it's difficult to show injury from false patent marking

John Bean Technologies Corporation v. Morris & Associates, Inc., 2020 WL 5666898, --- Fed.Appx. ----, 2020-1035, 2020-1081 (Fed. Cir. Sept. 24, 2020)

District court ruling that false patent marking doesn’t presumptively cause injury even in a two-player market discussed here. The court of appeals affirmed the grant of summary judgment.

The key allegation of the complaint is the asserted falsity of Morris’s representations, in product markings or advertisements, that certain Morris products for poultry processors are covered by three Morris patents.

False patent marking, Lanham Act false advertising, and coordinate state law claims all require competitive injury. “We need not and do not decide whether, for any of the causes of action at issue, a presumption applies in the circumstances of this case.” This is a puzzling statement, because it does seem like a presumption of injury in a two-player market would have led to the claims surviving summary judgment, unless you think that John Bean's production of some (inadmissible) evidence should be weighed against it because it didn't produce more. 

John Bean’s evidence of injury with respect to one product was “limited to a single incident—which involved John Bean’s sale of a chiller system to Perdue Farms.” But the only evidence of causation was “a declaration from a past John Bean employee stating that a Perdue employee mentioned Morris’s patent marking as a reason that Perdue initially declined to buy John Bean’s auger chiller with ‘water flow reliefs’ that might infringe the ’529 patent, only to later accept the feature as a no-charge modification—a process that John Bean says subjected it to some injury.” The district court didn’t abuse its discretion in ruling that this statement was inadmissible hearsay and also developed too late in the litigation.

With respect to other products, one relevant patent read on them, so Morris’s statements weren’t false. Even assuming that the other one was, there was no evidence that being marked with two patent numbers mattered given that one was truthful. When a product is “properly marked with other patents,” as here, the competitor “must show that the falsely marked patent[ ]” caused its injury and “that—for some reason—the properly marked patent[ ] did not.”