San Francisco Technology Inc. v. Elkay Plastics Company, Inc.

Filing 22

ORDER GRANTING MOTION TO DISMISS by Judge Alsup granting 10 Motion to Dismiss (whalc1, COURT STAFF) (Filed on 4/15/2011)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA
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SAN FRANCISCO TECHNOLOGY INC.,

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Plaintiff,
ORDER GRANTING
MOTION TO DISMISS

v.

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ELKAY PLASTICS COMPANY, INC.,

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Defendant.
/

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For the Northern District of California

United States District Court

No. C 11-00291 WHA

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This order holds that marking an article made via a patented method with the patent

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number of the method patent does not constitute false marking merely because the public cannot

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immediately tell whether the number refers to a method patent instead of an apparatus patent.

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Section 292 of Title 35 has never been construed to go so far. The decision relied on by plaintiff

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arose in a different context and is not controlling. Clontech Labs., Inc. v. Invitrogen Corp.,

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406 F.3d 1347 (Fed. Cir. 2005). Section 287(b)(4)(c), moreover, would seem to bless the very

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marking scheme challenged here. See also Am. Med. Sys., Inc. v. Med. Eng’g Corp.,

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6 F.3d 1523, 1539 (Fed. Cir. 1993). Until the Federal Circuit approves the extension of false

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marking cases into this genre of cases, the best course is to dismiss without leave to amend and let

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plaintiff have a try at establishing appellate authority for the theory here proposed.

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The motion to dismiss is GRANTED without leave to amend. Judgment will be
entered accordingly.

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IT IS SO ORDERED.

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Dated: April 15, 2011.

WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE