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Justin E. Gray

IP Litigation Attorney at Foley & Lardner LLP

Former Adjunct Professor at Northwestern University School of Law

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United States Files Amicus Curiae Brief Arguing that Rule 9(b) Should Apply in False Marking Cases

In response to a petition for writ of mandamus in the Federal Circuit in In re BP Lubricants USA Inc., regarding the issue of whether the pleading requirements of Rule 9(b) apply to false marking cases, the United States has submitted an amicus curiae brief that states:

The position of the United States is that, consistent with other cases "sounding in fraud," False Marking cases should be subject to the pleading requirements of Rule 9(b).  However, under the Rule, intent to deceive "may be averred generally."  This requires that "the pleadings allege sufficient underlying facts from which a court may reasonably infer that a party acted with the requisite state of mind."  Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1327 (Fed Cir. 2009).  The conclusory allegations pled in this case, i.e., that a defendant is a "sophisticated company" which "knows, or should know" that the patent at issue had expired, are insufficient to satisfy Rule 9(b)'s pleading standard, even under its relaxed standard for pleading intent.

After all, an expired patent is just as likely to be the result of inattention as an intent to deceive, and additional facts are necessary to distinguish whether the defendant acts were intentional or inadvertent.

Congress has determined, in the explicit language of the statute, that false marking under 35 U.S.C. 292(a) should be found and punished only in those cases where there was an actual intent to deceive.  Requiring a factual allegation supporting an intent to deceive, as opposed to and distinguishable from mere negligence, will support the integrity of the law and preserve the legislature's intentions by curtailing law suits lacking sufficient allegations of intentionality.  Such an approach also supports the efficiency of the judicial system by curtailing lawsuits that are little more than "fishing expeditions" by potential relators seeking expired patent markings as a basis for initiating a lawsuit without any evidence of an intent to deceive.

The amicus curiae brief can be read in full here.

Gray on Claims, in conjunction with Docket Navigator®, is providing a false marking chart that is updated daily with new false marking cases as well as status updates on pending cases.  A downloadable PDF chart is available on this page as well including information on the specific patents and products at issue in each litigation.  Other writings on false marking can be found here.