9(b)

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VitalGo, Inc. v. Kreg Therapeutics, Inc., No. 16 C 5577, Slip Op. (N.D. Ill. Dec. 21, 2017) (Dow, J.).

Judge Dow granted in part defendants’ (collectively “Kreg”) Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff’s (collectively “VitalGo”) claims and Fed. R. Civ. P. 12(f) motion to strike portions of its complaint in this…

Kay Bros. Enters., Inc. v. Parente¸ No. 16 C 387, Slip Op. (N.D. Ill. Oct. 3, 2016) (Ellis, J.).

Judge Ellis granted in part third party defendant R.A. Mifflin Architects (“Mifflin”) Fed. R. Civ. P. 12(b)(6) motion to dismiss defendants’ third party claims against Mifflin in this copyright dispute involving custom architectural plans.

According…

Ariel Investments, LLC v. Ariel Capital Advisors, LLC, No. 15 C 3717, Slip Op. (N.D. Ill. May 16, 2016) (Kennelly, J.).

Judge Kennelly granted plaintiff Ariel Investments’ Fed. R. Civ. P. 12(b)(6) motion to dismiss defendant Ariel Capital’s fraud on the Patent & Trademark Office and abuse of process claims in this Lanham Act…

Med Script Pharm., LLC v. My Script, LLC, No. 14 C 469, Slip Op. (N.D. Ill. Dec. 11, 2014 (Gettleman, J.).

Judge Gettleman granted in part defendants’ various Fed. R. Civ. P. 12(b)(6) motions to dismiss plaintiff Med Script’s Lanham Act false advertising and other state law claims. Of particular note, the Court held…

Slep-Tone Enter. Corp. v. Teddy O’Brian’s, Inc., No. 14 C 3570, Slip Op. (N.D. Ill. Sep. 24, 2014) (Guzman, J.).

Judge Guzman granted in part plaintiff Slep-Tone’s Fed. R. Civ. P. 12(b)(6) motion to dismiss defendant’s declaratory judgment of trademark invalidity, cancellation, antitrust and related Lanham Act and state law claims in this trademark …

Judge Feinerman granted defendant BP Lubricants’ Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff Simonian’s false patent marking case with prejudice. After the Federal Circuit held Simonian’s intent allegations lacking, Simonian amended its Complaint. The Court held that the amended complaint did not meet Rule 9(b) pleading standards for the following reasons:
Simonian’s allegation that a license agreement proved BP Lubricant’s knowledge of the patent’s expiration failed because the Agreement did not reference the patent’s expiration date.
General allegations that BP Lubricants understand that patents expire did not create intent. Allegations that BP Lubricants briefly litigated the patent may have been sufficient.
The fact that the term of the patent was printed on its face was also not sufficient to show intent. Allowing this allegation to create intent would render the BP Lubricants decision a “dead letter.”
While BP Lubricants allegedly revised its front labels three times after the patent’s expiration, BP Lubricants did not revise the back label containing the marking. Because the marking was never revised, the label revisions were irrelevant.
Finally, because Simonian was fully aware of the BP Lubricants decision when he prepared his amended complaint, and because he did not seek leave to replead the dismissal was made with prejudice.
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Continue Reading Revised Label Does Not Create False Marking Intent

Simonian v. Mead Westvaco Corp., No. 10 C 1217 Slip. Op. (N.D. Ill. Sep. 1, 2011) (Castillo, J.).
Judge Castillo granted defendant Mead Westvaco’s motion to dismiss plaintiff Simonian’s false patent marking suit claiming that Mead Westvaco marked envelopes with expired patents. Simonian’s general allegation of intent did not meet the Fed. R. Civ. P. 9 (b) heightened pleading standards. In fact, they mirrored the allegations held insufficient in BP Lubricant. And Simonian did not:
· Identify specific Mead Westvaco individuals with knowledge of the alleged false marking;
· Allege that Mead Westvaco sued a third party asserting the patents after they expired; or
· Allege that Mead Westvaco made multiple revisions to the packaging on the markings after the patents expired.
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Continue Reading False Marking Requires More than General Intent Allegations

Luka v. The Proctor & Gamble Co., No. 10 C 2511 (N.D. Ill. Mar. 28, 2011) (Kennelly, J.).
Judge Kennelly granted certain defendants’ motions to dismiss plaintiff’s false patent marking case for failure to sufficiently plead intent, and held that the statute was constitutional. Note that this case was decided before President Obama signed the America Invents Act which removes expired patents from the false marking statute.
Proctor & Gamble
Plaintiff’s general allegations against defendant Procter & Gamble were insufficient, particularly in light of the license agreement requiring defendant Innovative to comply with the marking statute.
Innovative
Plaintiff sufficiently pled intent as to Innovative by attacking the P&G-Innovative license agreement. In that agreement, Innovative accepts the responsibility of complying with the marking statute.
Helen of Troy & Idelle
Plaintiff’s claims as to Helen of Troy and Idelle failed because they were the sort of generalized pleadings that BP Lubricants held insufficient.
Constitutionality
The Court held that § 292, the false marking statue was constitutional:
For these reasons, the Court agrees with the district court in the Pequignot case that “[a]though these mechanisms concededly do not rise to the same level of government control provided by the FCA, the FCA’s strict safeguards are not required because . . . § 292(b) represents a minimal intrusion onto Executive Branch power.” Peguignot v. Solo Cup Co., 640 F. Supp. 2d 714, 728 (E.D. Va. 2009), vacated in part on other grounds, 608 F.3d 1356 (Fed. Cir. 2010).
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Continue Reading False Patent Marking Statute is Constitutional