Los Planes de Escuela y el Saber Escolar Matemático

The cases discussed in this section have been selected because they illustrate key aspects of the boom-bust cycle pertinent to the operation of false patent marking in Australia. There are numerous other factors relevant to the US cycle, for example unique US constitutional issues, but they are not addressed in this chapter because they are not relevant to the Australian provision.25 _{The three}

aspects discussed are: the physical requirements of the offence; the mental requirements of the offence; and, the penalty.

Prior to the passage of the AIA, the US provision on false patent marking, 35 USC § 292, stated: (a) …26

Whoever marks upon, or affixes to, or uses in advertising in connection with any unpatented article, the word “patent” or any word or number importing that the same is patented for the purpose of deceiving the public; or

Whoever marks upon, or affixes to, or uses in advertising in connection with any article, the words “patent applied for,” “patent pending,” or any word importing that an application for patent has been made, when no application for patent has been made, or if made, is not pending, for the purpose of deceiving the public-

Shall be fined not more than $500 for every such offense.

(b) Any person may sue for the penalty, in which even one-half shall go to the person suing and the other to the use of the United States.27

In 2005, prior to the boom, the Federal Circuit in Clontech Laboratories Inc v Invitrogen Corp

(‘Clontech’)28_{held that to succeed in a false patent marking action, two elements had to be proved.}

25 _{For a more thorough account of the legal causes of the boom and bust, including the numerous US constitutional and}

standing issues see, Kevin Zickterman, ‘Pa-Trolling the False Marking Frontier: Giving Section 292 the Proper Makeover in Wake of the American Invents Act’ (2012) 190 Northern Illinois University Law Review 189, 190–218; Nicholas W Stephens, ‘From Forest Group to the America Invents Act: False Patent Marking Comes Full Circle’ (2011–2012) 97 Iowa Law Review 1003, 1007–25; Richard A Crudo, ‘A Patently Public Concern: Using Public Nuisance Law to Fix the False Patent Marking Statue After the Leahy-Smith America Invents Act’ (2012) 80 George Washington Law Review 568, 570–87; Christopher G Granaghan, ‘Off the Mark: Fixing the False Marking Statute’ (2011) 89 Texas Law Review 477, 477–93.

26 _{The first paragraph of 35 USC § 292(a) deals with imitating a patentee.} 27 _{35 USC § 292.}

28 _{Clontech Laboratories Inc v Invitrogen Corp, 406 F 3d 1347 (Fed Cir, 2005).}

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First, it had to be shown that the marked article was ‘unpatented’.29 _{That is, the article had to be}

shown not to be protected by the patent it was marked with — determined by interpreting the claims of the patent that the product was marked with.30 _{Second, the marking party had to have the}

relevant mental state, that is, an intention to deceive the public.31 _{In classic legal terminology these}

elements can be described as the actus reus and mens rea of the offence.

On the actus reus element of the action, until the Federal Circuit case of Pequignot v Solo Cup (‘Solo Cup’),32 _{there was no decision on whether the phrase ‘unpatented article’ was satisfied by products}

marked with an expired patent that previously protected them. There are strong arguments that marking articles with expired patent numbers should not constitute ‘unpatented’ because people can look up the patents on the Internet and see they are expired.33 _{Indeed, the marks may even be}

beneficial because they indicate where information about technological advances used in the product can be found and freely used.34 _{However, the Federal Circuit found in Solo Cup that marking}

an article as patented in reliance on an expired patent that previously protected it was sufficient to satisfy the physical element of false patent marking.35

Prior to the decisions of Solo Cup and Clontech, the mens rea requirements that could be inferred from the physical aspects of false patent marking were not well defined. Characterising the law in this area, the Federal Circuit in Clontech stated that:

intent to deceive is a state of mind arising when a party acts with sufficient knowledge that what it is saying is not so and consequently that the recipient of its saying will be misled into thinking that the statement is true.36

The Court then continued:

Intent to deceive, while subjective in nature, is established in law by objective criteria. Thus, ‘objective standards’ control and the fact of misrepresentation coupled with proof that the party making it had knowledge of its falsity is enough to warrant drawing the inference that there was a fraudulent intent.37

In Solo Cup, the Federal Circuit took up this reasoning from Clontech, stating that false patent marking, combined with knowledge that the marking was incorrect, creates a rebuttable

29 _{35 USC § 292(a).}

30 _{Ibid; Clontech, 406 F 3d 1347, 1352 (Fed Cir, 2005).}

31 _{35 USC § 292(a); Clontech, 406 F 3d 1347, 1352 (Fed Cir, 2005).} 32 _{Pequignot v Solo Cup, 608 F 3d 1356 (Fed Cir, 2010).}

33 _{Ibid 1362.}

34 _{Laura N Arneson, ‘Defining Unpatented Article: Why Labeling Products with Expired Patent Numbers Should Not Be False}

Marking’ (2011–2012) 95 Minnesota Law Review 650, 668–70.

35 _{Pequignot v Solo Cup, 608 F 3d 1356, 1361–2 (Fed Cir, 2010).}

36 _{Clontech Laboratories Inc v Invitrogen Corp, 406 F 3d 1347, 1352 (Fed Cir, 2005).} 37 _{Ibid (references omitted).}

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presumption of intent to deceive the public.38 _{While the defendant was able to rebut the}

presumption in Solo Cup,39 _{the case was important because it established clear guidance on how to}

address the mens rea requirement for false patent marking. As a result, the rebuttable presumption of intention to deceive eased the process for future plaintiffs in false patent marking actions.40