Federal Circuit Holds that Websites Can Qualify as "Unpatented Articles" within False Patent Marking Statue’s Scope

Federal Circuit Holds that Websites Can Qualify as "Unpatented Articles" within False Patent Marking Statue’s Scope

For purposes of the false marking statue, 35 USCS § 292, websites can qualify as "unpatented articles," according to a recent Federal Circuit opinion.

Peter M. Shipley developed software known as "Dynamic Firewall," which was destroyed in 1999. Despite the software's destruction, Shipley's website continued to include the following:

Dynamic Firewall [Dover]***Patent # 6,119,236 and 6,304,975***

"Shields holding captain...". "D.IP.SHI.T" Dynamic IP SHield Technology A selfmodifying active firewall/ packet filter designed to act as a LAN auto-defense and offense monitor/tool. This is an idea I came up with a few years ago.

Status: functioning....

Juniper filed a false marking qui tam action against Shipley. Juniper accused Shipley of falsely marking "the Website and any firewall or other security products or services operating thereon, as well as web pages generated by the Website."

Juniper's complaint did not state facts showing that an "unpatented article" was marked upon, affixed with a label, or advertised in a manner importing that it was patented. Nor did it allege that the Dynamic Firewall software itself was falsely marked. Instead, Juniper alleged that the falsely marked unpatented article was "the website and any firewall or other security products or services operating thereon, as well as web pages generated by the Website." In support, Juniper noted the listing of the Dynamic Firewall status as "functioning," as well as the statement "[s]hields holding captain" adjacent to the patent marks. Juniper alleged that a person viewing Shipley's website after 1999 would have mistakenly believe that Dynamic Firewall was "functioning" on the website, when it could not have been.

The district court held that Juniper had not pled facts showing  that Shipley had marked an "unpatented article" within the meaning of § 292(a). The district court stated that "when considered in context," the "marking" on the website referred to the Dynamic Firewall project, "not that the software was functioning or operating on the Website." In dismissing the complaint, the district court concluded:

[W]hat Juniper is complaining about is not that the public was deceived by a false patent marking; but rather that the public was misled into believing that his Website was running on software that no longer exists . . . .

In Juniper Networks, Inc. v. Shipley, 2011 U.S. App. LEXIS 8897 (Fed. Cir. Apr. 29, 2011) [enhanced version available to lexis.com subscribers / unenhanced version available from lexisONE Free Case Law], the court, as an initial matter, held that websites could qualify as "unpatented articles" within § 292's scope. The court held that the Patent Act 's policy concerns applied equally to websites as to traditional articles of manufacture or design. The court also held that websites could both embody intellectual property and contain identifying markings.

However, in affirming the complaint's dismissal, the court held that:

the Website expressly categorizes Dynamic Firewall as a "current project" that was "underway." The website does not indicate that Dynamic Firewall was actively protecting the Website. Additionally, the "status" updates focused on by Juniper are specific for each project and change over time. Thus some projects are categorized as "[i]n [p]rogress," while others are categorized as "functioning," "working," or "done." None of these disclosures reasonably suggest that Dynamic Firewall was protecting the Website. Nothing on the Website reasonably suggests that any projects other than Dynamic Firewall relate to the accused marks. ... Thus, as correctly held by the district court, "it is beyond cavil that, when considered in context, the reference to 'functioning' relates to the progress of the project, not that the software was functioning or operating on the Website."

(citations omitted)

View a list of False Patent Marking articles posted on the LexisNexis Communities

For more information on False Patent Marking, read:

7-20 Chisum on Patents § 20.03[7][c][vii] False patent marking (Non-subscribers can purchase Chisum on Patents at the LexisNexis Bookstore)

Section 292 of the Patent Act prohibits three types of false markings: (1) counterfeit marking (i.e. use of a patent mark without the patent owner's permission); (2) false patent marking (i.e. the use of a patent mark on an unpatented article); and (3) false patent pending marking (i.e. the use of "patent applied for" or "patent ....

2-SEC 5000 Patent Law Digest 5600, 5635 False Marking (Non-subscribers can purchase Patent Law Digest at the LexisNexis Bookstore)

Arcadia Machine & Tool, Inc. v. Sturm, Ruger & Co., Inc., 786 F.2d 1124, 229 USPQ 124 (Fed. Cir. 1986)

FALSE MARKING -- STATUTE OF LIMITATIONS. The omission of applicable patents from a label on a product container cannot constitute ''false'' marking under 35 U.S.C. Section 292. ...

001-1 Corporate Counsel Solutions: Intellectual Property § 1.05[C][2][b] False Marking (Non-subscribers can purchase Corporate Counsel Solutions: Intellectual Property  at the LexisNexis Bookstore)

It is unlawful, both as a federal matter280 and in various state consumer protection laws, to falsely affix a patent mark of any kind (including notice that a patent was applied for281 or "patent pending") for the purpose of ....

2-10 Patent Litigation: Procedure & Tactics § 10.23 [9]False Marking Claim (Non-subscribers can purchase Patent Litigation: Procedure & Tactics at the LexisNexis Bookstore)

[a] Statutory Basis. The "false marking" statute, 35 U.S.C. § 292, provides:

(a) Whoever, without the consent of the patentee, marks upon, or affixes to, or uses in advertising in connection with anything made, used, offered for sale, or sold by such person ....

4-4 Patent Law Perspectives § 4.3 Failure to Mark and Mismarking (Non-subscribers can purchase Patent Law Perspectives at the LexisNexis Bookstore)

The court refused to find a violation of the statute where the defendant distributed leaflets with an infringing printing ribbon which contained the legend "Patented construction backing keeps type clean" in Filmon Process Corp. ...


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