Forest Group v. Bon Tool: A Roulette Wheel For Patent False Marking Claims

Section 292 of the Patent Act provides that a person who falsely marks an unpatented article as being patented, where the false patent marking was done with an intent to deceive the public, "[s]hall be fined not more than $500 for every such offense."¹ The statute permits a qui tam action whereby any private citizen can sue to recover the penalty and retain for itself half of the penalty.² Over the last few years, the false marking statute has gained a modicum of popularity as plaintiffs, including in some cases private patent lawyers, have brought false marking claims against defendant patentees who have marked products with expired patent numbers.³ Indeed, some commentators have described these plaintiffs as a new breed of troll, the "marking troll."⁴ For a time the incentive to bring false marking claims was held in check by a limiting judicial construction of what constituted an "offense" for which the penalty could be quantitatively assessed. Following a