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Leonid Mikityanskiy v. Thermionics

May 5, 2011

LEONID MIKITYANSKIY, PLAINTIFF,
v.
THERMIONICS, INC., DEFENDANT.



The opinion of the court was delivered by: Richard Mills United States District Judge

E-FILED

Friday, 06 May, 2011 10:00:27 AM

Clerk, U.S. District Court, ILCD

OPINION

RICHARD MILLS, U.S. District Judge

Pending before the Court is the Defendant's motion to dismiss pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure. Also pending is the Defendant's motion to stay discovery pending a ruling on its motion to dismiss.

I.

This is a qui tam action. In his Complaint,*fn1 Plaintiff Leonid Mikityanskiy's asserts claims for false patent marking under 35 U.S.C. § 292. The Plaintiff alleges that Defendant Thermionics Corp. has violated § 292(a) by making certain products with expired patent numbers with the intent of deceiving the public about the patent coverage for these falsely marked products. The Plaintiff seeks an award of monetary charges against the Defendant, one-half of which would be paid to the United States, pursuant to 35 U.S.C. § 292(b).*fn2

The Plaintiff's Complaint alleges that, upon information and belief, the Defendant manufactures, distributes, sells and/or offers for sale therapeutic hot and cold pain relief pads. These pads include Thermionics clay-based Theramics® technology. The Theramics® technology has been the subject of a number of U.S. patents. Some of the patents covering the Theramics® technology are expired.

According to the Complaint, these expired patents include, but are not limited to, U.S. Patent No. 4,743, 726, issued May 10, 1988 ("the '726 Patent"), and U.S. Patent No. 4,849,593, issued July 18, 1989 ("the '593 Patent"). Both patents expired no later than October 14, 2006.

II.

"The two elements of a § 292 false marking claim are (1) marking an unpatented article and (2) intent to deceive the public." Forest Group, Inc. v. Bon Tool Co., 590 F.3d 1295, 1300 (Fed. Cir. 2009). When the Defendant's motion was filed, the United States Court of Appeals for the Federal Circuit had not yet ruled as to whether false marking claims were subject to the pleading requirements of Rule 8(a) or Rule 9(b) of the Federal Rules of Civil Procedure. That court has now determined that false marketing claims are subject to the particularity pleading requirement of Rule 9(b). See In re BP Lubricants USA, Inc., F.3d , 2011 WL 873147 (Fed. Cir. Mar. 15, 2011). The parties were granted leave to supplement their briefs following that decision. Rule 9(b) of the Federal Rules of Civil Procedure provides:

In alleging fraud or mistake, a party 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.

Based on the Federal Circuit's recent decision, a complaint alleging false marking must do more than simply assert in a conclusory fashion that a defendant is a "sophisticated company" and "knew or should have known" that a patent expired. See id. at *1. The court observed that Rule 9(b) acts as a "safety valve" so that only viable ยง 292 claims would reach ...


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