A marking that is outdated isn't falsely marked, IMHO, and any attorney who sues because the patent has expired should be disbarred. What's next, requiring disappearing markings that evaporate 20 years from filing date?
Expiration date is trivial to check, and as such, marking an item with the number of an expired should never be held deceptive.
I agree but no courts that I know of have said this. The Brooks Brothers case which is pending appeal was over an very old patent on a tie clasp (I think that was the item). Marked something like, "The Original Patented Tie Clasp, Pat. No. 1234567". Obviously this is not an intent to deceive, but rather a type of trade dress. Still, it was not tossed on those grounds. Rather, the judge there said the patent attorney troll suing BB did not have standing because he had alleged no injury. (There are article III "govt can't confer standing of its interest/injury if it is purely a money interest" and also a couple of article II arguments against constitutionality). In the Solo Cup case which I believe is also pending appeal, the issue was also expired patents.
In this case, however, I think the plaintiff has a much more colorable argument for suit. Started off with the (now) defendant company suing the current plaintiff company for patent infringement. Because of the Markman ruling, it became clear that the claims of the patent covered neither the alleged infringer's product
nor the patentee's own product.
Nonetheless, the patentee continued to make orders of new goods with the same patent marking. So, while this case appears to have been instigated as a poke in the eye type of revenge from one competitor to another, it's not trolling over expired patents.
More seriously, and more broadly, I think the false marking statute should be canned if the Congress ever gets around to revising the patent laws. We no longer live in a time when Jonathan has to ride his pony express cross-country through the 3-foot snows of Buffalo to personally visit Washington, D.C. to learn the scope of claims on a patent. I mean, do you think for one second that ANY manufacturer could be deceived by a false marking?
In earlier days, the argument was that false marking reduced competition, thus harming the public, because Manufacturer B would not explore copying the (incorrectly) marked product. But now? Seriously?
On the other hand, if you have a product line with 20,000 SKUs it can be very difficult to keep up with the slight changes in products which happen from time to time, but can take the product outside of the claims scope. And packaging only gets reviewed by legal when someone (usually marketing) is driving a change to the look of the package. So you get sued by a trolling patent attorney who obviously doesn't have enough real work, and spend $200K or 300K in legal fees proving there was no intent to deceive. Or you pay the troll some amount of your expected defense costs to go away.
And we all know you're not supposed to feed the trolls.
