DCT

1:10-cv-01220

Simonian v. Weber Stephen Products Co

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:10-cv-01220, N.D. Ill., 02/23/2010
  • Venue Allegations: Venue is based on Defendant's principal place of business and its offering for sale and sale of the allegedly falsely marked products within the Northern District of Illinois.
  • Core Dispute: Plaintiff alleges that Defendant violated the false patent marking statute, 35 U.S.C. §292, by continuing to mark various barbecue grills with patents that have expired, allegedly with an intent to deceive the public.
  • Technical Context: The dispute centers on patents related to various features of barbecue grills, a mature and competitive consumer product market.
  • Key Procedural History: The complaint is filed as a qui tam action, in which a private citizen sues on behalf of the government and the public, with any potential recovery being shared.

Case Timeline

Date Event
1983-11-22 U.S. Patent No. 4,416,248 Issues
1985-03-19 U.S. Design Patent No. D278,021 Issues
1985-06-25 U.S. Patent No. 4,523,574 Issues
1986-03-18 U.S. Patent No. 4,576,140 Issues
1986-08-05 U.S. Design Patent No. D284,929 Issues
1986-12-09 U.S. Patent No. 4,627,408 Issues
1988-03-01 U.S. Patent No. 4,727,853 Issues
1988-10-18 U.S. Patent No. 4,777,927 Issues
1989-05-30 U.S. Patent No. 4,836,179 Issues
1991-08-06 U.S. Patent No. 5,036,832 Issues
2002-05-07 D278,021 Patent Allegedly Expires
2002-06-21 4,498,452 Patent Allegedly Expires
2003-11-22 Re. 33,091 Patent Allegedly Expires
2004-08-10 D284,929 Patent Allegedly Expires
2005-07-08 4,576,140 Patent Allegedly Expires
2005-07-24 4,627,408 Patent Allegedly Expires
2005-08-08 4,727,853 Patent Allegedly Expires
2007-07-06 4,777,927 Patent Allegedly Expires
2008-08-12 4,836,179 Patent Allegedly Expires
2008-09-23 4,777,927 Patent Allegedly Expires (alternate)
2009-08-11 5,036,832 Patent Allegedly Expires
2010-02-23 Complaint Filed

II. Patents at Issue

This action concerns allegations of false marking with expired patents, not patent infringement. The following patents are identified in the complaint as having been marked on Defendant's products after their alleged expiration dates.

  • U.S. Patent No. 4,498,452 titled "Kettle with Ash Catcher," issued February 12, 1985. The complaint alleges this patent expired on June 21, 2002 (Compl. ¶12).
  • U.S. Design Patent No. D278,021 titled "Combined Leg Support and Ash Catcher for Outdoor Cooker or Similar Article," issued March 19, 1985. The complaint alleges this patent expired on May 7, 2002 (Compl. ¶12).
  • U.S. Patent No. 4,836,179 titled "Portable Barbecue Grill with Cover Support," issued May 30, 1989. The complaint alleges this patent expired on August 12, 2008 (Compl. ¶25).
  • U.S. Design Patent No. D284,929 titled "Outdoor Barbecue Cooker," issued August 5, 1986. The complaint alleges this patent expired on August 10, 2004 (Compl. ¶25).
  • U.S. Patent No. 4,576,140 titled "Ash Catcher for Charcoal Grill," issued March 18, 1986. The complaint alleges this patent expired on July 8, 2005 (Compl. ¶38).
  • U.S. Reissue Patent No. Re. 33,091 titled "Ash Disposal Damper for Barbecue Kettle," a reissue of U.S. Patent No. 4,416,248, issued November 22, 1983. The complaint alleges this patent expired on November 22, 2003 (Compl. ¶38).
  • U.S. Patent No. 4,627,408 titled "Vaporizing Element for Portable Grill," issued December 9, 1986. The complaint alleges this patent expired on July 24, 2005 (Compl. ¶51).
  • U.S. Patent No. 4,777,927 titled "Barbeque Kettle," issued October 18, 1988. The complaint alleges this patent expired on July 6, 2007 (Compl. ¶64) and also on September 23, 2008 (Compl. ¶77).
  • U.S. Patent No. 5,036,832 titled "Ash Catcher Assembly for Barbecue Grill," issued August 6, 1991. The complaint alleges this patent expired on August 11, 2009 (Compl. ¶64).
  • U.S. Patent No. 4,727,853 titled "Sear Grid for Portable Grill," issued March 1, 1988. The complaint alleges this patent expired on August 8, 2005 (Compl. ¶90).

No probative visual evidence provided in complaint.

III. The Accused Instrumentalities

The complaint identifies several categories of barbecue grills and accessories manufactured and sold by the Defendant that are allegedly marked with expired patents (Compl. ¶2). The products are identified by name in separate counts of the complaint.

  • Smokey Joe Grill (Compl. ¶11)
  • Smokey Joe Tuck N Carry Grill (Compl. ¶24)
  • One Touch Kettle (Compl. ¶37)
  • Gas Go-Anywhere Grill (Compl. ¶50)
  • Weber Grill (Compl. ¶63)
  • Master Touch Kettle (Compl. ¶76)
  • Weber Flavorizer Bars (Compl. ¶89)

The complaint does not provide specific technical descriptions of these products' functionalities but alleges they are marked with one or more of the expired patents listed in Section II.

IV. Analysis of False Marking Allegations

The complaint alleges violations of 35 U.S.C. §292(a), which prohibits marking an "unpatented article" with a patent number for the purpose of deceiving the public (Compl. ¶1). A product marked with an expired patent is considered an "unpatented article" for the purposes of the statute (Compl. ¶13). The complaint's allegations are organized by product, as summarized below.

Accused Product Marked Expired Patent(s) Alleged Expiration Date(s) Complaint Citation
Smokey Joe Grill 4,498,452; D278,021 2002-06-21; 2002-05-07 ¶12
Smokey Joe Tuck N Carry Grill 4,836,179; D284,929 2008-08-12; 2004-08-10 ¶25
One Touch Kettle 4,576,140; Re. 33,091 2005-07-08; 2003-11-22 ¶38
Gas Go-Anywhere Grill 4,627,408 2005-07-24 ¶51
Weber Grill 4,777,927; 5,036,832 2007-07-06; 2009-08-11 ¶64
Master Touch Kettle 4,777,927 2008-09-23 ¶77
Weber Flavorizer Bars 4,727,853 2005-08-08 ¶90

The complaint presents conflicting expiration dates for U.S. Patent No. 4,777,927. Count V alleges the patent expired on July 6, 2007, while Count VI alleges it expired on September 23, 2008 (Compl. ¶64, ¶77).

Identified Points of Contention

  • Intent to Deceive: A central element of a false marking claim under 35 U.S.C. §292 is proof of an "intent to deceive." The complaint alleges this intent by asserting that Defendant is a "sophisticated company" with extensive patent experience that "intentionally marked its products" to "prevent competitors from entering the market" and to deceive the public into believing the products were protected by patents (Compl. ¶14, ¶17, ¶30). The factual basis for this alleged intent, beyond Defendant's general sophistication, will likely be a primary point of contention.
  • Unit of Offense: The complaint seeks a penalty of $500 for "each offense," and asserts that "each expired patent marked on a product directly...multiplied by the number of products...on which it appears is a separate 'offense'" (Compl. ¶3, ¶22). The proper interpretation of what constitutes a single "offense" for the calculation of statutory penalties will be a key legal question with significant financial implications.

V. Allegations of Deceptive Intent

The complaint repeatedly alleges that the Defendant acted with the intent to deceive the public, which is a required element for liability under 35 U.S.C. §292. The factual assertions offered in support of this intent include:

  • Sophistication and Knowledge: The complaint alleges that the Defendant is a "sophisticated company" with "many decades of experience applying for, obtaining, and litigating patents" and therefore "knows, or should know" that the patents at issue have expired (Compl. ¶14, ¶16, ¶27, ¶29). It further alleges that Defendant "cannot genuinely believe that a patent does not expire" (Compl. ¶15, ¶28).
  • Anti-Competitive Motive: The complaint asserts that the alleged false marking was done "intentionally...in an attempt to prevent competitors from entering the market" and to "discourage or deter persons and companies from commercializing competing products" (Compl. ¶17, ¶18, ¶30, ¶31). This alleges a specific financial motive for the defendant's actions, which may be used as circumstantial evidence of deceptive intent.

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

This case appears to turn on two central questions related to the requirements of the false marking statute.

  • A core evidentiary question will be one of "intent": Can the plaintiff prove, by the requisite standard of evidence, that Weber-Stephen's continued marking of products with expired patents was done with an "intent to deceive the public," as opposed to being an administrative oversight, a mistake in tracking expiration dates, or a failure to update tooling?
  • A critical legal issue will be the "scope of the penalty": Does each individually marked product constitute a separate "offense" for calculating the statutory penalty under 35 U.S.C. §292, or does the statute contemplate a different basis for penalties, such as the decision to mark a product line, which would significantly alter the potential damages at stake?