Last Month at the Federal Circuit - April 2011


In this issue: False Marking Claims Must Be Pled with Particularity; PTO Confirmation of Validity in a Related Reexamination Proceeding, Even If Later Revoked, Can Provide Evidence of a Reasonable Basis for Patentee’s Validity Arguments in the Context of a Motion for Attorneys’ Fees; Resolving Disparate Claim Constructions by Two District Courts; Federal Circuit Vacates SJ of Nonobviousness Based on Erroneous Findings as to the Analogousness of the Prior Art and the Level of Skill in the Art; Prior Litigation Involving the Same Patent Cannot Override a Compelling Showing That Transfer Is Warranted Under 28 U.S.C. § 1404(a); A Cross-Appeal Is Improper When It Would Not Expand the Scope of a District Court Judgment in Favor of the Cross-Appellant; Federal Circuit Affirms Finding of No Likelihood of Confusion Between CITIBANK Marks and CAPITAL CITY BANK Marks; Prima Facie Case Established When Examiner Sufficiently Articulates Statutory Basis of Rejection and Identifies References Relied Upon; and Federal Circuit Imposes Sanction for Improperly Marking as Confidential Legal Arguments That Do Not Disclose Facts or Figures of Genuine Competitive or Commercial Significance.

Excerpt from 'False Marking Claims...':

In In re BP Lubricants USA Inc., No. 10-M960 (Fed. Cir. Mar. 15, 2011), the Federal Circuit granted a petition for writ of mandamus in part and directed the district court to dismiss the respondent’s false marking complaint with leave to amend in accordance with the particularity requirements of Fed. R. Civ. P. 9(b) as described in the Court’s Order.

BP Lubricants USA Inc. (“BP”) manufactures motor oil products under the brand name CASTROL. BP’s CASTROL products are distributed in a unique bottle design for which BP received a design patent. Respondent Thomas A. Simonian, a patent attorney, filed a qui tam relator complaint on behalf of the United States pursuant to 35 U.S.C. § 292, in which he alleged that BP’s design patent expired on February 12, 2005, and BP continued to mark its bottles with the patent number after the patent expired. The complaint also asserts mostly “upon information and belief,” that “(1) BP knew or should have known that the patent expired; (2) BP is a sophisticated company and has experience applying for, obtaining, and litigating patents; and (3) BP marked the CASTROL products with the patent numbers for the purpose of deceiving the public and its competitors into believing that something contained or embodied in the products is covered or protected by the expired patent.” Slip op. at 3.

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