Intent to Deceive Element of False Marking Claim Cannot be Inferred from:

Failure to Pay Maintenance Fees and Later Revision of Product Packaging
The magistrate judge recommended dismissing plaintiff's qui tam false marking action for failure to plead intent to deceive with particularity. "Plaintiff herein seeks to establish the element of intent to deceive by imputing knowledge of the expiration of the [patent-in-suit] on Defendants based on Defendants' alleged sophistication as a company, their experience and knowledge with patents and intellectual property and Defendants' alleged familiarity with the [patent] application specifically. . . . Plaintiff also alleges that Defendants paid the maintenance fees on the [patent-in-suit] until 2000 when such payments were discontinued. . . . [and that the products at issue] are marked with a 2009 copyright, indicating that Defendants 'contemplated, reviewed, authored, created, and approved the contents of the packaging/labels for the [products at issue], and purposefully chose to mark [the products] with the expired patents.'. . . Plaintiff has failed to adequately set forth the element of 'intent to deceive the public' required by 35 U.S.C. § 292."

Herengracht Group LLC v. Intelligent Products Inc. et al., 1-10-cv-21785 (FLSD November 17, 2010, Report & Recommendations) (Turnoff, M.J.)

Length of Time Since Patent Expired
Defendant's motion to dismiss plaintiffs' qui tam false marking action for failing to plead with particularity was granted. "[Plaintiffs argue] in their brief in opposition to the motion to dismiss that the length of time that [the patent-in-suit] was expired is sufficient to show that [defendant] intended to deceive the public. We disagree. The length of [defendant's] alleged conduct alone does not show that [it] intended to deceive the public. [Plaintiffs] cannot rest on their single conclusory allegation regarding intent to deceive to satisfy the pleading requirements of Rule 9(b)."

United States of America, et. al. v. William Bounds, Ltd., 2-10-cv-00420 (PAWD November 17, 2010, Memorandum & Order) (Lancaster, J.)