PubPat hits Adobe with the False Marking stick
On March 9, the Public Patent Foundation (PubPat) sued Adobe Systems, Inc. in the U.S. District Court for the Southern District of New York over false marking of various Adobe Reader products. I think this case is especially interesting because I noticed Adobe’s false marking about two weeks ago on the newest version of Reader, and wondered then if the marking occurred on earlier versions, as well.
PubPat says yes. In the Complaint, PubPat shows examples of false marking for Adobe Reader versions 7, 8, and 9 (see pp. 5-9). What may differentiate this false marking case from many others is the presence of multiple mis-marked versions of the same product.
Typically, it seems like proving intent to mis-mark is going to be the highest hurdle false marking plaintiffs will have to traverse. Usually, there is only one product marked falsely, so the mis-marking could have been unintentional originally and unnoticed continually. (Courts could make this hurdle lower by implementing a “knew or should have known” intent standard, but that’s a discussion for another day).
Here, however, you have multiple mis-marked versions of the same product, and the markings are not identical. In other words, someone apparently went through and made a conscious choice regarding each patent that was marked onto each version of Reader. As well, the newer versions of Reader had brand new patents marked onto them at the same time older patents, either unexpired or inapplicable, were allowed to remain.
One complication that is faced by PubPat is the presence of another lawsuit regarding false marking of the same product. In the Complaint, PubPat notes:
On Dec. 30, 2009, Defendant was sued, under 35 U.S.C. §292, by an entity named San Francisco Technology Inc. (See San Francisco Technology Inc. v. Adobe Systems Inc., et al., No. C-09-06083 (N.D. Cal., Dec. 30, 2009) (the “SF Tech.” suit)).
The SF Tech. suit alleges, inter alia, that Defendant violates §292 by marking Adobe Reader with expired U.S. Patent Nos. 4,837,613; 5,050,103; D337,604; and D338,907. (See SF Tech., No. C-09-06083 (N.D. Cal., Dec. 30, 2009), ¶¶ 37-42.)
The SF Tech. suit also joins, in the same action, unrelated §292 claims against fourteen other defendants.
[PubPat] does not seek to assert duplicative “expired patent” §292 claims against Defendant in this action. However, [PubPat] believes that the SF Tech. suit may be dismissed on a non-merits ground, such as improper joinder under Fed. R. Civ. P. 20.
This other lawsuit has the potential to make PubPat’s intent case stronger. In the Complaint, PubPat notes:
[U]pon information and belief, those members of the [Adobe] Compliance Team responsible for §292 compliance have allowed, and continue to allow, mis-marking of the Inapplicable Patents despite actual knowledge that such mis-marking violates federal law.
Indeed, after receiving specific notice, on or about Dec. 30, 2009, that the legality of Adobe Reader’s patent notices had been called into question by the SF Tech. lawsuit, members of the Compliance Team made no substantial effort to correct even the specific deficiencies noted in the SF Tech. complaint (i.e., the expired patents), much less to rectify the larger problem involving the numerous Inapplicable Patents. Accordingly, since at least early January, 2010, Defendant’s marking of expired and inapplicable patents on Adobe Reader has been deliberate and willful, thus making this case exceptional.
The newest version of Adobe Reader (9.3.1) was released with false markings on February 16, 2010.
It will be interesting to see how this case develops.