IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION

THOMAS A. SIMONIAN, )

)

Plaintiff, )

)

v. ) No. 10 C 1297

)

MERCK & CO., INC., et al., )

)

Defendants. )

MEMORANDUM

Defendants Merck Co., Inc. and Schering-Plough Healthcare

Products have noticed up for presentment on June 2, 2010 a motion

to dismiss this action brought against them by Thomas

Simonian--an action that is among the spate of lawsuits around

the country inspired by the Federal Circuit’s decision in Forest

Group, Inc. v. Bon Tool Co., 590 F.3d 1295 (Fed. Cir. 2009). 

Unsurprisingly, this Court has had occasion to address the same

issue before now, and so it is transmitting to counsel, in

conjunction with this memorandum, a copy of its May 12, 2010

memorandum order in Zojo Solutions, Inc. v. The Stanley Works,

No. 10 C 1175.

Both sides’ counsel are nonetheless expected to appear at

the noticed-up presentment date. At that time this Court expects

to discuss with counsel the future course of the litigation.

________________________________________

Milton I. Shadur

Senior United States District Judge

Date: June 1, 2010

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IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION

ZOJO SOLUTIONS, INC., )

)

Plaintiff, )

)

v. ) No. 10 C 1175

)

THE STANLEY WORKS, )

)

Defendant. )

MEMORANDUM ORDER

Stanley Black & Decker, Inc. (“Stanley”) has noticed up for 1

presentment on May 14 a motion to dismiss this action brought

against it by Zojo Solutions, Inc. (“Zojo”)--an action among the

very large number of lawsuits around the country that claim false

patent marking in violation of 35 U.S.C. §292(a)(“Section

292(a)”). This and all such other actions, which dot the

greensward of patent litigation like an infestation of

dandelions, have been prompted by the Federal Circuit’s decision

in Forest Group, Inc. v. Bon Tool Co., 590 F.3d 1295 (Fed. Cir.

2009), which has created the prospect of extraordinarily large

damage awards in qui tam suits brought to enforce Section 292(a).

Although the defendants in other like actions on this

Court’s calendar and those of its colleagues have launched

different attacks on the complaints in those cases, here Stanley

has pointed to two claimed problems with Zojo’s lawsuit:

 According to Stanley’s filings in this case, it was 1

formerly known as “The Stanley Works,” the appellation employed

in the Complaint and hence in the case caption here.

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1. Fed. R. Civ. P. (“Rule”) 12(b)(6) assertedly calls

for dismissal because Section 292(a) outlaws the false

marking of “any unpatented article,” while Stanley contends

that its challenged articles are not “unpatented” because

they practice a once-existing, but now-expired, patent.

2. Even if that assertion fails, Rule 12(b)(1)

assertedly calls for dismissal for lack of subject matter

jurisdiction because Zojo is said to lack standing to bring

the lawsuit. Stanley says the “Take Care Clause” of U.S.

Const. art. II, §3 is violated by Section 292(a) because

that statute “vest[s] the authority to enforce a penal law

in a private plaintiff with absolutely no oversight or

control by the Executive Branch of the U.S. government”

(Stanley Mem. 2).

Because this Court is bound to follow the teaching of the Federal

Circuit in this action under the patent laws, and because Forest

Group effectively answers--and rejects--both of those

contentions, this Court need not await Zojo’s response to the

motion to dismiss. Instead it will simply quote the relevant

portions of the Forest Group opinion.

As for Stanley’s Rule 12(b)(6) contention, here is what

Forest Group, 590 F.3d at 1302-03 (citations and internal

quotation marks omitted) says:

The marking and false marking statutes exist to give

the public notice of patent rights. Congress intended

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the public to rely on marking as a ready means of

discerning the status of intellectual property embodied

in an article of manufacture or design. Acts of false

marking deter innovation and stifle competition in the

marketplace. If an article that is within the public

domain is falsely marked, potential competitors may be

dissuaded from entering the same market. False marks

may also deter scientific research when an inventor

sees a mark and decides to forego [sic] continued

research to avoid possible infringement. False marking

can also cause unnecessary investment in design around

or costs incurred to analyze the validity or

enforceability of a patent whose number has been marked

upon a product with which a competitor would like to

compete. In each instance where it is represented that

an article is patented, a member of the public desiring

to participate in the market for the marked article

must incur the cost of determining whether the involved

patents are valid and enforceable.

All of those perceived evils are present when a patentee

continues to affix the “patent” designation to an article even

after it has entered the public domain by reason of the patent’s

expiration.2

And as for Stanley’s Rule 12(b)(1) motion, Forest Group has

confronted--and here too has rejected--the notion that private

plaintiffs such as Zojo were not intended to be granted authority

to bring this type of action. Here is Forest Group, 590 F.3d at

1303-04 (citations to articles omitted):

 It is also worth noting that in part Section 292(a) 2

refers to a marking that contains “the word ‘patent’ or any word

or number importing that the same is patented” (emphasis added). 

That use of the present tense “is” appears to undercut Stanley’s

argument as to an article that once was protected by a patent but

no longer is.

3

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Congress’ interest in preventing false marking was so

great that it enacted a statute which sought to

encourage third parties to bring qui tam suits to

enforce the statute.

Forest argues that interpreting the fine of §292 to

apply on a per article basis would encourage “a new

cottage industry” of false marking litigation by

plaintiffs who have not suffered any direct harm. 

This, however, is what the clear language of the

statute allows. Section 292(b) provides that “[a]ny

person may sue for the penalty, in which event one-half

shall go to the person suing and the other to the use

of the United States.” 35 U.S.C. §292(b). As noted by

Forest, an amicus brief was filed in this case by an

individual who created a holding company to bring qui

tam actions in false marking cases. Commentators have

discussed a surge of such actions in recent years,

noting the possible rise of “marking trolls” who bring

litigation purely for personal gain.

Rather than discourage such activities, the false

marking statute explicitly permits qui tam actions. By

permitting members of the public to sue on behalf of

the government, Congress allowed individuals to help

control false marking.

To be sure, that treatment does not extend to the constitutional

argument advanced by Stanley, but it must be remembered that if

the Federal Circuit had perceived that the statute posed a

subject matter jurisdictional problem, it would have been

obligated to raise and address that issue sua sponte. In a

sense, then, that court’s failure to speak of any potential

problem of unconstitutionality could be viewed as confirming the

validity of the statute. In any event, this Court will leave

that task to the Federal Circuit if this action gives rise to an

appeal.

Accordingly Stanley’s motion is denied, and counsel for the

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litigants will not be required to appear at the designated

presentment date. This denial also calls for vacating the

schedule previously set by this Court except for the 9 a.m.

May 28 status hearing date, which is retained. In the meantime

Stanley is ordered to answer the Complaint on or before May 26,

2010.

________________________________________

Milton I. Shadur

Senior United States District Judge

Date: May 12, 2010

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