False Patent Marking: Federal Circuit Determines Rule 9(b) Heightened Pleading Standard Applies

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In a significant decision that may lead to the dismissal of numerous false patent marking actions, the Federal Circuit ruled yesterday that (1) the heightened pleading standard of Fed. R. Civ. P. 9(b) applies to claims for false patent marking, and (2) such claims are not adequately pleaded if they only allege that a defendant “knew or should have known” that the marked patent had expired. In re BP Lubricants USA Inc., Misc. Docket No. 960 (Fed. Cir. 2011). The False Marking Statute, 35 U.S.C. § 292, prohibits the placement of a patent mark (e.g., “Protected by U.S. Patent X,XXX,XXX”) on an “unpatented article” (or its associated packaging or advertising) with the intent to deceive the public.

A large number of plaintiffs have brought claims under Section 292 alleging false marking because expired patent numbers appear on product packaging or advertising. The recent wave of lawsuits is the result of The Forest Group, Inc. v. Bon Tool Co., 590 F.3d 1295 (Fed. Cir. 2009), which interpreted Section 292(a)’s penalty of “not more than $500 for every such offense” to mean up to $500 for each article marked, as opposed to counting multiple marked articles as a single offense.

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