2010-1130 Inventorprise v. Target

Inventorprise appeals from the order of Judge Thomas McAvoy dismissing for lack of subject matter jurisdiction its complaint against Target for false marking under 35 U.S.C. § 292. 

Although it sounds to me more like an issue under 12(b)(6) for failure to state a claim, the court found it lacked subject matter jurisdiction to hear the case because there was no colorable § 292 claim alleged against Target.

35 U.S.C. § 292 prohibits the false marking of a unpatented article so as to deceive the public into thinking it is patented:

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

Target, however, apparently only sold the "Closet Cedar Storage Accessories Set," and did not mark, affix, advertise or package the product–that all was done by Cedar Fresh Home Products, LLC, a non-party to the action.

The court summarized the relevant law as follows:

To state a claim under 35 U.S.C. § 292(a) against a party that has had no role in the actual marking of a product, a plaintiff must show that the defendant (1) used the word “patent” (or any word or number importing that the product is patented) “in  advertising in connection with any unpatented article;” and (2) acted with the intent to deceive the public.  35 U.S.C. § 292(a); see Clontech Labs., Inc. v. Invitrogen Corp., 406 F.3d 1347, 1352 (Fed. Cir. 2005); Chamilia, LLC v. Pandora Jewelry, LLC, 2007 U.S. Dist. LEXIS 71246, *29 (S.D.N.Y. Sept. 24, 2007); Max Impact, LLC., 2009 U.S. Dist. LEXIS 71013, at *2 – *3; see also Juniper Works v. Shipley, 2009 U.S. Dist. LEXIS 40978, at *7 (N.D. Cal. May 14, 2009).

Order, p. 8.

The court went on to conclude that the marking on the product itself does not constitute "advertising" (at least where the marking is on the back of the packaging and not normally visible to potential customers while strolling the aisles).  The court further noted that there were insufficient allegations to support an intent to deceive.  The court concluded:

First, there is no allegation that Target used the false mark in advertising with the intent to deceive the public. Second, assuming arguendo that the mark was used in advertising, there are insufficient allegations that Target acted with the requisite intent to deceive the public. Unlike the cases where a party mis-marks an item and then claims mistake or inadvertence, here there is no dispute that Target played no role in the marking of the Product. It is mere supposition to conclude that, because Target is a sophisticated corporation, it knew that the Product was not patented and that the patent number printed on back of the package belonged to another item. It is even more speculative to conclude that, because Target supposedly had this knowledge, it offered the Product for sale in the packaging provided by Cedar Fresh with the specific intent to deceive the public.

2010-1130 Marking Order