The opinion of the court was delivered by: Judge James B. Zagel
MEMORANDUM OPINION AND ORDER
Plaintiff, Thomas Simonian ("Simonian") filed a seven-count qui tam action on behalf of the public for false marking pursuant to 35 U.S.C. § 292. Defendant, Weber-Stephen Products Co. ("Weber") now moves to dismiss Plaintiff's complaint because the complaint fails to comply with both the pleading requirements of Rule 8(a) and the heightened pleading requirements of Rule 9(b). For the following reasons, Defendant's motion to dismiss is denied.
Plaintiff alleges that Defendant marked certain products, such as the Smokey Joe Grill, the Smokey Joe Tuck N Carry Grill, the One Touch Kettle, the Gas Go-Anywhere Grill, the Weber Grill, and the Master Touch Kettle, with expired patents with intent to deceive the public and to gain a competitive advantage in the market. Specifically, Plaintiff alleges that Defendant marked the Smokey Joe Grill with United States Patent No. 4,498,452 ("the '452 Patent") and Design Patent D278,021*fn1 ("the '021 Patent"), the Smokey Joe Tuck N Carry with United States Patent No. 4,836,179 ("the '179 Patent") and Design Patent D284,929 ("the '929 Patent")*fn2 , the One Touch Kettle with United States Patent No. 4,576,140 (the '140 Patent) and Reissue Patent No. RE 33,091 (the '091 Patent)*fn3 , the Gas-Go-Anywhere Grill with United States Patent No. 4,627,408 ("the '408 Patent")*fn4 , the Weber Grill with United States Patents 4,777,927 ("the '927 Patent") and 5,036,832 (the '832 Patent")*fn5 , the Master Touch Kettle with the '927 Patent, and Flavorizer Bars with United States Patent No. 4,727,853 (the '853 Patent).*fn6
A motion to dismiss under Rule 12(b)(6) requires that I analyze the legal sufficiency of the complaint, and not the factual merits of the case. Autry v. Northwest Premium Servs., Inc., 144 F.3d 1037, 1039 (7th Cir. 1998). I must take all facts alleged in Plaintiff's complaint as true and draw all reasonable inferences from those facts in favor of the Plaintiff. Caldwell v. City of Elwood, 959 F.2d 670, 671 (7th Cir. 1992). Plaintiff, for her part, must do more than solely recite the elements for a violation; she must plead with sufficient particularity so that her right to relief is more than mere conjecture. Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007). Plaintiff must plead her facts so that, when accepted as true, they show the plausibility of her claim for relief. Ashcroft v. Iqbal, 129 S. Ct. 1937, 1949 (2009). Plaintiff must do more than plead facts that are "consistent with Defendants' liability" because that only shows the possibility, not the plausibility,of her entitlement to relief. Id. (internal quotations omitted).
Pursuant to Rule 8(a), it is insufficient for a complaint to make "[t]hreadbare recitals of the elements of a cause of action, supported by mere conclusory statements." Iqbal, 129 S.Ct. at 1949. Rule 9(b) requires that a plaintiff must "state with particularity the circumstances constituting fraud, or mistake. Malice, intent, knowledge, and other conditions of a person's mind may be alleged generally." "The rule requires the plaintiff to state the identity of the person who made the misrepresentation, the time, place, and context of the misrepresentation, and the method by which the misrepresentation was communicated to the plaintiff." Vicom, Inc. v. Harbridge Merch. Servs., Inc., 20 F.3d 771, 777 (7th Cir. 1994)( internal quotations omitted). In other words, alleging fraud with particularity "means, the who, what, when, where, and how: the first paragraph of any newspaper story." United States ex rel. Lusby v. Rolls-Royce Corp., 570 F.3d 849, 853 (7th Cir. 2009) (quoting DiLeo v. Ernst & Young, 901 F.2d 624, 627 (7th Cir. 1990).
Pursuant to the Patent Act, 35 U.S.C. § 292 prohibits: (1) marking a product with a patent number without the consent of the patentee; (2) marking an unpatented article with a patent number; and (3) marking an article with a false statement that a patent application is pending. There is no violation of § 292 unless an intent to deceive the public was present. Defendant moves to dismiss Plaintiff's complaint because the complaint does not properly allege intent to deceive the public.
First, Defendant argues that Plaintiff fails to meet the basic pleading requirements of Rule 8(a) as to Defendant's intent to deceive the public. I disagree. Rule 8(a) requires a short and plain statement of the claim showing the plaintiff is entitled to relief. Plaintiff has alleged with specificity the products allegedly falsely marked, the patents they were marked with, as well as the allegation that Defendant marked the products with intent to deceive the public. Though Defendant is correct that Plaintiff has not pled intent to deceive with particularity, this is not required, as will be discussed infra.
Next, Defendant argues that Plaintiff's claim should be dismissed because the allegations of intent to deceive the public fail to satisfy the heightened pleading requirement of Rule 9(b). In the language of the complaint, "[u]pon information and belief, Defendant intentionally marked its products with the [expired patents] in an attempt to prevent competitors from entering the market and for the purpose of deceiving the public into believing that something contained in or embodied in the products is covered by or protected by those patents."*fn7
Courts within this district agree that false-patent-marking cases sound in fraud and are subject to the heightened pleading requirements of Rule 9(b). Simonian v. Cisco Systems, Inc., No. C 1306, 2010 WL 3019964 (Jul. 29, 2010); Simonian v. Allergan, Inc., --F.Supp.2d-- 2010 WL 5175017 (N.D. Ill. Nov. 30, 2010). Under Rule 9(b), a party "must state with particularity the circumstances constituting fraud or mistake." The term 'circumstances' refers to the "who, what, where, when, and how" surrounding the misrepresentation. DiLeo v. Ernst & Young, 901 F.2d 624, 627 (7th Cir. 2009). Plaintiff has succeeded in alleging these facts; he has specifically identified the products Weber allegedly mismarked and the patents that allegedly had expired.
Furthermore, Plaintiff has alleged the dates on which each patent expired, and alleged that the offending products were manufactured after such dates.
Having determined that Plaintiff has sufficiently pled that Defendant falsely marked a product with an expired patent, I must now determine whether Plaintiff has sufficiently alleged Defendant's deceptive intent. I note that there are many similar cases within this district with divergent outcomes. Compare Simonian v. Oreck Corp., No. 10 C 1224, 2010 WL 3385465 (N.D. Ill. Aug. 23, 2010); Simonian v. Blistex Inc., No. 10 C 2101, 2010 WL 4539450 (N.D. Ill. Nov. 3, 2010); Englehardt v. Costco Wholesale Corp., No. 10 C 1424, 2010 WL 4822926 (N.D. Ill. Nov. 22, 2010) with Heathcote Holdings Corp., Inc. v. Crayola ...