Not Dead Yet: False Marking Claims

We’ve commented numerous times before about the rise—and fall—of so–called “false marking” claims, which, like the goddess Athena of Greek mythology, were born fully armed and fighting (following the Federal Circuit’s decision in Forest Group, Inc. v. Bon Tool Co. rapidly expanding the amount of damages which could be claimed by a party bringing suit), and seemingly faded equally abruptly in the wake of additional Federal Circuit case law (requiring heightened pleading) and patent reform legislation (requiring a plaintiff to show a “competitive injury”).

With a hat tip towards Virginia IP Law (as well as Monty Python and Mark Twain), we note that the rumors of the death of false marking claims may be greatly exaggerated. In Sukumar v. Nautilus, Inc., the Western District of Virginia ruled that a false marking plaintiff could proceed with its case under state consumer protection laws, including laws governing unfair competition and false advertising, and that such claims were not preempted by the federal patent laws.

Before our readers should grow concerned over the specter of resurrected false marking claims, we note that there are limitations to the Court’s ruling in Sukumar. In a footnote, the Court explicitly notes that it leaves for another day the issue of whether preemption would result if there was no allegation of competitive injury. Moreover, throughout the order, Judge Turk notes significantly that the current case before him does not (or at least, no longer does) deal with expired patents. Finally, the Court observes that without allegations of bad faith, the claims would be preempted. All told, this may serve to keep the gates of false marking claims from being flung open once more.

Posted by Stacy Stitham