High Pleading Standard Imposed by Federal Circuit for False Marking Claims

by: Joseph R. Carnicella, intellectual property associate with Picadio Sneath Miller & Norton, P.C.

In In Re BP Lubricants USA Inc., No. 960, 2011 U.S. App. LEXIS 5015 (Fed. Cir. March 15, 2011), BP Lubricants USA Inc. filed a petition for a writ of mandamus after the Northern District of Illinois denied BP’s motion to dismiss a complaint filed by a patent attorney as a qui tam relator on behalf of the United States pursuant to 35 U.S.C. § 292.  The complaint alleged generally that BP falsely marked products as covered by a patent that expired in 2005.  The district court relied on Exergen Corp. v. Wal-Mart Stores, Inc. and determined that the complaint alleged circumstances with enough particularity regarding the intent to deceive to satisfy Rule 9(b).

In its petition, BP asserted that the complaint lacked sufficient facts for a court to reasonably infer that BP knew its patent had expired when it was marking its products.  The Federal Circuit concluded that false marking claims should be treated analogously to actions brought under the False Claims Act and held that “Rule 9(b)’s particularity requirement applies to false marking claims and that a complaint alleging false marking is insufficient when it only asserts conclusory allegations that a defendant is a ‘sophisticated company’ and ‘knew or should have known’ that the patent expired.”

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