Wednesday, September 01, 2010

Wall Street Journal covers Brooks Brothers patent marking case

In New Breed of Patent Claim Bedevils Product Makers , DIONNE SEARCEY covered aspects of the false patent marking issue found in the Federal Circuit case Stauffer v. Brooks Brothers.

One reason put forward for false marking of some products was the use of outdated product molds put into use in China:

"You're paying the hostage fee," says Mark Willard, a lawyer who represented hand-tool manufacturer Ames True Temper Co. in a suit involving a shrub rake. "It was manufactured in China using an old mold that still had the expired patent number on it," says Mr. Willard, adding that the company has long had in place a policy of monitoring patents. "This one fell through the cracks."

The company settled the case for an undisclosed amount. Mr. Willard says the suit has cost the company in other ways. Ames had to thoroughly review its inventory to be sure more outdated patents weren't on the market. "They have a very large product line," he says.

However, in view of the product lines which have been implicated, the problem of false marking is a bit more complicated:

Defendants include companies such as Procter & Gamble, Bayer Healthcare LLC, Cisco Systems, Scientific-Atlanta, Merck & Co., Pfizer Inc., 3M Co., DirecTV, Medtronic Inc. Merck said no one was available to comment. The other companies didn't respond to requests for comment.

The relevant statute is 35 USC 292, which states in pertinent part:

(a) . . .
Whoever marks upon, or affixes to . . . any unpat-
ented article, the word “patent” or any word or
number importing that the same is patented, for
the purpose of deceiving the public
. . .
Shall be fined not more than $500 for every such

(b) Any person may sue for the penalty, in which
event one-half shall go to the person suing and the
other to the use of the United States.

In the Stauffer case, Brooks Brothers had argued about the meaning of
"any person," arguing that New Jersey patent attorney Stauffer had no standing to sue.
The Federal Circuit found that "any person" actually means "any person."

Previous IPBiz post on Stauffer case:

CAFC blows Brooks Brothers away in qui tam ruling


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