In a previous blog entry, we commented upon the growing disfavor with which the courts now seem to view actions for patent mismarking. Courts now are requiring evidence that the defendant intended to deceive the public.
They are also – granted, it’s dicta – raising questions as to whether a plaintiff must demonstrate it has been harmed by the alleged mismarking as a requisite for standing to sue. As a practical matter, of course, this would require that the plaintiff and the defendant be competitors. Indeed, the proposed patent reforms include a provision which would make this a statutory requirement. Clearly, the pendulum has swung, but not everyone has gotten the message. (Heathcote Holdings Corp. Inc. v. Maybelline LLC et al.)
Heathcote sued Maybelline and L’Oreal (the “et al.”) alleging that they had marked various eyeliner products with the numbers of long-expired patents. Heathcote does not compete in the eyeliner market and, to our knowledge, produces nothing other than lawsuits.
To establish intent, Heathcote alleges that “Defendants are sophisticated companies with many decades of experience applying for, obtaining, and litigating patents, and there knows (sic) that patents do not have unlimited scope, but rather, have a scope limited to that which is claimed.”
As to standing – which, admittedly, has not YET been held to be a requirement for standing to sue – Heathcote alleges that “[e]ach false marking on the products … is likely to, or at least has the potential to, discourage or deter persons and companies from commercializing competing products.” Apparently, Heathcote would have the court – including a jury – believe that it brought this suit not as a cheap effort at extortion but a public-spirited effort to maintain freedom of entry into the critical eyeliner market.
Not content with damages based upon the number of (allegedly) mismarked products, the civic-minded Heathcote is seeking to EXPAND the scope of the mismarking statute by requesting that each expired patent – there are 5 of them – on each package be treated as a separate offense. Well, given the current judicial and political climate, you have to admire their nerve – or chutzpah – if not their smarts.
The outcome of this case should have a significant impact on the whole sorry business of mismarking litigation. We’ll keep you informed.