Chicago IP Attorney & Lawyer : R. David Donoghue : Chicago IP Litigation Blog

Simonian v. Allergan, Inc., No. 10 C 2414, Slip Op. (N.D. Ill. Apr. 28, 2011) (St. Eve, J.).

Judge St. Eve denied defendant Allergan's motion to dismiss plaintiff Simonian's false patent marking suit holding that the false marking statute was constitutional pursuant to the Take Care Clause. The government retained little control over false marking actions, but that was less of a concern because false marking cases were civil not criminal. And, in fact, the government retained sufficient control. The executive branch was notified of each suit because the district court clerk was required to give the Director of the Patent Office (a member of the executive branch) notice of every patent suit. Furthermore, the government may intervene in every case. And when the government intervenes, plaintiff cannot dismiss a case without the government's agreement.
 

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Simonian v. Astellas Pharma US Inc., No. 10 C 1539, Slip Op. (N.D. Ill. Mar. 28, 2011) (Coleman, J.).

Judge Coleman granted defendant Astella's Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff Simonian's false patent marking claims for failure to meet the Fed. R. Civ. P. 9(b) heightened pleading standards, but did so without prejudice. The Court held that Simonian's complaint contained "precisely the same" general allegations -- a "sophisticated company" that "knew or should have known" of the expired patent -- that the Federal Circuit rejected as deficient in BP Lubricants.
 

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Simonian v. Maybelline LLC, No. 10 C 1615, Slip Op. (N.D. Ill. Mar. 14, 2011) (Kendall, J.)

Judge Kendall denied defendant Maybelline's motion to dismiss, granted its motion to transfer and denied as moot its motion to stay pending the Federal Circuits standing decision in Stauffer, in this false patent marking case. The Court held, pre-BP Lubricant, that Fed. R. Civ. P. 9(b) pleading applied to the intent element, but because the intent went to state of mind the fraud could be alleged generally, inconsistent with BP Lubricants. Because plaintiff Simonian had generally pled intent, the complaint was sufficient.

The Court then transferred the case to the Southern District of New York, Maybelline's home district. As a relator plaintiff, Simonian's choice of forum was given little deference. And the situs of material facts was where marking decisions were made - New York - not where marked products were bought - Illinois. The Court, therefore, transferred the case.
 

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Simonian v. Allergan, Inc., No. 10 C 2414, Slip Op. (N.D. Ill. Nov. 30, 2010) (St. Eve, J.).

Judge St. Eve denied defendant Allergan's motion to dismiss plaintiff Simonian's false patent marking claim regarding Allergan's RESTASIS product. The Court, citing its Blistex decision, held that false patent marking claims were subject to Fed. R. Civ. P. 9(b) heightened pleading requirements. Simonian's general averment that Allergan marked with an allegedly expired patent with an intent to deceive was sufficient, without more facts.

The Court also held that the fact that RESTASIS was marked with an unexpired patent, did not insulate Allergan from marking with an expired patent as well, citing Clontech Labs., Inc. v. Invitrogen Corp., 406 F.3d 1347 (Fed. Cir. 2005). In Clontech, the Federal Circuit explained that "an unpatented article" was one "not covered by at least one claim of each patent with which the article is marked." Id. at 1352 (emphasis added).
 

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Simonian v. Blistex, Inc., No. 10 C 1201, Slip Op. (N.D. Ill. Nov. 3, 2010) (St. Eve, J.).

Judge St. Eve denied defendant Blistex's Fed. R. Civ. P. 12(b) motion to dismiss Simonian's false patent marking case. As an initial matter, the fact that most of Simonian's statements were made upon information and belief did not require dismissal. The Court then held that false patent marking, or at least its intent requirement, was subject to Rule 9(b) heightened pleading. But Simonian met that standard by pleading that Blistex allegedly falsely marked its lip-ointment products with an expired patent.
 

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Simonian v. Monster Cable Prods., No. 10 C 1269, Slip Op. (N.D. Ill. Nov. 22, 2010) (Bucklo, J.).

Judge Bucklo granted defendant Monster Cable Products' ("Monster") § 1404 motion to transfer this false patent marking case. Citing the Court's decision transferring another of plaintiff Simonian's false marking cases to Iowa in Simonian v. Pella. As in Pella, the qui tam plaintiff's chosen forum was given little deference. And California was the situs of the events because that is where Monster designed the packaging at issue and made the alleged marking decisions. Also, all of Monster's witnesses were located in California. The Court, therefore, transferred the case to the Northern District of California.

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Simonian v. The Quigley Corp., No. 10 C 1259, Slip Op. (N.D. Ill. Jul. 19, 2010) (Lindberg, Sen. J.).

Judge Lindberg granted defendant The Quigley Corp.'s ("Quigley's") motion to dismiss plaintiff Simonian's false patent marking case for lack of standing. Simonian's case was the second filed against Quigley regarding the identical allegedly false patent marking of its COLD-EEZE branded products. Noting a lack of controlling case law, the Court analogized to the False Claims Act and held, citing a 1941 New York state case, that a second false marking plaintiff lacks standing to bring suit.
 

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Simonian v. Pella Corp., No. 10 C 1253, Slip Op. (N.D. Ill. Aug. 5, 2010) (Bucklo, J.)

Judge Bucklo granted defendant Pella's 28 U.S.C. § 1404(a) motion to transfer plaintiff Simonian's false patent marking case to the Southern District of Iowa. The court held that Simonian's choice of forum was not given deference, as it normally would be. First, the real plaintiff was the United States, not Simonian. Second, the situs of the material events was Iowa where Pella made its marking and packaging decisions, not Illinois where some marked products were sold. Simonian's numerous other false marking cases filed in the district did not weigh against transfer. Each of those cases involved different defendants, different accused products and different allegedly expired patents.
 

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Simonian v. Merck & Co., Inc., No. 10 C 1297, Slip Op. (N.D. Ill. Jul. 16, 2010) (Shadur, Sen. J.).

Judge Shadur sua sponte struck portions of defendants' answer to plaintiff's false patent marking case. First, the Court struck denials that followed defendants' statements that they lacked information and belief. While a lack of information and belief acts as a denial, denying allegations as to which you cannot form a belief is "oxymoronic."

Second, the Court struck defendants' improper affirmative defenses. Several of defendants' affirmative defenses were improper because they had already been brought into issue by denying allegations in the complaint. The Court also struck defendants' Fed. R. Civ. P. 12(b)(6) affirmative defense with leave to promptly file a "properly supported" motion to dismiss.
 

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Simonian v. Irwin Indus. Tool Co., No. 10 C 1260, Slip Op. (N.D. Ill. Aug. 27, 2010) (Lindberg, Sen. J.).

Judge Lindberg denied defendant Irwin Industrial Tool's ("Irwin") motion to dismiss plaintiff Simonian's false patent marking case. First, the Court denied Irwin's standing arguments. While the Federal Circuit had not yet issued its Stauffer decision regarding standing, the Court used similar reasoning. The Court analogized to the False Claims Act and held that any person had standing without proof of an injury in fact. The false marking injury is to the government and the public at large.

The Court also held that Simonian sufficiently pled the requisite intent to deceive, whether notice pleading or Fed. R. Civ. P. 9(b) standards applied. Simonian pled that Irwin was a "sophisticated company" with years of patent experience and that Irwin knew or should have known the patent was expired when it was marked.
 

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Simonian v. Bunn-O-Matic Corp., No. 10 C 1203, Slip Op. (N.D. Ill. Aug. 23, 2010) (Zagel, J.).

Judge Zagel stayed plaintiff Simonian's false patent marking case pending the Federal Circuit's standing decision in Stauffer - which has since issued, holding that any person has standing without regard to injury in fact.

The Court also indicated that, once the stay was lifted, it would deny defendant's Fed. R. Civ. P. 12(b)(6) motion to dismiss Simonian's complaint for failure to adequately plead intent to deceive pursuant to Fed. R. Civ. P. 9(b). Simonian pled that defendant knowingly marked its coffeemakers with expired patents. That was sufficient to meet the rebuttable presumption of intent as set out in Solo Cup. It did not matter that Simonian's claims were generic as evidenced by the use of nearly identical allegations in more than forty false patent marking cases Simonian had filed in the Northern District of Illinois.

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Simonian v. Merck & Co., No. 10 C 1297, Slip Op. (N.D. Ill. June 1, 2010) (Shadur, Sen. J.).

In response to defendant Merck's motion to dismiss plaintiff's false patent marking action, the Court sent a copy of its prior decision in Zojo Solutions, Inc. v. The Stanley Works, No. 10 C 1174, Slip Op. (N.D. Ill. May 12, 2010) (Shadur, Sen. J.). In that case, the Court held that marking with expired patents was actionable and that an individual citizen could bring a false marking action pursuant to 35 U.S.C. § 292. The Court ordered the parties to appear on the notice date to discuss the course of the litigation.

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