Does this mark the end of an era for patent trolls? For the sake of patent holders everywhere, we sure hope so.
Recently, Mosser Law successfully defeated a patent troll in the Eastern District of Texas. There is a little known law which prohibits the marking of a good with a patent that has expired. That is, if your dohickey, patent no. 9,723,333,223, has reached the end of its patentented life, you have to remove the mark. You cannot keep selling your dohickey with an expired patent number on it.
If you keep selling your marked dohickey, anyone can sue you in a qui tam suit under 35 U.S.C. § 292. This is called a “false marking” case. Until recently, it was enough to meet the requirement of “intent to deceive” if a defendant was alleged to be a sophisticated company, perhaps retaining patent counsel, who was acquainted with the business of acquiring and using patents. Then the courts would infer that the defendant’s failure to remove a mark was an active attempt to deceive.
However, the Federal Circuit recently clarified the “intent to deceive” requirement, by teaching us that the intent to deceive was held to a heightened pleadings standard, under Fed. R. Civ. P. 9(b). In the case In re BP Lubricants USA Inc. the Federal Circuit opined that there must be more than just conclusory allegations to infer an intent to deceive. The Federal Circuit did not specify what would meet that requirement, only noted that the “sophisticated company” argument was not effective.
We look forward to seeing what sort of cases further develop the law in this area. In the meantime, you can read more of what we wrote on this topic for the judge by reviewing our reply brief, and the Order Granting Motion to Dismiss is here.