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July 25, 2014

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.

© MICHAEL BEST & FRIEDRICH LLP

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S. Edward Sarskas Attorney Michael Best Friedrich LLP
Partner

Ed Sarskas is a Co-Chair of the firm’s Class Action/ MDL Team and a partner in the firm’s Litigation and Intellectual Property Litigation Practice Groups. Mr. Sarskas has significant experience handling complex commercial litigation concerning intellectual property rights, including patents, trademarks and copyrights, as well as unfair competition, advertising, trade secrets, and related contract disputes. Mr. Sarskas also has experience handling securities and corporate governance litigation in individual and class actions, including in In re Enron Securities Litigation...

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