Case 1:10-cv-01060-GMS Document 72 Filed 05/17/13 Page 1 of 2 PageID #: 2124

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE

) ) ) ) ) ) ) ) ) )

DEVICOR MEDICAL PRODUCTS, INC., Plaintiff,

v.

Civil Action No. 10-1 060-GMS

BIOPSY SCIENCES, LLC, Defendant.

ORDER

At Wilmington this LJ!'day of May 2013, having considered the defendant's motion to dismiss Counts Six, Seven, and Eight of the Second Amended Complaint (the "False Marking Counts") as set forth in the Motion to Dismiss the Second Amended Complaint and Alternative Motion to Transfer Venue (D.I. 38), IT IS HEREBY ORDERED THAT: The defendant's motion to dismiss the False Marking Counts is DENIED. 1

The defendant, Biopsy Sciences, LLC ("Biopsy"), seeks to dismiss the False Marking Counts for failure to meet the heightened pleading requirements of Rule 9(b) of the Federal Rules of Civil Procedure. (D.I. 39 at 10.) Rule 9(b) provides that "[i]n alleging fraud or mistake, a party must state with particularity the circumstances constituting fraud or mistake. Malice, intent, knowledge, and other conditions of a person's mind may be alleged generally." Fed. R. Civ. P. 9(b). The Federal Circuit has explicitly held that this particularity requirement applies to false marking claims. In re BP Lubricants USA, Inc., 637 F.3d 1307, 1309 (Fed. Cir. 2011). "[T]he two elements of a 292 false marking claim are (1) marking an unpatented article and (2) intent to deceive the public." Juniper Networks, Inc. v. Shipley, 643 F.3d 1346, 1350 (Fed. Cir. 2011) (quoting Forest Grp. Inc. v. Bon Tool Co., 590 F.3d 1295, 1300 (Fed. Cir. 2009)). Biopsy focuses its attention on whether the plaintiff, Devicor Medical Products, Inc. ("Devicor"), has sufficiently plead the requisite intent. (D.I. 39 at 10-12.) Devicor, however, is not required to prove its case at the pleadings stage. Rather, the court need only ask whether the Second Amended Complaint "allege[s] sufficient underlying facts from which [the] court may reasonably infer that a party acted with the requisite state of mind." !d. at 1311 (quoting Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1327 (Fed. Cir. 2009)). Here, Devicor has offered specific allegations directed towards its position that Biopsy had knowledge of the alleged mismarking and took affirmative actions to mislead the public. (D.I. 41 at 19-20 (citing to various paragraphs of the Second Amended Complaint).) While far from conclusive, these allegations provide the necessary "objective indication" from which the court may draw a reasonable inference of intent. See In re BP Lubricants, 637 F.3d at 1311.

Case 1:10-cv-01060-GMS Document 72 Filed 05/17/13 Page 2 of 2 PageID #: 2125