Intellectual Property Law

Judge Robinson: Plaintiff must plead failure to mark with facts to show defendant did not have reasonable belief that items were properly marked

By Karen E. Keller, Andrew A. Lundgren et al.

In Brinkmeier v. BIC Corp., et al., C.A. Nos. 09-860-SLR, 10-01-SLR (D. Del. Aug. 25, 2010), Judge Robinson recently granted defendants? motions to dismiss for failing to state a claim under Federal Rule of Civil Procedure 12(b)(6). Defendants BIC Corporation and BIC USA Inc. (collectively, ?BIC?) argued that plaintiff?s complaint seeking a declaratory judgment that BIC falsely marked products failed to adequately plead allegations of fraud as required under Rule 9(b). Id. at 1-2. Noting the split among courts regarding the applicability of the heightened pleading standards of Rule 9(b) to failure to mark claims, Judge Robinson held that section 292 claims must be pled with particularity. Id. at 16-17. Granting BIC?s motion to dismiss, Judge Robinson noted that ?[t]he burden ultimately lies with the party who asserts false marking to show, by a preponderance of the evidence, that the accused party did not have a reasonable belief that the articles were properly marked.? Id. at 19. However, plaintiff ?pled no facts to show BIC intentionally attempted to deceive the public[,]? and, despite plaintiff?s assertions, ?allegations that BIC is sophisticated and employs experienced counsel do[es] not suggest intent to deceive.? Id. at 20.

Brinkmeier v. BIC Corp., et al., C.A. Nos. 09-860-SLR, 10-01-SLR (D. Del. Aug. 25, 2010)

Full post as published by Delaware IP Law Blog on September 01, 2010 (boomark / email).