Hollander v. Etymotic Research, Inc.
2010 U.S. Dist. LEXIS 116619
| E.D. Pa. | 2010Background
- Hollander brings a qui tam action under 35 U.S.C. § 292 alleging Etymotic marked earphones and earplugs with expired patent numbers to deceive the public.
- Plaintiff identifies three expired patents ('679, '753, '683) allegedly used in marking and advertising products.
- Defendant allegedly continued marking products with expired patents after expiration.
- Plaintiff seeks relief on behalf of the United States; defendant moves to dismiss or transfer venue.
- Court issued memorandum denying in part and granting in part; allowed amended complaint with Rule 9(b) pleading.
- Proceedings center on whether marking after expiration constitutes false marking, standing, pleading sufficiency, and venue transfer.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether marking after patent expiration violates § 292 | Hollander: expired patents render articles unpatented and actionable | Etymotic: post-expiration marking may not be false marking | True; marking expired patents can violate § 292 and support liability |
| Whether Hollander has standing | Plaintiff represents United States; injury to public suffices | Lacks personal injury, standing insufficient | Plaintiff has standing under qui tam structure; injury to United States suffices |
| Whether Rule 9(b) heightened pleading applies to intent to deceive | Amended complaint alleges knowledge/intent based on patent duration reviews | Pleading lacks specific facts; insufficient to show intent | Rule 9(b) applies; dismissal warranted for lack of particularized intent unless amended |
| Whether venue should be transferred to Illinois | Plaintiff's forum appropriate; public/private factors neutral or favor plaintiff | Transfer to defendant’s location warranted by convenience | Transfer denied; venue remains proper; no compelling reason to transfer |
| Whether the pleading sufficiently alleges misrepresentation of unpatented articles | Markings misrepresent patent status; misbranding actionable | Literal truth of some marks defeats § 292 claim | Plaintiff sufficiently pleads false marking; insufficient only where all markings are true |
Key Cases Cited
- Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141 (U.S. 1989) (expired/denied patent items are unpatented and unpatentable)
- Pequignot v. Solo Cup Co., 608 F.3d 1356 (Fed. Cir. 2010) (articles marked with expired patent numbers are falsely marked)
- Clontech Labs., Inc. v. Invitrogen Corp., 406 F.3d 1347 (Fed. Cir. 2005) (unpatented article means not covered by at least one claim of each patent marked)
- Forest Group, Inc. v. Bon Tool Co., 590 F.3d 1295 (Fed. Cir. 2009) (false marking injures public interest in competition and IP policy)