Federal Circuit Cuts Back False Marking Claims


The Federal Circuit yesterday issued a ruling in In re BP Lubricants USA, Inc., available here, that is likely to have a significant impact on the recent spate of lawsuits claiming “false marking.” In these lawsuits, a plaintiff alleges that the defendant is marking a product with a patent that does not, in fact, cover the product, and that the defendant is doing so “for the purpose of deceiving the public.”

In yesterday?s ruling, the Federal Circuit held that a false marking plaintiff must comply with the heightened pleading standards in Federal Rule of Civil Procedure 9(b) when making a claim for false patent marking under 35 U.S.C. § 292. The decision was issued in response to a petition for a writ of mandamus filed by defendant BP Lubricants after the Northern District of Illinois denied its motion to dismiss. Rule 9(b) requires that a plaintiff must, in its complaint, provide specifics about allegedly deceptive conduct, including specific facts underlying a general allegation that the defendant intended to deceive the public by marking an article with an expired patent. The Court ruled that it is not enough for a false marking plaintiff to allege that a defendant is a “sophisticated company” that “„knew or should have known? that the patent expired.”

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