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.

Continue Reading

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.

Continue Reading

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.

Continue Reading

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.

Continue Reading

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.

Continue Reading

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).

Continue Reading

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.

Continue Reading

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.

Continue Reading

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.

Continue Reading

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.

Continue Reading