The U.S. District Court for the District of Delaware recently dismissed two actions for false patent marking under 35 U.S.C. § 292 on the ground that the plaintiff failed to plead the defendants’ intent to deceive the public – a necessary element of a false marking claim – with the level of particularity required by Federal Civil Rule of Procedure 9(b). If the applicability of the heightened pleading standard of Rule 9(b) to false marking claims is affirmed by the Federal Circuit, it could help end the avalanche of false marking suits precipitated by Forest Group, Inc. v. Bon Tool Co., 590 F.3d 1295 (Fed. Cir. 2009), which vastly increased the monetary awards available to plaintiffs in such cases. Brinkmeier v. BIC Corp., Civ. Nos 09-860- SLR and 10-01-SLR (D. Del. Aug. 25, 2010).

Background

Jennifer L. Brinkmeier (“Brinkmeier”) filed a false marking suit against BIC Corporation and BIC USA Inc. (“BIC”) alleging, without specifying any dates, that BIC, a leading manufacturer of lighters, “marked, or caused to be marked, and presently marks, or causes to be marked” various types of BIC lighters with expired U.S. Patent Nos. 4,496,309, 4,509,916, and/or RE 33,282 (Civ. No. 09-860-SLR). Brinkmeier filed a separate false marking suit against Bayer HealthCare LLC (“Bayer”) alleging that Bayer falsely marked its Aleve® products with expired U.S. Patent Nos. 4,948,002 and/or D330,677 (Civ. No. 10-01- SLR).

Brinkmeier’s complaints characterized the defendants as “sophisticated” companies experienced in applying for, obtaining, and litigating patents, as well as regularly litigating and overseeing litigation of patent infringement and false advertising claims. Thus, Brinkmeier alleged, the defendants knew or should have known that one or more of the patents marked on their products were expired. Brinkmeier further alleged that each company marked its products with expired patents with the intent to deceive the public into believing “that something contained in or embodied in the product is covered by or protected by each of the expired patents” thus deterring competition and causing public harm. Brinkmeier sought the same relief in both actions, including a $500 fine per false marking offense (i.e. each individual retail unit bearing a false marking), half of which would be paid to her (the other half to the United States).

BIC responded to Brinkmeier’s complaint with a motion to dismiss under Rules 8(a) and 12(b) (6) which argued that Brinkmeier failed to plead facts, rather than mere conclusory allegations, to support “a reasonable inference that BIC marked its lighter products for the purpose of deceiving the public.” BIC’s motion to dismiss was also premised on the assertion that a § 292 claim ought to be viewed as a fraud-based claim subject to Rule 9(b), which requires averments of fraud or mistake to be stated with particularity. BIC argued that Brinkmeier failed to plead particularized facts in support of her fraud-based allegations. Bayer moved to dismiss Brinkmeier’s false marking suit against it on the same grounds.

False Marking Action Against BIC (Civ. No. 09-860-SLR)

The court began its analysis by focusing on the two elements of a false marking claim identified in Forest Group, Inc. v. Bon Tool Co., 590 F.3d 1295, 1300 (Fed. Cir. 2009): (1) marking an unpatented article; and (2) intent to deceive the public. With respect to the first element, the court rejected BIC’s argument that its lighters did not constitute “unpatented articles” because they were marked with a combination of unexpired patents and expired patents, i.e., at least one unexpired patent. The court found this theory to be contrary to Clontech Labs., Inc. v. Invitrogen Corp., 406 F.3d 1347, 1352 (Fed. Cir. 2005) which held that “[w]hen the statute [§ 292] refers to an ‘unpatented article’ the statute means that the article in question is not covered by at least one claim of each patent with which the article is marked.”

Next, the court examined the applicability of the heightened pleading standard of Rule 9(b). In doing so, the court recognized that courts are split on whether Rule 9(b) applies to § 292 claims and that the Federal Circuit has not yet decided this issue. The court noted that inequitable conduct, which also requires intent to deceive, must be pled in accordance with Rule 9(b). Thus, in line with the Eastern District of Pennsylvania and district courts in other circuits holding § 292 to be a fraud-based claim, the District of Delaware held that § 292 claims must be pled with the heighted level of particularity required by Rule 9(b). The court held that Brinkmeier’s allegations of false marking by BIC failed to meet this standard.

The complaint alleged that BIC knows, or at least should know: (1) that patents expire; (2) that one or more of the patents marked on the identified products have expired; and (3) that the products identified are not covered by the expired patents. Based on these facts, the complaint alleged upon information and belief that BIC “intentionally included expired patents in the patent markings” with “intent to deceive the public.” Acknowledging that the Third Circuit allows “a relaxed Rule 9(b) standard if essential information is in the defendant’s knowledge or control,” the court noted that “boilerplate and conclusory allegations will not suffice” and that plaintiffs must “accompany their legal theory with factual allegations that make their theoretically viable claim plausible.” (citing In re Burlington Coat Factory Sec. Litig., 114 F.3d 1410, 1418 (3d Cir. 1997)).

Brinkmeier failed to meet this standard because her complaint “pled no facts to show BIC intentionally attempted to deceive the public.” Although Brinkmeier argued that intent to deceive could be inferred from the fact that BIC’s lighters were marked with different combinations of nonexpired patents accompanying expired ones, the court found that she failed to present any facts showing that BIC added new patents once the others expired. Nor did the court accept the argument that BIC had knowledge that the patents were expired, and thus intent to deceive, because of updated packaging following the patents’ expiration. The court also rejected Brinkmeier’s “sophisticated company” argument, noting that “allegations that BIC is sophisticated and employs experienced counsel do not suggest intent to deceive.”

Having ruled that the heightened pleading standard of Rule 9(b) was applicable to Brinkmeier’s false marking claim and that the complaint was inadequate under that standard, the court did not address BIC’s alternative grounds for dismissal under Rules 8(a) and 12(b)(6).

False Marking Action Against Bayer (Civ. No. 10-01-SLR)

The court held that Brinkmeier’s complaint against Bayer, which was nearly identical to her complaint against BIC, failed to rise to the level of particularity required by Rule 9(b). The court found the same conclusory allegations and observed a lack of facts supporting the contention that Bayer included the ‘002 and/or ‘677 patents on any products with intent to deceive. Although Brinkmeier pled that Bayer “knew” the expiration dates of these patents, she failed to specify who possessed that knowledge or the knowledge that the patents were marked on the product. And despite asserting that Bayer “revised labels and/or leaflets at least once,” Brinkmeier’s pleading was, according to the court, insufficient without any “other allegations indicative of intent or that would convey that the patents were a focus of the company.” Consistent with its conclusion in the BIC action, the court concluded that on the facts pled here, “the presence of expired patents on Bayer’s products could be a simple oversight. Relabeling (with nothing more in support) does not translate into a specific intent to keep expired patents on products.” The court did not address Bayer’s alternative grounds for dismissal under Rules 8(a) and 12(b)(6).

Comment

Shortly after the Brinkmeier v. BIC decision, the Federal Circuit suggested that it is receptive to the use of Rule 9(b) to dismiss false marking suits. In Stauffer v. Brooks Brothers, Inc., Nos. 2009- 1428, -1430, -1453 (Fed. Cir. Aug. 31, 2010), the Federal Circuit reversed a district court’s dismissal of a false marking suit for lack of standing. In remanding the case, however, the Federal Circuit specifically instructed the district court to address the defendant’s motion to dismiss for failure to plead intent to deceive with the specificity required by Rule 9(b):

We remand for the court to address the merits of the case, including Brooks Brothers’ motion to dismiss . . . “on the grounds that the complaint fails to state a plausible claim to relief because it fails to allege an ‘intent to deceive’ the public – a critical element of a section 292 claim – with sufficient specificity to meet the heightened pleading requirements for claims of fraud imposed by” Rule 9(b).

This instruction signals that the Federal Circuit is receptive to applying the heightened pleading standard of Rule 9(b) to false marking claims, and that it is likely to confirm that Rule 9(b) is applicable to such claims when the issue is squarely presented. Accordingly, it seems likely that there will be many more cases like Brinkmeier v. BIC in which courts dismiss false marking claims on Rule 9(b) grounds. This, in turn, could diminish or end the flood of false marking suits that was precipitated by the Federal Circuit’s Forest Group v. Bon Tool decision in late 2009.