Marking With Conditional Language Does Not Negate Inference of Intent to Deceive

The court denied defendant's motion to dismiss plaintiff's qui tam false marking action and rejected defendant's argument that marking with the conditional phrase "[X products] are covered by one or more of the following U.S. patents: [#A, #B, #C, #D] and other patents pending," negated an inference of intent to deceive. "Defendant argues that the listing of an expired patent in conjunction with 'at least one nonexpired patent' does not support an inference of an intent to deceive. According to Defendant the conditional language used in its markings defeats any allegation of purposeful intent to deceive the public. Defendant’s argument lacks merit. That Defendant chose to couch its markings in conditional language does not negate the fact that some of the patents listed in the markings were expired. Further, Defendant’s use of conditional language could have the effect of deceiving members of the public into believing that the products were covered by all the patents listed in the markings."

Hollander v. Etymotic Research, Inc., 2-10-cv-00526 (PAED November 1, 2010, Memorandum and/or Opinion) (Tucker, J.)