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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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Federal Circuit Holds Rule 9(b) Applies to False Marking Cases

In re BP Lubricants USA Inc. (Fed. Cir. Mar. 15, 2011)

Today, the Federal Circuit held that the particularity requirement of Fed. R. Civ. P. 9(b) applies to false marking cases.  In its decision, the Court noted 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."
  • "[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."
  • "a complaint must in the [Sec.] 292 context provide some objective indication to reasonably infer that the defendant was aware that the patent expired."
  • A "bare assertion" that the defendant is a "sophisticated company and has experience applying for, obtaining, and litigating patents … provides no more of a basis to reasonably distinguish a viable complaint than merely asserting the defendant should have known the patent expired.  Conclusory allegations such as this are not entitled to an assumption of truth at any stage in litigation."

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.  Gray on Claims is also providing information on false marking settlements.  Other writings on false marking can be found here.