812 F. Supp. 2d 925
N.D. Ill.2011Background
- Simonian, a qui tam relator, sues MeadWestvaco for false marking under 35 U.S.C. § 292.
- MeadWestvaco allegedly marked Mead® Security Envelopes and Mead® White Envelopes with expired patent 4,838,430 ('430 Patent).
- The '430 Patent issued 1989 and expired January 16, 2007; packaging was revised in 2009.
- Simonian alleges MeadWestvaco knew the patent expired but marked products to deceive the public and gain advantage.
- Procedural history: original complaint dismissed for Rule 9(b) concerns; Stauffer v. Brooks Brothers decision later granted standing for qui tam false marking; first amended complaint filed September 14, 2010.
- MeadWestvaco moved to dismiss arguing failure to plead with Rule 9(b) specificity and constitutionality of § 292; United States intervened arguing constitutionality.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the amended complaint satisfies Rule 9(b) on intent to deceive | Simonian alleges facts show MeadWestvaco intended to deceive after expiration. | Complaint lacks objective indicia of knowledge of expiration; no specific individuals or post-expiration conduct shown. | Dismissed; Rule 9(b) not satisfied. |
| Whether § 292 violates the Take Care Clause | Section 292 is unconstitutional as applied to relators. | Constitutionality should be addressed; law is not preempted. | Constitutionality not reached; court grants dismissal before ruling. |
| Whether Pequignot presumption of intent can be activated | Sophistication and post-expiration markings activate presumption. | Allegations insufficient to activate the presumption without objective indicators. | Presumption not activated; insufficient objective criteria. |
| Whether multiple post-expiration revisions are required to show intent | Any post-expiration revisions support intent to deceive. | A single post-expiration revision is insufficient; need more concrete indicia. | Not established; one revision in 2009 insufficient. |
Key Cases Cited
- BP Lubricants USA Inc., 637 F.3d 1307 (Fed.Cir. 2011) (Rule 9(b) requires factual allegations showing intent with objective criteria)
- Pequignot v. Solo Cup Co., 608 F.3d 1356 (Fed.Cir. 2010) (presumption of intent to deceive from false statement plus knowledge of falsity)
- Forest Group, Inc. v. Bon Tool Co., 590 F.3d 1295 (Fed.Cir. 2009) (false marking requires intent to deceive)
- Stauffer v. Brooks Brothers, Inc., 619 F.3d 1321 (Fed.Cir. 2010) (qui tam standing to pursue false marking action on government behalf)