of the false marking statue, 35
USCS § 292, websites can qualify as "unpatented articles," according
to a recent Federal Circuit opinion.
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***
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
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
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
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
[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.
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."
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[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.
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
001-1 Corporate Counsel Solutions: Intellectual Property § 1.05[C][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 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. §
(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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