Over the past few years, the federal trial courts had been issuing inconsistent results regarding the requirements for pleading the requisite ‘intent to deceive the public’ in false patent marking claims asserted under 35 U.S.C. Section 292.

Some proponents insisted that there should be a “9(b)” pleading standard [Fed. R. Civ. P. 9(b)] wherein a party must state with particularity the circumstances constituting ‘fraud,’ i.e., provide specific factual support for a reasonable inference that the defendant falsely marked with intent to deceive the public. Others did not see a need for such a heightened pleading standard.
On March 15, 2011, the Federal Circuit clarified that the Rule 9(b) pleading standard applies to false marking claims.  In re BP Lubricants USA Inc.  Specifically, the Court held that Rule 9(b)’s particularity requirement applies to false marking claims and 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 had expired.