Federal Circuit Confirms Heightened Pleading Requirement Applies to False Marking Claims

March 21, 2011

In a move that may help stem the tide of false patent marking claims filed since late 2009, or at least improve defendants’ chances to obtain early dismissals, the Federal Circuit held in In re BP Lubricants, USA Inc. that Rule 9(b)’s particularity requirement applies to false marking claims under 35 U.S.C § 292. The Court dismissed a complaint for merely alleging the defendant was a “sophisticated company” with experience dealing with patents, and provided useful guidance on how intent to deceive can properly be alleged.

False Marking Claims Sound in Fraud

The underlying case was brought by one of the most prolific false claims plaintiffs, Thomas Simonian. Although the trial court judgment was not final, the Federal Circuit issued a writ of mandamus to resolve the “important” question of whether false marking claims trigger heightened pleading requirements under Rule 9(b). It held that Rule 9(b) applies because the requirement of an “intent to deceive” means that false marking claims are a species of fraud.

“Sophisticated Company” Allegations Insufficient

In his complaint, Simonian asserted that BP had distributed its product in a unique bottle marked with expired patent numbers. As has been the case with most false patent marking cases, the complaint then alleged, mostly on information and belief, that BP knew or should have known that the patent was expired; that BP is a “sophisticated company” with experience applying for, obtaining and litigating patents; and that BP marked the products with the patent numbers for the purpose of deceiving the public and its competitors. The district court purported to apply Rule 9(b), and denied dismissal, but the Federal Circuit reversed the district court.

The Federal Circuit held that the complaint failed to plead that BP intended to deceive the public. It disregarded as conclusory the allegation that BP was a “sophisticated company” that “knew or should have known” that the patent expired. It also clarified its recent decision in Pequignot v. Solo Cup Co., 608 F.3d 1356, 1362-63 (Fed. Cir. 2010), and held that complaints triggering a rebuttable presumption of intent to deceive do not automatically satisfy Rule 9(b). Altogether, the In re BP Lubricants decision will help defendants trying to eliminate false marking cases at the early stages of litigation.


The decision brings to an end the speculation about Rule 9(b) at the district court level, and contains language that will help defendants combat much of the generic “sophisticated company” verbiage in most false marking complaints. Still, while it reversed and ordered dismissal, the Federal Circuit preserved the rule that knowledge and intent can be averred generally and on information and belief. If a plaintiff cannot identify the specific individuals who knew the patent was expired, the court suggested, it can still plead intent through other means, “for example by alleg[ing] that the defendant sued a third party for infringement of the patent after the patent expired or made multiple revisions of the marking after expiration.”


For more information on this alert, please contact any of the lawyers listed below:

Joshua M. Dalton, Partner, Intellectual Property Group

This article was originally published by Bingham McCutchen LLP.