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The Federal Circuit Court of Appeals Clarifies the Pleading Standard for False Patent Marking Claims Under 35 U.S.C. § 292

On March 15, 2011, the Federal Circuit Court of Appeals granted a petition for a writ of mandamus filed on behalf of BP Lubricants USA Inc. and directed the United States District Court for the Northern District of Illinois to grant a motion to dismiss a complaint pursuant to the False Marking Statute, 35 U.S.C. § 292.

The Federal Circuit decision contains two noteworthy holdings. First, the Court held that Fed. R. Civ. P. 9(b)’s particularity requirement applies to false patent marking claims. The Court explained that Rule 9(b)’s gatekeeping function is necessary to prevent relators from using discovery as a fishing expedition and to assure that only viable § 292 claims reach discovery and adjudication. The Court noted that “[p]ermitting a false marking complaint to proceed without meeting the particularity requirement of Rule 9(b) would sanction discovery and adjudication for claims that do little more than speculate that the defendant engaged in more than negligent action.”

Second, the Court held 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. The Court explained that a false patent marking complaint must provide some objective indication to reasonably infer that the defendant was aware that the patent expired.



About this Author

S. Edward Sarskas, Michael Best Friedrich, dispute resolution attorney, class action litigation lawyer, trade secrets legal counsel, trademark law, patent application representation

Ed Sarskas serves as a trusted advisor and counselor to business clients in various stages of the dispute resolution process. Ed takes a practical, calm and reasoned approach to helping clients evaluate and manage risk, execute strategic initiatives and resolve disputes. He recognizes that his success is measured by his clients’ ultimate success in the marketplace.

As a partner in the Firm’s Litigation and Intellectual Property Litigation Practice Groups and Co-Chair of Michael Best's Class Action/ MDL Team, Ed handles complex litigation matters...