Now the CAFC has ruled in Pequignot v. Solo Cup (No. 2009-1547, Fed. Cir. June 9, 2010) that:
- intent to deceive the public must be proven by a "preponderance of the evidence";
- marking with an expired patent is false marking, just as marking with a patent that does not exist or which does not cover the product;
- false marking raises a rebuttable presumption of intent to deceive;
- the presumption is rebuttable if the manufacturer proves good faith underlying the false marking, e.g. by relying on advice of counsel, delaying the removal of the patent number to avoid costs and business disruption, taking steps to mitigate the false marking.
The court also ruled that a marking stating that "this product may be covered by one or more U.S. or foreign pending or issued patents" combined with a further indication such as "for details, contact [company]" is not a false marking that would reflect an intention to deceive the public if the statement is true, even if all the products so marked were not covered by a listed patent. The court accepted the evidence that such marking is not deceitful, especially where the alternative is inconvenient from a logistical and financial perspective.
The decision clarifies that if products are marked by a phrase such as "may be covered by the following patents [patent nos.]", it is well advisable to add "for details, contact ... [company name, address and or web site]".