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The Empire Strikes Back – The CAFC Slows Down the False Marking Epidemic

by Orlando Lopez

The Court of Appeals for the Federal Circuit (CAFC), in their order regarding  In re BP Lubricants USA Inc.,  provided ammunition for slowing back the False Marking epidemic.  In cases involving fraud, the complaint that starts the suit has to describe with particularly factual bases for the allegation of fraud.  Applying to complaints in false marking cases, the standard applied in cases involving fraud, the CAFC issued an order dismissing the false marking complaint against BP, but also ordered the District Court to grant leave to amend the complaint.  The CAFC weakened their previous statement in Pequignot v. Solo Cup, where the CAFC held that marking as patented an unpatented article, while knowing that the article is unpatented, creates a rebuttable presumption of intent to deceive the public.  In the present order, the CAFC relegates the Pequinot holding to a factor in determining whether the complaint is sufficiently explicit.  The CAFC (thankfully) does not provide a roadmap for drafting a complaint that meets the particularity standards needed for a complaint alleging fraud.  The order, In re BP Lubricants USA Inc., will slow down the epidemic of False Marking cases, but it will not stop it.  Hopefully the epidemic will be slowed down enough so that an action of Congress, such as the portions of the America Invents (Patent Reform) Act or other proposals, will put an end to the epidemic.

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