We begin with the statute in suit, which provides that: Whoever marks upon, or affixes to, or uses in advertising in connection with any unpatented article, the word 'patent' or any word or number importing that the same is patented for the purpose of deceiving the public . . . [s]hall be fined not more than $500 for every such offense. 35 U.S.C. § 292(a) (2000)

The case law of this circuit on the statute in suit is sparse. In fact, only one precedent has substantively addressed the statute, and in that case, we affirmed, without discussion of the text of the statute, the trial court's holding that no violation of the statute had occurred because the plaintiff failed "to produce any evidence of intent to deceive the public." Arcadia Mach. & Tool, Inc. v. Sturm, Ruger & Co., 786 F.2d 1124, 1125 (Fed. Cir. 1986). Consequently, this case presents us with virtually an issue of first impression.

The statute supplies a civil fine for false marking of articles. Id. at 1125. According to the statute, when an unpatented article is marked with the word "patent" or any word or number that imports that the article is patented, and such marking is for the purpose of deceiving the public, the fine is invoked. When the statute refers to an "unpatented article" the statute means that the article in question is not covered by at least one claim of each patent with which the article is marked. Thus, in order to determine if an article is "unpatented" for purposes of section 292, it must be first determined whether the claims of a patent cover the article in question. To make that determination, the claim in question must be interpreted to ascertain its correct scope, and then it must be ascertained if the claim reads on the article in question.

Assuming an article is mismarked as "patented" because the claims of the cited patent do not read on the article, the question arises whether more is required by way of proof to establish that the mismarking is for the purpose of deceiving the public. That is, should the statute be read to cause all actual mismarking to be subject to the civil fine?

This question has been addressed and answered in other circuits. For example, the Court of Appeals for the First Circuit long ago interpreted a predecessor statute in London v. Everett H. Barr Corporation, 179 F. 506 (1st Cir. 1910). The earlier statute outlawed marking an unpatented article with the word "patent" for the purpose of deceiving the public. The First Circuit recognized, even then, that interpreting claims is not an exact science, and that consequently where one "has an honest, though mistaken, belief that upon a proper construction of the patent it covers the article which he marks," the requisite intent to deceive the public would not be shown. Id. at 510. Years later, the Court of Appeals for the Fifth Circuit adopted the formulation that an honest, though mistaken, mismarking of an article would not trigger liability under the statute. See Brose v. Sears, Roebuck and Co., 455 F.2d 763, 768-69 (5th Cir. 1972).

We see no reason to interpret the statute differently to render it a statute of strict liability for mismarking. Intent to deceive is a state of mind arising when a party acts with sufficient knowledge that what it is saying is not so and consequently that the recipient of its saying will be misled into thinking that the statement is true. Seven Cases of Eckman's Alterative v. United States, 239 U.S. 510, 517-18 (1916). Intent to deceive, while subjective in nature, is established in law by objective criteria. Id. Thus, "objective standards" control and "the fact of misrepresentation coupled with proof that the party making it had knowledge of its falsity is enough to warrant drawing the inference that there was a fraudulent intent". See Norton v. Curtiss, 433 F.2d 779, 795-96 (CCPA 1970). Thus, under such circumstances, the mere assertion by a party that it did not intend to deceive will not suffice to escape statutory liability. Such an assertion, standing alone, is worthless as proof of no intent to deceive where there is knowledge of falsehood. But in order to establish knowledge of falsity the plaintiff must show by a preponderance of the evidence that the party accused of false marking did not have a reasonable belief that the articles were properly marked (i.e., covered by a patent). Absent such proof of lack of reasonable belief, no liability under the statute ensues.

The ruling with regard to the actual circumstances of the case makes for a messy read, but the false marking portion above was interesting.