On March 15, 2011, the U.S. Court of Appeals for the Federal Circuit issued a significant decision that the heightened pleading requirements of Rule 9(b), Fed. R. Civ. P., as interpreted by the Federal Circuit in a prior decision, apply to false patent marking claims brought under the False Marking Statute, 35 U.S.C. § 292. The case is In re BP Lubricants USA, Inc., Misc. Dkt. No. 960 (March 15, 2011). The Federal Circuit took the rare step of granting a writ of mandamus directing the district court to dismiss the complaint with leave to amend. This decision likely will reduce the number of future false marking suits.

The decision concerns a complaint filed by a qui tam relator in district court alleging that BP has violated the False Marking Statute by continuing to mark CASTROL motor oil bottles with a design patent that expired in 2005. The complaint alleges, mostly on information and belief, that (1) BP knew or should have known that the patent expired; (2) BP is a sophisticated company and has experience applying for, obtaining, and litigating patents; and (3 BP marked the CASTROL products with the patent number for the purpose of deceiving the public and its competitors into believing that something contained or embodied in the products is covered or protected by the expired patent. Slip Op. at 3. The district court found that the complaint satisfied the heightened pleading requirements of Rule 9(b) because it alleges that BP knew or should have known the patent expired, and that...

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