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In re BP Lubricants - 10-m960 order

In re BP Lubricants - 10-m960 order

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Published by: woodypollack on Mar 16, 2011
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03/16/2011

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United States Court of Appealsfor the Federal Circuit
__________________________ IN RE BP LUBRICANTS USA INC.,
Petitioner.
__________________________ 
Miscellaneous Docket No. 960
__________________________ 
On Petition for Writ of Mandamus to the UnitedStates District Court for the Northern District
 
of Illinoisin case no. 10-CV-1258, Judge
 
Robert W. Gettleman.
__________________________ ON PETITION__________________________ 
R
USSELL
E.
 
L
EVINE
, Kirkland & Ellis LLP, of Chicago,Illinois, for petitioner.J
OSEPH
M.
 
V
ANEK 
, Vanek Vickers & Masini, P.C. of Chicago, Illinois, for respondent Thomas A. Simonian.With him on the response was J
OHN
P.
 
B
JORK 
. Of counselon the response were B
RUCE
S.
 
S
PERLING
and R
OBERT
D.
 
C
HEIFETZ
, Sperling & Slater, P.C., of Chicago, Illinois.Herbert C. Wamsley, Intellectual Property OwnersAssociation, of Washington, DC, for amicus curiaeIntellectual Property Owners Association. On the brief were D
OUGLAS
K.
 
N
ORMAN
, Eli Lilly & Company, of Indianapolis, Indiana, and K 
EVIN
H.
 
R
HODES
, 3MInnovative Properties Company, of St. Paul, Minnesota.
 
IN RE BP LUBRICANTS
2
 
S
TEVEN
F
RANK 
, Attorney, Appellate Staff, CivilDivision, United States Department of Justice, of Washington, DC, for amicus curiae United States. Onthe brief was T
ONY 
W
EST
, Assistant Attorney General.
__________________________ 
Before L
OURIE
, G
AJARSA 
, and L
INN
,
Circuit Judges
.L
INN
,
Circuit Judge
.
O R D E R
This is a petition for a writ of mandamus directing theUnited States District Court for the Northern District of Illinois to grant a motion to dismiss a complaint pursuantto the False Marking Statute, 35 U.S.C. § 292.Specifically, the defendant BP Lubricants USA Inc.argues that the complaint failed to plead withparticularity the circumstances of the defendant’s allegedintent to deceive the public in falsely marking unpatentedarticles with an expired patent. The defendant’s motion,based on this court’s Fed. R. Civ. P. 9(b) standard in
Exergen Corp. v. Wal-Mart Stores, Inc.
, 575 F.3d 1312,1327 (Fed. Cir. 2009), urged that the relator’s complaintfailed to allege any underlying facts upon which a courtcould reasonably infer that BP knew its patent hadexpired when it was marking its products.This court holds that Rule 9(b)’s particularityrequirement applies to false marking claims and that acomplaint alleging false marking is insufficient when itonly asserts conclusory allegations that a defendant is a“sophisticated company” and “knew or should haveknown” that the patent expired. The petition is grantedin part.I.
 
3
IN RE BP LUBRICANTS
 
The petitioner, BP Lubricants USA Inc.,manufactures motor oil products under the well-knownbrand name CASTROL. BP’s CASTROL products aredistributed in a unique bottle design for which BPreceived a design patent.The respondent, Thomas A. Simonian, a patentattorney, filed this qui tam relator complaint on behalf of the United States pursuant to 35 U.S.C. § 292. Section292 provides in relevant part:(a) . . . . Whoever marks upon, or affixes to,or uses in advertising in connection with anyunpatented article, the word “patent” or anyword or number importing that the same ispatented for the purpose of deceiving thepublic . . . [s]hall be fined not more than $500for every such offense.(b) Any person may sue for the penalty, inwhich event one-half shall go to the personsuing and the other to the use of the UnitedStates.35 U.S.C. § 292(a)-(b).According to the relator’s complaint, the patentexpired on February 12, 2005, and BP continued to markits bottles with the patent numbers after the patentexpired. The complaint also asserts mostly “uponinformation and belief,” that: (1) BP knew or should haveknown that the patent expired; (2) BP is a sophisticatedcompany and has experience applying for, obtaining, andlitigating patents; and (3) BP marked the CASTROLproducts with the patent numbers for the purpose of deceiving the public and its competitors into believingthat something contained or embodied in the products iscovered or protected by the expired patent.

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