On June 10, 2010, the Federal Circuit, in Pequignot v. Solo Cup Co., No. 2009-1547 (Fed. Cir. June 10, 2010), affirmed the judgment of the U.S. District Court for the Eastern District of Virginia, which had entered summary judgment in favor of Solo for “false marking” related to Solo’s practice of marking expired patents on its beverage cup lids.

The Federal Circuit held that, under 35 U.S.C. § 292(a), a product embodying an expired patent is indeed an “unpatented article”, but a plaintiff must demonstrate that the defendant intended to deceive the public in order to succeed under § 292. The court stated that a rebuttable presumption is created when a plaintiff shows that the defendant knowingly made false statements.  The defendant may rebut this presumption by showing by a preponderance of the evidence that it did not intend to deceive the public.  The court also noted that the presumption is weaker in cases where the markings are for expired patents that once covered the marked products.  Solo, which had relied on advice of counsel and weighed the high costs of removing the markings, was able to rebut Pequignot’s evidence that it intended to deceive.

In its holding, the court reasoned that Solo acted in good faith by seeking advice of counsel, and that it had been driven by a desire to avoid the high costs and business disruption that retooling would have created.  The court also reasoned that by adding to the “may be covered” language to its products’ packaging, Solo had acted in good faith to provide a truthful representation of the patent coverage for its products.

This decision will put a damper on the false-marking claims.  However, some defendants may not have the same advice-of-counsel excuse.