O’Neill Sues Roche Diagnostics for False Patent Marking


Indianapolis, Indiana – In a case which was originally brought in federal court in Chicago, patent lawyers for David O’Neill of Clarendon Hills, IL, have filed a lawsuit alleging that Roche Diagnostics Corporation of Indianapolis has been falsely, and intentionally, marking certain of its ACCU-CHEK(R) blood glucose monitoring products as protected by the following expired patents, all of which were issued by the U.S. Patent Office: Patent No. 4,891,319, titled PROTECTION OF PROTEINS AND THE LIKE; Patent No. 4,924,879, titled BLOOD LANCET DEVICE; and Patent No. 4,999,582, titled BIOSENSOR ELECTRODE EXCITATION CIRCUIT.

This type of case, in which an individual acts as a “private attorney general” and brings a lawsuit in the name of the government, is formally called a qui tam action. In his complaint, the plaintiff here makes the customary request that monetary damages be awarded in an amount up to $500 for each offense, with one-half going to the United States government and the other going to him as the party bringing this action.

This case has been assigned to Judge Tanya Walton Pratt and Magistrate Judge Tim A. Baker in the Southern District of Indiana, and assigned case no. 1:10-cv-00964-TWP-TAB.

Practice Tip: Following a court ruling that a separate penalty is due for each falsely marked article sold, there has been a considerable increase in the filing of these “false marking” lawsuits, and there is precedent establishing that any individual has standing to sue. However, the heightened pleading standards for fraud apply to the intent-to-deceive requirement and require that a complaint create a reasonable inference that the defendant acted with the necessary ill intent.Complaint – O’Neill v. Roche

Further information about the case is as follows:

Filed: July 29, 2010 as 1:2010cv00964 Updated: July 30, 2010 01:43:22

Plaintiff: DAVID O’NEILL


Presiding Judge:Tanya Walton Pratt

Referring Judge:Tim A. Baker

Cause Of Action: Patent Infringement


Seventh Circuit > Indiana > Southern District Court

Type:Intellectual Property > Patent

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