DCT
5:11-cv-00045
GHJ Holdings LLC v. CR Bard Inc
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: GHJ Holdings, LLC (Relator) (Texas)
- Defendant: C.R. Bard, Inc. (New Jersey)
- Plaintiff’s Counsel: Garteiser Law Group
- Case Identification: 5:11-cv-00045, E.D. Tex., 05/31/2011
- Venue Allegations: Venue is alleged to be proper based on Defendant's continuous and systematic business contacts, including the sale of the accused products within the Eastern District of Texas.
- Core Dispute: Relator, in a qui tam action on behalf of the United States, alleges that Defendant violated 35 U.S.C. § 292 by marking its medical products with numerous expired or inapplicable patents for the purpose of deceiving the public.
- Technical Context: The dispute centers on disposable medical products, specifically fluid drainage bags, which are often marked with patent numbers to provide notice to competitors.
- Key Procedural History: The provided document is an Amended Complaint. The complaint notes that Defendant is a sophisticated patentee, holding over 500 patents and having been a party to 35 prior patent-related lawsuits, which may be relevant to the element of deceptive intent.
Case Timeline
| Date | Event |
|---|---|
| 1982-11-09 | U.S. Patent No. 4,540,156 Priority Date |
| 1985-09-10 | U.S. Patent No. 4,540,156 Issued |
| 2003-10-05 | U.S. Patent No. 4,540,156 Alleged to have Expired |
| 2011-05-31 | Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 4,540,156, "Fluid flow control valve," issued September 10, 1985.
- The Invention Explained:
- Problem Addressed: The patent addresses the need for a cheap, disposable, and easy-to-manufacture fluid flow control valve for use with body fluid storage containers, such as urine drainage bags. The design sought to be free from sharp projections when closed, while also providing a clear tactile and visual indication to the user when the valve was left open (Compl. ¶10; ’156 Patent, col. 1:4-48).
- The Patented Solution: The invention is a two-part valve comprising a valve body and a unitary, manually operable valve member. The member rotates within the body between a closed position, where it lies flat, and an open position, where its "limbs stand proud of the fluid flow path" to remind a user that the valve is open. The components are designed for a simple "snap-fit" assembly, making them suitable for low-cost, high-volume manufacturing ('156 Patent, col. 1:49-65, col. 3:50-60).
- Technical Importance: The design aimed to improve user experience and safety for disposable medical devices by creating a valve that was both inexpensive to produce and provided a clear physical indication of its status (open or closed) to prevent accidental leakage ('156 Patent, col. 2:31-48).
- Key Claims at a Glance:
- The complaint does not assert specific claims for infringement. Instead, it alleges that the entire ’156 Patent, along with numerous others, is expired and therefore cannot cover any currently sold product (Compl. ¶¶ 8, 10). The central issue is the patent's expiration, not the scope of its claims.
III. The Accused Instrumentality
- Product Identification: The complaint identifies Defendant’s Dispoz-a-Bag® Catalog Nos. 150419 and 150432, as well as other products listed in an Exhibit A, as the "Falsely Marked Products" (Compl. ¶ 8).
- Functionality and Market Context: The complaint describes the products as medical devices, specifically fluid drainage bags, that are marked with expired or inapplicable patent numbers on their packaging (Compl. ¶¶ 8, 11). The complaint alleges this marking creates a misleading impression of technological superiority and market control, potentially deterring competition from products that are, in fact, in the public domain (Compl. ¶¶ 25, 27).
IV. Analysis of False Marking Allegations
The complaint does not allege patent infringement but rather false marking in violation of 35 U.S.C. § 292. The core of the claim is that Defendant marked its products with patent numbers that it knew were no longer valid, with an intent to deceive the public.
The complaint provides U.S. Patent No. 4,540,156 as a specific example of this practice. It alleges the patent was filed on October 5, 1983, and issued on September 10, 1985, leading to an expiration date "no later than October 5, 2003" (Compl. ¶ 10). The central factual allegation is that Defendant continued to mark its products with the ’156 Patent number well after this expiration date (Compl. ¶ 10).
The complaint extends this allegation to a long list of other "Expired Patents," claiming this constitutes a pattern of false marking (Compl. ¶ 8). The legal theory is that such marking injures the public and stifles competition by creating the false impression that the products are protected by a patent monopoly, thereby deterring others from making or selling similar items (Compl. ¶¶ 24, 29-30).
No probative visual evidence provided in complaint.
- Identified Points of Contention:
- Factual Question: The primary factual question will be whether Defendant did, in fact, affix the expired patent numbers to the specified products after the patents' expiration dates.
- Legal Question: The central legal dispute will concern the statutory requirement of "intent to deceive the public." The court would need to determine whether the continued marking was a mere oversight or mistake, or if it was done with the specific purpose of misleading competitors or consumers. The complaint attempts to pre-empt a defense of oversight by pleading facts suggesting Defendant's sophistication in patent matters (Compl. ¶ 13).
V. Allegations of Deceptive Intent
The complaint alleges that Defendant acted with the requisite "intent to deceive the public" for several reasons:
- Sophistication: Defendant is alleged to be a sophisticated entity with extensive experience in patent prosecution and litigation, being the assignee of 502 patents and a party to 35 prior patent lawsuits. The complaint suggests such a party would, or should, be aware of the expiration dates of its own patents (Compl. ¶ 13).
- Knowledge: The complaint makes direct allegations that "Defendant knew that the patents were expired or otherwise inapplicable" and "knew that it was a false statement" to mark its products with them (Compl. ¶¶ 12, 16).
- Inaction: It is alleged that Defendant "could have easily remarked its products to not include expired patent numbers, but decided not to," framing the continued marking as a deliberate choice rather than an administrative burden (Compl. ¶ 11).
VI. Analyst’s Conclusion: Key Questions for the Case
This case will not turn on claim construction or technical infringement analysis, but on the elements of the false marking statute. The key questions for the court are:
- A question of fact: Did Defendant continue to mark its products with the identified patent numbers after those patents had expired?
- The central question of intent: Assuming the products were marked with expired patent numbers, can the Relator prove by a preponderance of the evidence that Defendant did so with an "intent to deceive the public"? The outcome will likely depend on evidence concerning Defendant’s internal processes for managing patent markings and whether its conduct, in light of its alleged sophistication, supports an inference of deceptive intent rather than mere negligence.