Juniper Networks, Inc. v. Shipley
2011 WL 1601995
Fed. Cir.2011Background
- Juniper sued Shipley under 35 U.S.C. § 292 for false marking related to the Dynamic Firewall and related website markings.
- The district court dismissed the original and amended complaints for failure to state a claim, determining no nexus between marking and an unpatented article, lack of particularized intent, and statute of limitations issues.
- Juniper alleged that the Website displayed patent markings and status (including 'functioning') and that visitors would believe Dynamic Firewall operated on the Website.
- Juniper asserted that Dynamic Firewall was destroyed in 1999, but the Website continued to display patent markings and related status, allegedly misrepresenting the product's existence and operation.
- The district court concluded that the asserted 'unpatented article' was the Website and its pages, but that the markings referred to the Dynamic Firewall project rather than a functioning product on the Website.
- This court reviews the dismissal de novo, applying Iqbal and Twombly to assess plausibility and applying Rule 9(b) heightened pleading standards to false marking claims.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Can a website qualify as an unpatented article under § 292? | Juniper contends Website embodies an unpatented article marked as patent-protected. | Shipley argues no unpatented article on the Website; markings relate to Dynamic Firewall, not the Website or its pages. | Yes; websites can qualify as unpatented articles under § 292. |
| Did Amended Complaint plead an unpatented article actually marked or advertised? | Amended Complaint alleges Website and pages bearing patent information and status as marks/advertisements. | Marks refer to Dynamic Firewall project, not the Website or software on the Website; insufficient for unpatented article. | No; failed to plead an unpatented article actually marked, affixed, or advertised. |
| Whether Rule 9(b) pleading standards apply to false marking claims and were met | Alleges specific who/what/when/where/how via Website markings and project status. | Pleading does not meet the heightened Rule 9(b) standards; insufficient particularity of intent. | Rule 9(b) applies; Amended Complaint did not meet it. |
| Standing under qui tam for false marking | Juniper asserts standing as qui tam plaintiff for an injury to the United States. | Argues lack of cognizable injury to Juniper or government given market injury is not shown. | Juniper has standing; injury to the United States suffices for qui tam standing. |
Key Cases Cited
- Stauffer v. Brooks Brothers, Inc., 619 F.3d 1321 (Fed. Cir. 2010) (false marking requires intent to deceive; sounds in fraud)
- In re BP Lubricants USA Inc., 637 F.3d 1307 (Fed. Cir. 2011) (Rule 9(b) applicability to false marking claims)
- Lang v. Pac. Marine & Supply Co., 895 F.2d 761 (Fed. Cir. 1990) (article must exist to support § 292 claim)
- Kearns v. Ford Motor Co., 567 F.3d 1120 (9th Cir. 2009) (fraud pleading requires who, what, when, where, how)
- Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312 (Fed. Cir. 2009) (Rule 9(b) pleading requires detail of the circumstances)
- Ashcroft v. Iqbal, 129 S. Ct. 1937 (2009) (context-specific plausibility standard for complaints)
- Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007) (pleading standard requiring plausible claims)
- McZeal v. Sprint Nextel Corp., 501 F.3d 1354 (Fed. Cir. 2007) (standard for dismissal on failure to state a claim)