let the production run finish its course, for very good reason. I remember seeing Wiffle bats or balls with old patent numbers on them simply because they never had need to change the molds. It isn't too difficult to check that a 2,700,000 series patent is expired (and it certainly isn't deceptive to anyone with even average intelligence).

Hehh, even if you don't have average intelligence, it's easier to hire an attorney to determine the patent has expired (lets see, 2009-1989=20, that'll be $3000 thank you) than to hire an attorney to file a law$uit.

Or are we saying if you want to COPY someone's design that has a patent number on it, you need perform NO diligence or patent search? You should just close your eyes. Wow, what have we come to as a socialist nation?

The "patent marking police" are not seeking any sort of justice (or "punitive" damages to correct publuic behavior) and they are not performing any public service. They are just seeking a payout and transfer of wealth, like winning the lottery. They are technical equivalent of ambulance chasers.

Anonymous said...

P.S. Babble boy, the comment app works just fine with Firefox (and has since Firefox 1.0, which I also used).

Anonymous said...

Re: Firefox

Weird. I'm using FF 3.0.6 and when I do a comment, there is no wavy word to input for word verification. When I go to IE, there is, and I can post.

I must have an add-on messing FF up, but I can't find anything.

B Boy

Anonymous said...

Here are a few more details, regarding Solo's reasonable conduct and what "every such offense" apparently means in the eyes of the court:

Anonymous said...

BB, my guess is you might have Firefox set to "Block images from Blogger.Com" (Content > Load Images automativally > Exceptions). When I set that, no wavy word appears. The pop-up blocker shouldn't affect the wavy word (at least it doesn't on my system). You will also need Java/Java Script enabled. To test Java, you can go here:

Anonymous said...

Actually, it still works (if this posts) without Java, you just end up surfing away from the 271 Patent Blog and get a full page Blogger.Com window whenever you click on the comment link.

Anonymous said...

Solo's reasonable conduct? Blog entry from another blog:

FYI - From the actual case briefing (obtained here -

Solo’s outside counsel advised Solo in an email dated July 2000 (with respect to expired patent numbers) that: “[t]he false marking of a product with a patent number does create liability for the offender, “and further that the “[blest case scenario is to remove the number, if possible.” (PA-0470, P1’s Ex. 4.)

Also from briefing : “Solo did not change its policy, or stop marking its products with the expired ‘797 and ‘569 patents, after this Court’s ruling on March 24, 2008, that “marking an article with an expired patent number is a false marking under 35 U.S.C. § 292(a).”” [That is, Solo is still marking with expired patents even today.]

Although not discussed in this blog, the record also reveals that Solo also marked unpatented products (not lids, but cups, bowls, spoons, forks, knives, etc.) with language implying that they were patented even though they knew they were not. The packaging of these products was not marked with expired patent numbers, but rather with language importing that the products were protected by foreign or U.S. patents or pending applications.Quote from brief (which includes citations to Solo’s record testimony):

“Solo knew that the cups, bowls or utensils at issue in the case were not protected by a
patent or pending patent application. (PA-0458-0460, D’s Resp. to P1’s Amended mt. No. 14;see also PA-0376-0377, D’s Resp. to P1’s RFA No. 28, 29 (admitting that cups have not been protected by a Solo pending or issued patent); PA-0176-0177, Rule 30(b)(6) Smith Tr. at 258-62
(same); PA-0377-0379, D’s Resp. to P1’s RFAs No. 30, 31, 32 (admitting that utensils have not
been protected by a Solo pending or issued patent); PA-0177-0178, Rule 30(b)(6) Smith Tr. at
263-66 (same); PA-0380-0382, D’s Resp. to P1’s RFAs No. 33, 34, 35 (admitting that bowls
have not been protected by a Solo pending or issued patent); PA-0178-0179, Rule 30(b)(6)Smith
Tr. at 266-69 (same); PA-0 184, Rule 30(b)(6) Smith Tr. at 281 (admitting that, during the period from September 2002 through the present, Solo knew that the cups, utensils and bowls were not covered or protected by a U.S. or foreign patent and were not subject to a pending patent
application by Solo).)”

And lastly, this portion of the brief discusses an internal email written by Solo’s in house counsel (pay attention to that last part):

“Moreover, Solo has admitted through its Rule 30(b)(6) witness that when it marks a
product as patented, it is notifying consumers that at least one patent protects the product. (PA 0170, Rule 30(b)(6) Smith Tr. at 235; see also PA-0499, P1’s Ex. 38 (e-mail from Solo’s in house counsel advising members of Solo’s marketing department that “adding the word
‘patented’ to literature (in addition to any marking on the product) is nice to have as it will give others additional notice of our patent and make them think twice about copying the product.”)”

Anonymous said...

Also pertaining to Solo's "reasonable" conduct:

Another interesting fact - Solo did change some (but not all) of its Traveler lid molds rather recently. But, it did so after it obtained a trade dress registration and then replaced the expired patent number with the wording "Product Configuration" (presumably to indicate that you can't copy the lids because of its asserted trade dress). The trade dress application was filed about a year before the Traveler lid related patent expired, but because of an opposition and rejections and things, it took 4 years plus (give or take) to get the trade dress issued. "Coincidentally", the expired patent numbers were on kept on the Traveler lids UNTIL after the trade dress registration issued.

So basically - change your molds when it helps you (gives the appearance of a monopoly) and leave them on when it helps you (again, gives the appearance of a monopoly)? That's reasonable?

Anonymous said...

"So basically - change your molds when it helps you (gives the appearance of a monopoly) and leave them on when it helps you (again, gives the appearance of a monopoly)? That's reasonable?"

The lady doth protest too much.

No, you should change your molds when it hurts you and leave them on when it hurts you.

Free advice: don't go into manufacturing, stick to law.

And then let the lawyers take money from producers as if the lawyers have won the lottery, since the lawyers are so aiding society by policing old patent numbers! After all, this lawsuit is in the public interest, right? It's a selfless public service against bad, bad Solo!! Heck, somebody's gotta do it - and you need a lawyer to play dumb when necessary ("Duhh, what's this a patent number on a lid? It *must* be an enforceable patent!") and "smart" again when confronting the deep pockets!

This lawsuit is certainly NOT just, at the end of the day, an action to benefit a lawyer.

(Err, umm, but if it is, then we can all be patent marking police, K? I'll do you (and support you in the blog comments) if you do me. Then we can get all the innovative manufacturers whenever they don't change their molds or labels! We'll say they're deceiving others even though no non-lawyers would think to being the suits! Dog gone producers, they should have become non-producing lawyers instead!! Serves 'em right!)

The typical lawyers: leeches of society, "who weigh men down with burdens to hard to bear, and do not so much as lift a finger to carry their load." Oh, you say that's an unfair quote, eh?

Anonymous said...

Hey anonymous,

Are you an agent or an attorney? The newspaper reports seem to say attorney, but the USPTO roster says agent. What gives, son? It can't be too hard to keep a single registration straight, can it? Perhaps the PTO hasn't changed its form molds yet.

But seriously, all kidding aside, just imagine if you had to keep 90 registrations straight like Solo does.


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