Thomas A. Simonian, a patent attorney, filed a qui tam complaint on behalf of the United States pursuant to the False Marking Statute, 35 U.S.C. § 292, against BP Lubricants USA Inc. (BP), alleging that BP falsely marked its CASTROL® motor oil products with a design patent that had expired on Feb. 12, 2005. The district court found that the complaint stated an actionable claim and met the requirements of Federal Rule of Civil Procedure 9(b) (“Rule 9(b)”). In particular, the district court relied on Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1327 (Fed. Cir. 2009), which requires a plaintiff to plead in detail “the specific who, what, when, where, and how” of the alleged fraud, to conclude that the complaint detailed intent to deceive with particularity. BP petitioned for a writ of mandamus arguing that the complaint failed to allege any “underlying facts upon which a court could reasonably infer that BP knew its patent had expired when it was marking its products” and arguing that Rule 9(b) is the standard against which the pleading should be judged.

     The Court of Appeals for the Federal Circuit (CAFC) held that the particularity requirement of Rule 9(b) applies to false marking claims. The CAFC also found that, when false marking allegations are based on an expired patent, “a complaint must in the § 292 context provide some objective indication to reasonably infer that the defendant was aware that the patent expired.” Since the complaint only provided generalized allegations rather than specific facts from which intent can be inferred, the complaint failed to meet the requirements of Rule 9(b). A complaint is insufficient under § 292 if it simply argues that the defendant is a “sophisticated company” or the defendant “knew or should have known” the patent was expired. The CAFC granted the petition for writ of mandamus and directed the district court to dismiss the complaint with leave to amend in accordance with its opinion.