Tuesday, March 15, 2011

False Marking

The Federal Circuit giveth, the Federal Circuit taketh away. After creating a cottage industry of qui tam suits claiming false marking a little over a year ago, the Federal Circuit has tried to stop the bleeding by holding that "Fed. R. Civ. P. Rule 9(b)’s particularity requirement applies to false marking claims under § 292." IN RE BP LUBRICANTS USA INC. [ORDER] . Granting a writ of mandamus, the court noted that:

  • "[A] complaint must in the § 292 context provide some objective indication to reasonably infer that the defendant was aware that the patent expired."

  • "Because the relator’s complaint here provided only generalized allegations rather than specific underlying facts from which we can reasonably infer the requisite intent, the complaint failed to meet the requirements of Rule 9(b)."

such a requirement moves the law toward, though not completely to, the proposed amendments in Congress that would allow only "a person who has suffered a competitive injury" to bring a claim for false marking.


  • “A false marking claim requires an intent to deceive the public … and sounds in fraud….”

  • “A party alleging fraud must ‘set forth more than the neutral facts necessary to identify the transaction.’”

  • “Because these policy concerns apply equally to websites as to traditional articles of manufacture or design, and because websites may both embody intellectual property and contain identifying markings, this court holds that websites can qualify as unpatented articles within the scope of § 292.”