As the reader should be well aware by now, false marking is the marking of a patent number on an “unpatented article.” Heretofore, most such cases have involved expired patents. Occasionally, mismarking has been found where the marked patent did not cover the article on which it appeared or where the marked patent had previously been adjudicated as invalid. Fine; so what about a patent that was found not to be invalid, but unenforceable? Does marking an article with the number of such a patent constitute false marking? (Promote Innovation LLC v. Medtronic, Inc.)
Promote brought an action for false marking against Medtronic, alleging that Medtronic stents were marked with the numbers of two patents which had previously been found, by the same court – although a different judge – to be unenforceable due to “fraud on the Patent Office” (more currently and less pejoratively known as “inequitable conduct”). Medtronic boldly moved to dismiss the case, on the ground that “marking a product with an unenforceable patent is not marking an ‘unpatented article’.”
The issue, of course, is “whether an article is ‘unpatented,’ under [the applicable law], when the article is covered by a patent that is held unenforceable due to inequitable conduct.” Admittedly, this is a question of first impression. Nevertheless, the Court had little trouble in finding that it was “unpatented.” The logic is striking in its clarity. “An expired patent is considered an unenforceable patent. Likewise, a patent found to have been obtained via inequitable conduct is also unenforceable. Thus … an article covered by an unenforceable patent via inequitable conduct is also ‘unpatented’.” Q.E.D.
So the case was not dismissed, but Medtronic does deserve a chutzpah award.
THE LESSON TO BE LEARNED: Don’t mark your products with the number of an unenforceable patent.
Probably also carrying a little bit of weight was the fact that the same court had previously found the Medtronic patents unenforceable. Though perhaps unlikely, it's possible that a different court would have ruled in Medtronic's favor. But we all know that courts hate eating crow, so this one was likely quite loath to cast its earlier ruling in a potentially negative light. That being the case, Medtronic's motion was in fact pretty bold.