Judge Rader announces new patent attorney troll career path

[JustAnotherExaminer]

A lot of attorneys I know think Judge Rader is totally clueless. I think his opinions are awful. Funny thing is, I used to find a lot of examiners thought his opinions were great.

I didn't know examiners regularly read court opinions...

If you count the BPAI as a court! They make all the "non-precedential" decisions I need. 

On a serious note, some of us do keep up to date prosecution case law. Not so much litigation.

[DogDayPM 9er9er9er]

http://37thoughts.wordpress.com/2010/02/23/false-marking-suits-go-bananas/

Consortium of Chicago law firms files 12 false marking suits in the ND IL in one day.  18 Marking Troll suits in the last 4 days.

Courts going to get clogged?

[Isaac]

So you get sued by a trolling patent attorney who obviously doesn't have enough real work, and spend $200K or 300K in legal fees proving there was no intent to deceive.  Or you pay the troll some amount of your expected defense costs to go away. 

These qui tam type cases are difficult to settle prior to a judgment of some kind because a new plaintiff can simply refile the same law suit.

[DogDayPM 9er9er9er]

These qui tam type cases are difficult to settle prior to a judgment of some kind because a new plaintiff can simply refile the same law suit.

Be interested in hearing the thinking here.  If the government is assigning its injury to the relator, and they press the suit, and it settles (giving half the penalty (remember, this is a "penal" or "criminal statute") to the citizen relator and half to the government), then why doesn't that exhaust the matter with respect to that marked product?

Also, for anyone, thoughts on these cases?  You can pull the complaints at the link below (11 filed by the consortium in the name of Simonian, one in the name of O'Neill).  I've skimmed most of them and they all seem to relate to expired patents.  While in some cases (like Simonian v. Bunn) the patents expired decades ago, in other cases the patents just expired in late 2009.

Should there be liability for failing to immediately change packaging after a patent expires?

And, I guess more fundamentally, is leaving an old patent number on one's packaging "false marking" with regard to the statute?

http://www.ilnd.uscourts.gov/home/RecentlyFiledCase.aspx

EDIT: by the way, at least 8 more "expired is false marking" suits filed today, so amend my post above to make it 26 in the last 4 days.

[MYK]

Should there be liability for failing to immediately change packaging after a patent expires?

And, I guess more fundamentally, is leaving an old patent number on one's packaging "false marking" with regard to the statute?

I'd argue "no" and "hell no", if for no other reason than that such numbers (or dates) are often a point of pride in small companies, and moreover, in this day and age, it's trivial for even the most idiotic of idiots to check whether a patent is still in force.  I have a ruler around the house, made recently, that has a patent number down in the 2,xxx,xxx range marked on it.  It doesn't even take a web search to realize that that one expired a few decades ago.  No harm, no foul.

I suggest contacting the courts to recommend that they start issuing sanctions and granting attorneys' fees under Rule 11.

[DogDayPM 9er9er9er]

I suggest contacting the courts to recommend that they start issuing sanctions and granting attorneys' fees under Rule 11.

Thanks MYK, don't I wish/hope you turn out right.  But no one's yet ruled whether or not expired marking is false marking.  In SDNY, Stauffer v. Brooks Brothers, the court dismissed it for lack of Article III standing, so they never got to whether expired=false.  That case was much as you describe, a very old patent essentially being used as a trade dress item, as in "The ORIGINAL patented Tie Clasp, US Pat. Expired 50 Years Ago" (paraphrased of course).

And in the EDVA, in Pequignot v. Solo Cup, the judge decided on SJM that the patent attorney plaintiff failed the intent prong, and really didn't opine too much on the expired issue. 

Both of these are under appeal.  I think Brooks Brothers goes up first at the CAFC but the expired issue is not really being briefed. 

[DogDayPM 9er9er9er]

I have a ruler around the house, made recently, that has a patent number down in the 2,xxx,xxx range marked on it.  

P.S., hey, in case I need to make some quick cash, who's the manufacturer of that there roooler?

 

[Isaac]

Be interested in hearing the thinking here.  If the government is assigning its injury to the relator, and they press the suit, and it settles (giving half the penalty (remember, this is a "penal" or "criminal statute") to the citizen relator and half to the government), then why doesn't that exhaust the matter with respect to that marked product?

I guess I'm questioning the "relator" theory with regards to the false marking statute.  Does a settlement in a false patent marking case necessarily bind the government simply because the government gets half of whatever money makes the suer go away?   My understanding is that other types of qui tam statutes do include a system for making sure that the government is involved in the filing and settlement of cases that just is not found in the false marking statute.  However, my understanding might well be flawed...

Should there be liability for failing to immediately change packaging after a patent expires?

If the period is too short, there might be some difficulty establishing the intent to deceive.

[DogDayPM 9er9er9er]

I guess I'm questioning the "relator" theory with regards to the false marking statute.  Does a settlement in a false patent marking case necessarily bind the government simply because the government gets half of whatever money makes the suer go away?   My understanding is that other types of qui tam statutes do include a system for making sure that the government is involved in the filing and settlement of cases that just is not found in the false marking statute. 

Gee, Mr. Isaac, it sounds almost as if you in your opinion as an experienced attorney are almost saying that the statute as normally construed does not provide adequate government control? (Cf. the revised False Claims Act qui tam statute, which has been plugged full of government controls).  If not, can this statute possibly satisfy the Article II take care clause?  Or is a completely non-controlled person acting and prosecuting the suit on behalf of the US Gummint?

The fact is that the statute as writ requires no notice to the government whatsoever.  So conceivably, a plaintiff could file suit, the defendant fecklessly fold and settle, and have the settlement recorded and a cheque for half of the take forwarded to the government before said government even knows the suit had existed.  This is "control"??

[DogDayPM 9er9er9er]

EDIT: by the way, at least 8 more "expired is false marking" suits filed today, so amend my post above to make it 26 in the last 4 days.

Edit for Feb 25th, looks like 9 more filed by the same guys in Chicago.  By themselves, they're up to 27, which makes for 35 overall this week (including 1 by a non-profit run by a couple of patent professors out of the Cardozo LS!).

Getting a little crazy.  I hope Judge Moore's happy!

[MYK]

Damn it, I want in on the land rush.  Can I start filing suits once I get my Section 711 license?

[DogDayPM 9er9er9er]

Damn it, I want in on the land rush.  Can I start filing suits once I get my Section 711 license?

Why wait that long?  Pro-se with no connection to a legal degree could cut and paste one of these.  There's almost no expense that I can see to the plaintiff in these cases, unless they want to go take defendant corp's depo.  Meanwhile the corp's got to disrupt its business, dig out old files for the last X years, gather data, etc.

[DogDayPM 9er9er9er]

Does a settlement in a false patent marking case necessarily bind the government simply because the government gets half of whatever money makes the suer go away? 

Isaac,
Looks like we get to see a real world test of your question, but coming from another angle.  If the government IS bound, does that extinguish the government's claim as to that product?  Thus no more "offense" exists for "any person" to sue upon?

Here's how we get to find out.  Looks like a number of the recent marked products filings are doubled up.  Some examples:
  - Plaintiff A sued P&G in NT TX while Plaintiff B sued them in ND Ala.
  - Plaintiff C sued Novartis in SDNY while Plaintiff D sued them in the ND IL. 
  - Plaintiff C also sued Quigley in SDNY while Plaintiff D also sued them in the ND IL.
  - Plaintiff C also sued Hunter Fan in SDNY while Plaintiff F also sued them in the ND IL.

So how should the courts deal with this?  Some of them are on different days - does that mean the winner in the race to the courthouse gets all the gold?  Or do both suits proceed?

And what do you do with contemporaneously filed suits?  (As some of these are filed on the same day).  Do both plaintiffs get to individually get their pot of gold?

By the way, we're up to (I think) 55 of these suits in less than 2 months.

[Isaac]

Isaac,
Looks like we get to see a real world test of your question, but coming from another angle.  If the government IS bound, does that extinguish the government's claim as to that product?  Thus no more "offense" exists for "any person" to sue upon?

Even if the settlement terms address a product, they might not cover ever aspect of false marking for that product.  For example you might have non overlapping claims addressing packaging, web pages, tv advertisements etc. for the same product.   But I don't see how the government can recoup for the same offense twice.  I think additional suits are precluded over for the subject matter over which the gov't is bound.  I just don't see how the government can be bound before they sign off on the suit or the settlement at least by accepting their half of the money.

How should the courts deal with this?  Some of them are on different days - does that mean the winner in the race to the courthouse gets all the gold?  Or do both suits proceed?

I dunno.  Looks like a cluster.  Maybe the courts are going to have to read some more of the False Claims Act into the blanks.

[DogDayPM 9er9er9er]

But I don't see how the government can recoup for the same offense twice.  I think additional suits are precluded over for the subject matter over which the gov't is bound. I just don't see how the government can be bound before they sign off on the suit or the settlement at least by accepting their half of the money.

That's kind of what I was thinking just from a common sense standpoint, but unlike the FCA, there's no provision in 292 stating that only the first relator with real knowledge gets to press the suit. 

As for the government signing off on any settlement, note there's no provision for the government to sign off on the settlement.  Remember, they don't even get notice according to the statute.  Government just gets a check in the mail. 

And I don't see how the courts can read FCA-type protections into sect.292.  It's either in the statute or it's not.  If I recall aright, FCA itself was modified legislatively in order to make it constitutional - the courts weren't going to do that on their own.

Looks like a cluster

Indeed!  Should be fun to watch.  I'm hoping none of the defendants folds.  It'd be most fun if they all fight it out and after 28 suits, the firms backing the claims have spent at least a million and collect in total about $5000 that they have to split with the government (while, sadly, the defendants would collectively have spent around 20 million defending).