1. March 15, 2011 Federal Circuit Requires False Marking Plaintiffs to Plead Specific
Facts Showing Intent to Deceive
Patent Litigation and Enforcement Client Alert
The U.S. Court of Appeals for the Federal Circuit today issued a decision imposing stricter
This Alert provides only pleading requirements in false patent marking cases. The Court took the extraordinary
general information and step of issuing a writ of mandamus to dismiss a complaint, ruling that a plaintiff must plead
should not be relied upon as with particularity the circumstances of the defendant’s alleged intent to deceive the public
legal advice. We would be in falsely marking products or materials. It held that the intent to deceive element must be
pleased to discuss our
pled with particularity under Fed. R. Civ. P. 9(b) and that a complaint alleging false
experience and the issues
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.
presented in this Alert with
those contemplating
The false marking statute (35 U.S.C. § 292) prohibits marking unpatented articles with a
investments in these markets. patent number or otherwise falsely suggesting that an article is covered by an unexpired
For more information, contact patent or application for the purpose of deceiving the public. Any person may sue for
your Patton Boggs LLP payment of a penalty of up to $500 per marked item with half of any recovery going to the
attorney or the authors listed federal government.
below.
In the case decided by the Federal Circuit, the plaintiff Thomas A. Simonian, a patent
Kevin Bell attorney, sued BP Lubricants for marking bottles of its CASTROL motor oil products with
703-744-8065 an expired design patent. The complaint alleged that the patent expired in 2005, but BP
kbell@pattonboggs.com continued to mark its bottles with the patent numbers even after the patent expired. The
complaint also alleged that: (1) BP knew or should have known that the patent expired; (2)
Scott Chambers
703-744-8085
BP is a sophisticated company and has experience applying for, obtaining and litigating
schambers@pattonboggs.com patents; and (3) BP marked the CASTROL products for the purpose of deceiving the
public and its competitors. BP moved to dismiss the complaint under Fed. R. Civ. P. 9(b)
Richard Oparil for failure to plead the claims with specificity. The District Court denied the motion and BP
202-457-6496 challenged the ruling by petitioning the Court of Appeals for a writ of mandamus.
roparil@pattonboggs.com
In deciding the petition, the Federal Circuit held that Rule 9(b)’s particularity requirement
applies to false marking claims under § 292. It went on to find that the general allegation
that BP is a “sophisticated company and has experience applying for, obtaining and
litigating patents” does not meet the pleading standard. Instead, a false marking complaint
WWW.PATTONBOGGS.COM
must allege actual facts that show a defendant’s intent to deceive. Absent allegations of
actual or circumstantial facts showing intent (such as where the defendant sued a third
party for infringement of the patent after the patent expired or made multiple revisions of
the marking after expiration), a complaint should be dismissed.
The BP decision should apply to pending cases, since the Federal Circuit granted BP’s
petition for writ of mandamus and directed the District Court to dismiss the complaint.
While this is clearly a pro-defendant ruling, the Court did grant the plaintiff leave to file an
amended complaint that would try to meet the pleading standard.

2. A copy of the decision in In re BP Lubricants USA Inc. (Misc. No. 960) may be found at
http://www.cafc.uscourts.gov/images/stories/opinions-orders/10-m960%20order.pdf.
For more information, contact Kevin M. Bell, Scott A.M. Chambers, Ph.D., or Richard J.
Oparil.
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