DCT

3:11-cv-00056

Troll Busters LLC v. Roche Diagnostics GmbH

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 3:11-cv-00056, S.D. Cal., 04/08/2011
  • Venue Allegations: Plaintiff alleges venue is proper because Defendants' products are advertised, marked, offered for sale, and sold within the district, and a substantial part of the events giving rise to the claim occurred there.
  • Core Dispute: Plaintiff brings a qui tam action on behalf of the public, alleging that Defendants violated the false patent marking statute, 35 U.S.C. § 292, by intentionally marking and advertising products with numbers of patents that have expired.
  • Technical Context: The technology domain is molecular diagnostics, specifically products related to the Nobel Prize-winning polymerase chain reaction (PCR) technology, a foundational method for amplifying DNA sequences.
  • Key Procedural History: The complaint alleges that Defendants continued to mark their products with expired patent numbers even after being served with the Original Complaint in this action, suggesting this post-suit conduct is further evidence of an intent to deceive. The complaint also notes that several patents expired due to terminal disclaimers.

Case Timeline

Date Event
1985-03-28 Earliest Priority Date (U.S. Patent No. 4,683,195)
1987-07-28 U.S. Patent No. 4,683,195 Issued
1987-07-28 U.S. Patent No. 4,683,202 Issued
2004-03-30 U.S. Patent No. 5,869,320 Expired
2004-07-28 U.S. Patent No. 4,683,195 Expired
2005-03-28 U.S. Patent No. 4,683,202 Expired
2005-03-28 U.S. Patent No. 4,965,188 Expired
2006-12-26 U.S. Patent No. 4,889,818 Expired
2007-07-13 U.S. Patent No. 4,877,830 Expired
2007-08-28 U.S. Patent No. 4,952,496 Expired
2008-09-10 U.S. Patent No. 5,047,513 Expired
2008-11-19 U.S. Patent No. 5,066,584 Expired
2008-12-24 U.S. Patent No. 5,075,216 Expired
2009-01-07 U.S. Patent No. 5,079,352 Expired
2009-02-08 U.S. Patent No. 5,035,936 Expired
2009-03-24 U.S. Patent No. 5,001,050 Expired
2009-06-01 U.S. Patent No. 5,035,996 Expired
2009-06-01 U.S. Patent No. 5,945,313 Expired
2009-12-01 U.S. Patent No. 5,168,062 Expired
2009-12-22 U.S. Patent No. 5,173,418 Expired
2010-03-30 U.S. Patent No. 5,198,543 Expired
2010-06-15 U.S. Patent No. 5,219,727 Expired
2010-06-15 U.S. Patent No. 5,476,774 Expired
2010-08-06 U.S. Patent No. 5,210,015 Expired
2010-08-06 U.S. Patent No. 5,487,972 Expired
2011-04-08 Complaint Filing Date

II. Expired Patent(s)-in-Suit

The complaint identifies twenty-two (22) expired U.S. patents that Defendants have allegedly used to falsely mark their products (Compl. ¶ 46). The central allegation is not one of infringement but that Defendants continued to represent their products as being covered by these patents after the patents' monopoly rights had terminated (Compl. ¶¶ 3, 9). The patents generally relate to foundational aspects of PCR technology, including processes for amplifying nucleic acid sequences, thermostable enzymes like Taq polymerase used in the reactions, and methods for controlling contamination (Compl. ¶¶ 47-68). A summary table of the expired patents is provided in the complaint (Compl. ¶ 69). Because the technical specifics of the patent claims are not central to the false marking allegation, a detailed analysis of individual patents is not presented. The core of the dispute concerns the act of marking with an expired patent number, not the technology described within the patent.

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are numerous products related to PCR and molecular diagnostics, including DNA polymerases, RT-PCR kits, PCR master mixes, probes, and assays sold by the various Defendants (Compl. ¶¶ 71, 73, 75, 77, 79, 82, 84, 86, 88, 89, 90, 92, 93).

Functionality and Market Context

The complaint alleges that these products are fundamental tools for molecular diagnostics and PCR-based testing (Compl. ¶ 19). The complaint provides extensive tables listing specific product names and associating them with one or more of the expired patents. The table in paragraph 71, for example, lists dozens of Roche products, such as "Tth DNA Polymerase" and "FastStart PCR Master," and indicates with an "X" that they were marked with or required licenses under the expired '015, '972, and '352 Patents (Compl. ¶ 71). Plaintiff alleges that by falsely marking these products, Defendants have discouraged competitors, stifled innovation, and prevented price reductions that would normally occur upon patent expiration (Compl. ¶¶ 20-21, 107).

IV. Analysis of False Marking Allegations

The complaint asserts claims for false patent marking under 35 U.S.C. § 292 (Compl. ¶ 2). This statute prohibits marking an unpatented article with a patent number for the purpose of deceiving the public (Compl. ¶ 42). The complaint's theory is that a product marked with an expired patent is "unpatented" for the purposes of the statute, as all monopoly rights have terminated (Compl. ¶ 109).

The central allegation is that each Defendant, "with the purpose of deceiving the public," marked, advertised, or required licensees to mark products with expired patents (Compl. ¶¶ 3, 8, 45). The complaint alleges this conduct misleads the public into believing the products are technologically superior or still subject to patent protection, thereby deterring competition and scientific research (Compl. ¶¶ 4-5). As evidence, the complaint presents a series of tables that function as charts, linking specific accused products to specific expired patents. For example, the table regarding Defendant Eurogentec's products alleges that "GoldStar DNA polymerase" and "Diamond Taq®" products were marked with expired U.S. Patent Nos. 5,210,015, 5,487,972, and 5,079,352 (Compl. ¶ 73). Similar detailed tables are provided for each of the other Defendants, forming the primary factual basis for the false marking counts (Compl. ¶¶ 71, 75, 77, 79, 82, 84, 86, 88, 89, 90, 92, 93).

  • Identified Points of Contention:
    • Legal & Factual Question: A primary question for the court will be whether the alleged marking of products with expired patent numbers was done "for the purpose of deceiving the public," as required by 35 U.S.C. § 292. The analysis will focus on the evidence of Defendants' knowledge and intent.
    • Evidentiary Question: What evidence demonstrates that each specific product listed was in fact marked with, advertised with, or sold under a license to each expired patent as alleged in the complaint's tables? The complaint states its allegations are based on searching Defendants' websites and product literature (Compl. ¶¶ 1, 46).

V. Other Allegations

Willful Infringement

The complaint does not use the term "willful infringement" but makes allegations that are central to establishing the requisite intent for a false marking claim. The complaint alleges Defendants' intent to deceive is demonstrated by several factors:

  • Defendants are large, sophisticated companies with experienced patent counsel that know when patents expire (Compl. ¶¶ 97-99, 100).
  • Licensor Defendants allegedly notified licensees of patent expiration dates for royalty purposes but still required them to continue marking products with those expired patents (Compl. ¶ 102).
  • Industry publications made the expiration of key PCR patents common knowledge in the industry (Compl. ¶ 105).
  • Certain Defendants allegedly continued to falsely mark products on their websites even after being served with the original complaint in the lawsuit (Compl. ¶¶ 72, 74, 76, 78, 80, 83, 85, 87, 91, 104).

VI. Analyst’s Conclusion: Key Questions for the Case

This case appears to turn on two central questions for the court:

  • A core issue will be one of intent: Can the plaintiff prove, by a preponderance of the evidence, that the Defendants' marking of products with expired patent numbers was done for the purpose of deceiving the public? The focus will likely be on whether the continued marking was an oversight or a deliberate business strategy to chill competition.
  • A key evidentiary question will be one of causation and harm: Does the evidence support the allegation that the false marking of these foundational PCR patents actually discouraged competitors from entering the market and caused public harm by maintaining artificially high prices, as the qui tam statute is designed to prevent?