The “False Patent Marking” statute – 35 U.S.C. § 292 – authorizes private individuals to file suit against companies that “falsely mark” their products as being patented or with patent numbers that do not cover the products. To prevail in such a suit, the plaintiff must allege and prove that the company not only falsely marked its product but also that the company did so for the purpose of deceiving the public.
On March 15, 2011, the United States Court of for the Federal Circuit issued a decision that will make it more difficult to successfully bring claims for false patent marking. In the case of In re BP Lubricants USA, Inc., the Federal Circuit held that a complaint for false patent marking must allege each of the elements of the claim “with particularity,” a requirement that stems from Rule 9(b) of the Federal Rules of Civil Procedure.
The Federal Circuit went on to hold that the plaintiff in that case – Thomas Simonian, who has filed dozens of false marking cases against companies in a variety of industries – had failed to sufficiently plead that the defendant was liable for false marking. In particular, the Federal Circuit held that Simonian’s complaint failed to sufficiently allege that the defendant acted with intent to deceive the public. The court ruled that Simonian’s complaint failed to satisfy Rule 9(b)’s particularity requirement because it contained mere “conclusory allegations that a defendant is a ‘sophisticated company’ and ‘knew or should have known’ that the patent expired.”