In Re BP Lubricants USA Inc.
637 F.3d 1307
| Fed. Cir. | 2011Background
- BP Lubricants manufactures Castrol motor oil and uses a bottle design protected by a design patent.
- Thomas A. Simonian filed a qui tam relator action under 35 U.S.C. § 292 alleging false marking after expiration of BP's patent.
- Relator alleges patent expired February 12, 2005 and BP continued to mark bottles with the patent numbers.
- Relator argues BP knew or should have known of expiration, BP is sophisticated, and markings were to deceive the public and competitors.
- District court denied the Rule 9(b) deficiency, relying on Exergen and treating knowledge allegations as sufficient to plead intent.
- Federal Circuit grants mandamus in part, holding Rule 9(b) applies and the complaint lacks underlying facts to infer intent; directs dismissal with leave to amend.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Does Rule 9(b) apply to § 292 false marking claims? | Simonian argues Exergen-style pleading suffices. | BP contends Rule 9(b) is not applicable to false marking claims under § 292. | Rule 9(b) applies to false marking claims. |
| Is the complaint sufficiently pled under Rule 9(b) to infer intent to deceive? | Relator asserts sophistication and knowledge suffice with generalized allegations. | BP argues generalized claims suffice owing to the nature of false marking. | General allegations are insufficient; need underlying facts showing inferable intent. |
| Are the district court's Rule 9(b) determinations an abuse of discretion warranting mandamus? | BP seeks to dismiss; mandamus should not be granted. | Mandamus appropriate to resolve undecided Rule 9(b) applicability. | Exceptions justify mandamus; issue decided to require proper pleading standards. |
Key Cases Cited
- Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312 (Fed. Cir. 2009) (Rule 9(b) requires particularized pleading of fraud/mistake)
- Ashcroft v. Iqbal, 129 S. Ct. 1937 (2009) (bare allegations insufficient; plead with factual support)
- Clontech Labs., Inc. v. Invitrogen Corp., 406 F.3d 1347 (Fed. Cir. 2005) (intent to deceive inferred from objective criteria)
- Greenstone v. Cambex Corp., 975 F.2d 22 (1st Cir. 1992) (generalized knowledge allegations insufficient)
- Pequignot v. Solo Cup Co., 608 F.3d 1356 (Fed. Cir. 2010) ( Pequignot presumption informs intent inquiry; require deceitful purpose)
- Merck & Co. v. Reynolds, 130 S. Ct. 1784 (2010) (some false statements imply scienter, but not universally; require more)
- Bankers Life & Cas. Co. v. Holland, 346 U.S. 379 (1953) (mandamus relief limited to exceptional circumstances)