The United States Amicus in BP Lubricants May Be the Game Changer
By: Jim Lennon
It has been nearly two months (October 20th) since the United States filed its amicus brief , supporting the petition of false marking defendant, BP Lubricants, to obtain a writ of mandamus compelling dismissal of the suit filed by Thomas Simonian in the North District of Illinois.
Filings at the Federal Circuit are not available through their PACER site, therefore, many litigants and courts may be unaware of this significant development. The brief is significant because, despite being procedurally and financially aligned with false marking plaintiff's as qui tam relators on behalf of the government, the United States sided with the false marking defendant in its amicus brief. Through its brief the United States effectively acknowledges that the trend of suits under 35 USC 292 has gone too far, with scores of inadaquately pled false marking claims dominating the landscape since the Federal Circuit’s decision in Forest Group v. Bon Tool, at the end of last year.
While the United States offered tangential support to qui tam relators in other false marking litigation earlier this year (e.g., supporting Stauffer's attempt to reverse the dismissal of his suit against Brooks Brothers on the question of standing and supporting similar opposition in San Francisco Technologies v Adobe, et al., in the Northern District of California), it has line up squarely against the plaintiff, Thomas Simonian, in this matter. “The position of the United States is that, consistent with other cases "sounding in fraud," False Marking cases should be subject to the pleading requirements of Rule 9(b).” The United States goes on to explain that while intent to deceive may be averred generally, pleadings must still “allege sufficient underlying facts from which a court may reasonably infer that a party acted with the requisite state of mind." In this vein, the United States rejects the attempt by Simonian to obtain the inference by merely pleading that a defendant is a "sophisticated company" which "knows, or should know" the patent at issue were expired. It argues that these types of allegations are insufficient to satisfy Rule 9(b)'s pleading standard, even if relaxed.
After initial skepticism about whether BP Lubricants' mandamus petition would be substantively addressed by the Federal Circuit, the amicus of the United States leads to an expected ruling on the merits of the pleading question. In fact, since the filing of the amicus, at least two district courts have stayed false marking actions pending the outcome of In Re BP Lubricants (e.g., San Francisco Tech. Inc. v. Graphic Packaging Int't, No. 1:10-cv-1195 (N.D. Ga. Nov. 10, 2010), D.I. 229; NEWT LLC v. Nestle USA, Inc., No. 1:09-cv-04792 (N.D. Ill. Nov. 1, 2010), D.I. 56) and the District of Delaware openly pondered the question during oral argument last week (see last post).
Filings at the Federal Circuit are not available through their PACER site, therefore, many litigants and courts may be unaware of this significant development. The brief is significant because, despite being procedurally and financially aligned with false marking plaintiff's as qui tam relators on behalf of the government, the United States sided with the false marking defendant in its amicus brief. Through its brief the United States effectively acknowledges that the trend of suits under 35 USC 292 has gone too far, with scores of inadaquately pled false marking claims dominating the landscape since the Federal Circuit’s decision in Forest Group v. Bon Tool, at the end of last year.
While the United States offered tangential support to qui tam relators in other false marking litigation earlier this year (e.g., supporting Stauffer's attempt to reverse the dismissal of his suit against Brooks Brothers on the question of standing and supporting similar opposition in San Francisco Technologies v Adobe, et al., in the Northern District of California), it has line up squarely against the plaintiff, Thomas Simonian, in this matter. “The position of the United States is that, consistent with other cases "sounding in fraud," False Marking cases should be subject to the pleading requirements of Rule 9(b).” The United States goes on to explain that while intent to deceive may be averred generally, pleadings must still “allege sufficient underlying facts from which a court may reasonably infer that a party acted with the requisite state of mind." In this vein, the United States rejects the attempt by Simonian to obtain the inference by merely pleading that a defendant is a "sophisticated company" which "knows, or should know" the patent at issue were expired. It argues that these types of allegations are insufficient to satisfy Rule 9(b)'s pleading standard, even if relaxed.
After initial skepticism about whether BP Lubricants' mandamus petition would be substantively addressed by the Federal Circuit, the amicus of the United States leads to an expected ruling on the merits of the pleading question. In fact, since the filing of the amicus, at least two district courts have stayed false marking actions pending the outcome of In Re BP Lubricants (e.g., San Francisco Tech. Inc. v. Graphic Packaging Int't, No. 1:10-cv-1195 (N.D. Ga. Nov. 10, 2010), D.I. 229; NEWT LLC v. Nestle USA, Inc., No. 1:09-cv-04792 (N.D. Ill. Nov. 1, 2010), D.I. 56) and the District of Delaware openly pondered the question during oral argument last week (see last post).
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