On March 15, 2011, the Federal Circuit Court of Appeals granted a petition for a writ of mandamus filed on behalf of BP Lubricants USA Inc. and directed the United States District Court for the Northern District of Illinois to grant a motion to dismiss a complaint pursuant to the False Marking Statute, 35 U.S.C. § 292.

The Federal Circuit decision contains two noteworthy holdings. First, the Court held that Fed. R. Civ. P. 9(b)’s particularity requirement applies to false patent marking claims. The Court explained that Rule 9(b)’s gatekeeping function is necessary to prevent relators from using discovery as a fishing expedition and to assure that only viable § 292 claims reach discovery and adjudication. The Court noted that “[p]ermitting a false marking complaint to proceed without meeting the particularity requirement of Rule 9(b) would sanction discovery and adjudication for claims that do little more than speculate that the defendant engaged in more than negligent action.”

Second, the Court held that a complaint alleging false 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. The Court explained that a false patent marking complaint must provide some objective indication to reasonably infer that the defendant was aware that the patent expired.