2:11-cv-02496
Baker -v- Alcon Labortories, Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Charles R. Baker (Tennessee)
- Defendant: Alcon Laboratories, Inc. (Delaware)
- Plaintiff’s Counsel: Beasley, Allen, Crow, Methvin, Portis, & Miles, P.C.; Allen, Summers, Simpson, Lillie & Gresham
- Case Identification: 2:11-cv-02496, W.D. Tenn., 06/17/2011
- Venue Allegations: Venue is based on allegations that the accused products were advertised, offered for sale, and sold within the Western District of Tennessee.
- Core Dispute: Plaintiff alleges that Defendant violated 35 U.S.C. § 292 by falsely marking certain products with expired or non-covering patent numbers with the intent to deceive the public.
- Technical Context: The dispute concerns branded products in the ophthalmic or medical device field, where patent markings can influence market competition.
- Key Procedural History: This is a qui tam action brought on behalf of the public for false patent marking. The complaint states it follows the severance of claims against Defendant Alcon from a prior case, Charles Baker v. Novartis Pharmeceticals, Inc., et al., Case No. 2:10-cv-02272, in the same district.
Case Timeline
| Date | Event |
|---|---|
| 2011-06-17 | Complaint Filing Date |
II. Substantive Allegations
The complaint alleges a violation 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, 2). The action is brought as a qui tam proceeding, which allows a private person to sue for a penalty on behalf of the government (Compl. ¶ 1).
The core of the allegation is that Defendant Alcon marked, affixed, or used in advertising certain U.S. Patent Numbers on its "Accused Alcon Products," even though the patents are either expired or do not cover the products on which they are marked (Compl. ¶¶ 2, 11). The specific products and patent numbers are listed in an "Exhibit A" which is referenced by but not attached to the complaint document (Compl. ¶ 2). No probative visual evidence provided in complaint.
The complaint alleges that Alcon acted with an "intent to deceive competitors and the public" to gain a competitive advantage (Compl. ¶ 2, 16). The basis for this alleged intent includes assertions that Alcon is a "large, sophisticated company" with "decades of experience applying for, obtaining, licensing, and litigating patents" and therefore "knows or reasonably should know" that the markings are false (Compl. ¶¶ 12, 13, 14).
The relief sought is a civil monetary fine of up to $500 per "offense," with one-half to be paid to the United States and the other half to the plaintiff, as provided by the statute at the time of filing (Compl. ¶ 3; Prayer for Relief ¶ (b)).
III. Analyst’s Conclusion: Key Questions for the Case
As this is a false marking case and not a patent infringement case, the central issues will not turn on claim construction or technical infringement. Instead, the case will likely focus on three key questions:
- A primary evidentiary question will be one of proof of marking: Can the Plaintiff establish, for each "offense" alleged, that a specific unpatented product was marked with a specific expired or non-covering patent number, as would have been detailed in the missing Exhibit A?
- A central legal issue will be the standard for intent: What evidence, beyond the allegation of Defendant's general sophistication in patent matters, will be required to prove the statutory requirement of a "purpose of deceiving the public"?
- A critical question for damages will be the definition of an "offense": How will the court define a "falsely marked article" for the purpose of calculating penalties under 35 U.S.C. § 292—is each individually marked consumer product an offense, or is an "offense" defined on a per-decision, per-product-line, or other basis?