Public Patent Foundation, Inc. v. Glaxosmithkline Consumer Healthcare, L.P.
2011 U.S. Dist. LEXIS 88721
| S.D.N.Y. | 2011Background
- Plaintiff Public Patent Foundation filed a qui tam action in June 2009 alleging GlaxoSmithKline marked Citrucel products with expired patent numbers in violation of 35 U.S.C. § 292.
- Patents at issue were Nos. 4,626,287 and 4,671,823, which expired on January 29, 2005; markings continued through 2009 before removal.
- GSK began removing expired patent markings in fall 2009 and later adopted a process to identify patent expiration dates for labeling decisions.
- Trial proceeded as a bench trial on June 6, 2011; Garrod’s proposed expert testimony was excluded; four GSK witnesses testified credibly about practices and knowledge.
- Defendant moved for judgment as a matter of law under Rule 52(c) arguing Plaintiff failed to prove knowledge of falsity; the court granted the motion, ruling no intent to deceive was shown.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether plaintiff proved knowledge of falsity under § 292 | Plaintiff asserts GSK knew markings were false or acted with intent to deceive. | GSK lacked knowledge of expiration and lacked intent to deceive; no evidence of deception. | Rule 52(c) motion granted; no knowledge shown. |
| Whether the evidence supports intent to deceive even if knowledge were proven | If knowledge existed, intent to deceive is shown by conduct and purpose. | No credible evidence of intentional deception; actions were not aimed at deceiving the public. | Even assuming knowledge, record shows no conscious desire to deceive. |
| Effect of Solo Cup decision on the case | Solo Cup clarified that marking expired patents can be deceptive; supports knowledge and intent. | Solo Cup did not retroactively impose knowledge of falsity; evidence did not show deception. | Later Solo Cup framework applied to assess knowledge, but still found no proof of deception. |
Key Cases Cited
- Clontech Labs., Inc. v. Invitrogen Corp., 406 F.3d 1347 (Fed. Cir. 2005) (knowledge of falsity required for § 292 false marking; strict intent standard)
- Solo Cup Co. v. Pequignot, 608 F.3d 1356 (Fed. Cir. 2010) (expired-patent marks are false marking; presumption of intent with knowledge of falsity)
- In re BP Lubricants USA Inc., 637 F.3d 1307 (Fed. Cir. 2011) (provides specific guidance on § 292 knowledge standards in false marking)