April 2011

Spotlight Info

In In re BP Lubricants USA Inc., No. 10-M960 (Fed. Cir. Mar. 15, 2011), the Federal Circuit granted a petition for writ of mandamus in part and directed the district court to dismiss the respondent’s false marking complaint with leave to amend.  BP Lubricants USA Inc. (“BP”) distributes its motor oil products in a unique bottle design for which BP received a design patent.  Respondent Thomas A. Simonian, a patent attorney, filed a qui tam relator complaint on behalf of the United States pursuant to 35 U.S.C. § 292.  Simonian’s complaint alleged that after BP’s design patent expired on February 12, 2005, BP continued to mark its bottles with the patent number for the purpose of deceiving the public and its competitors into believing that the bottle was protected by the expired design patent.  Upon a motion to dismiss from BP, the district court concluded that the complaint stated an actionable claim and met the requirements of Fed. R. Civ. P. 9(b) and denied the motion to dismiss.  BP petitioned the Federal Circuit for a writ of mandamus directing the Northern District of Illinois to grant its motion to dismiss Simonian’s complaint.  The Federal Circuit found that the considerations presented in this case warranted the extraordinary remedy of mandamus because (1) the Court had not previously decided whether Rule 9(b) applies to false marking cases or discussed the requisite level of pleading required, and (2) trial courts have been in considerable disagreement on this issue.  The Court concluded that the district court’s reliance on Simonian’s general allegation that BP knew or should have known that the patent expired was clearly incorrect, because a complaint must provide some objective indication to reasonably infer that the defendant was aware that the patent expired.

Accordingly, the Court granted BP’s petition for mandamus in part, directing the district court to dismiss the complaint with leave to amend, noting that leave to amend was particularly appropriate since the Court had not previously opined on the applicability of Rule 9(b) to false marking claims.  See the full summary in this issue.