Rogers v. TRISTAR PRODUCTS, INC.
793 F. Supp. 2d 711
E.D. Pa.2011Background
- Rogers sues Tristar under 35 U.S.C. §292 for false patent marking in advertising; seeks damages under the statute’s qui tam provision §292(b).
- Power Juicer line allegedly marketed as having Patent Extraction Technology and similar patented features.
- Only a China patent covers design; it does not cover the claimed functional technology or extraction claims.
- Plaintiff alleges the Power Juicer is not covered by any patent claims, making the marketing false and deceptive.
- Alleged false markings were advertised on infomercials and via Defendant’s websites; the China patent has nothing to do with those claims.
- Court addresses whether the complaint states a claim and whether §292(b) violates the Take Care Clause of Article II.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the complaint states a claim under §292(a) for false marking | Rogers argues sufficient facts show false marking (Power Juicer not covered by any patent) and intent to deceive | Rogers’ pleading lacks specific facts proving deception or applicability of any patent to the product | The complaint states a facially plausible false marking claim under §292(a) |
| Whether Rule 9(b) applies to §292 claims and whether intent to deceive is pled with sufficient particularity | Plaintiff pleads who, what, where, when, and how; facts support deceptive intent | Plaintiff’s pleadings are lacking specific facts of intent | Rule 9(b) applies to the falsity/knowledge element but underlying facts support intent to deceive; dismissal denied on this basis |
| Whether §292(b) constitutionally violates the Take Care Clause | Federal government should retain control; relator mechanism challenges presidential duty to faithfully execute laws | §292(b) delegates prosecutorial power to private relators without adequate executive control | §292(b) violates the Take Care Clause; unconstitutional |
| Whether Morrison v. Olson’s sufficient control test governs the §292(b) challenge | Morrison provides the standard for sufficient executive control over delegated prosecutorial power | Morrison does not clearly apply to qui tam patent marking actions; control is lacking | Morrison's sufficient control test governs the constitutional analysis; court applies it to §292(b) |
| Whether §292(b) can be saved by safeguards (notice/intervention) | Government notice and intervention provisions exist in practice | Safeguards are insufficient to grant executive control over relator-led actions | Safeguards are insufficient; §292(b) unconstitutional |
Key Cases Cited
- Forest Group, Inc. v. Bon Tool Co., 590 F.3d 1295 (Fed. Cir. 2009) (per-article penalties catalyze widespread false marking actions)
- Pequignot v. Solo Cup Co., 608 F.3d 1356 (Fed. Cir. 2010) (expired patents may render articles unpatented for marking purposes; false marking knowledge issues)
- Clontech Labs., Inc. v. Invitrogen Corp., 406 F.3d 1347 (Fed. Cir. 2005) (requires analysis of whether the article is covered by at least one claim of each patent)
- In re BP Lubricants USA Inc., 637 F.3d 1307 (Fed. Cir. 2011) (applies Rule 9(b) gatekeeping to false marking claims; requires underlying facts from which intent may be inferred)
- Morrison v. Olson, 487 U.S. 654 (Supreme Court 1988) (sufficient control test for executive branch control over delegated prosecutorial power)
- Unique Prod. Solutions, Ltd. v. HyGrade Valve, Inc., 765 F. Supp. 2d 997 (N.D. Ohio 2011) (held §292(b) unconstitutional under Take Care Clause)
- Stauffer v. Brooks Bros., Inc., 619 F.3d 1321 (Fed. Cir. 2010) (standing/sufficiency of government control in qui tam context)
- U.S. ex rel. Taxpayers Against Fraud v. Gen. Elec. Co., 41 F.3d 1032 (6th Cir. 1994) (support for Morrison-based control analysis in qui tam)
- Kreindler & Kreindler v. United Technologies Corp., 985 F.2d 1148 (2d Cir. 1993) (concerns executive control in False Claims Act context)
- Pequignot v. Solo Cup Co. (district court note), 640 F. Supp. 2d 714 (E.D. Va. 2009) (discussion leading to Federal Circuit view that true nature is criminal statute)