False Marking Claims Becoming Harder to Prove, Even for Competitors

Submitted by patentadmin on Tue, 01/03/2012 - 22:36

January 3, 2012 - On December 13, a judge in the U.S. District Court in Los Angeles granted summary judgment in a case involving a claim of false marking. What made this case newsworthy is that the plaintiff in the case (U.S. Rubber Recycling Inc.) actually is a competitor of the defendant (Ecore International Inc.).

In the course of their patent infringement litigation, U.S. Rubber made a claim of false marking because Ecore's patent on rubber underlayment for floors covers a product between nine and eleven millimeters thick - and their brochure, which contains the patent number, covers products that range from two to fifteen millimeters thick.

Ecore argued that U.S. Rubber had not proven that they'd lost any sales - and if they had, it wasn't because of false marking in their brochures. Ecore's argument was accepted by the judge.

Attorney Robert Nissen of Washington's Nissen & Associates, lead counsel for Ecore, commented on Law.com that many false marking cases had already been dismissed following the passage of the America Invents Act - but they were dismissed because the plaintiff was not a competitor.

"This is the first court to decide what you have to prove to show competitive injury," he said. "Judge [James] Otero, in his order, accepted that they lost sales, but he said that's not enough. You've got to have someone somewhere say that this brochure impacted a decision not to buy U.S. Rubber's product. And that was lacking, so he granted summary judgment."