Trial Lawyer's Notebook:
To Mark or Not to Mark

Tony Zeuli is a trial lawyer specializing in patent and trademark litigation with the IP firm Merchant & Gould. He also has considerable experience before the Court of Appeals for the Federal Circuit. Tony has given several presentations and published numerous articles on intellectual property litigation, especially patent claim construction. His articles have also appeared in The Federal Lawyer and Bench & Bar. Prior to joining Merchant & Gould, Tony was a physics engineer at Argonne National Laboratory, where he was involved in the study of nuclear physics. Mr. Zeuli can be reached at 612.371.5208, or by email at tzeuli@merchantgould.com, or by visiting his web site at http://www.zeuli.com.

The Federal Circuit's recent decision in The Forest Group, Inc. v. Bon Tool Co. has brought front and center the issue of whether it makes sense for patent owners to mark their patented products with the patent number. Some patent owners have already decided marking no longer makes sense given that the risks may outweigh the benefits. In Forest Group, the defendant in a patent infringement action brought a counterclaim of false marking under 35 U.S.C. § 292. False marking occurs when a party (1) marks an unpatented article with the word "patent" or a patent number and (2) with the intent to deceive the public. The statute states that the liable party "[s]hall be fined not more than $500 for every such offense." The trial court held that the patent owner had falsely marked its products (construction stilts) with intent to deceive the public, and awarded $500 in damages. The court of appeals affirmed the finding of false marking. However, the court of appeals vacated the damages award and remanded the case to the trial court with instructions to award up to $500 in damages for each and every construction stilt falsely marked. In other words, "every such offense" was held to mean every individual product falsely marked. This was a significant change in the reading of Section 292 and, many believe, including the Federal Circuit, may open the door to not only more counterclaims of false marking but also "the possible rise of ...