by: Robert Wagner, intellectual property attorney at Picadio Sneath Miller & Norton, P.C. (Robert Wagner on G+)
When President Obama signed the Leahy-Smith America Invents Act, H.R. 1249, 112th Cong. (1st Sess. 2011), the patent false marking claims that had become so popular were essentially eliminated. Whereas before anyone could bring such a claim, regardless of whether they had actually suffered any injury, now only those who have “suffered a competitive injury” as a result of a violation of the marking statute have standing to sue. (See 35 U.S.C. § 292). The America Invents Act not only prohibits persons who have not suffered a competitive injury from suing in the future, it also divests the standing of plaintiffs in pending false marking cases from continuing to pursue those claims.
In Rogers v. Tristar Products, Inc., 2011-1494, -1495, the Federal Circuit had to decide if that divestment included cases on appeal, as well as cases current pending in district courts. After considering the clear language in the newly amended 35 U.S.C. § 292—“The amendments made by this subsection shall apply to all cases, without exception, that are pending on, or commenced on or after, the date of the enactment of this Act”—the Federal Circuit determined that all cases must be dismissed, regardless of where they were pending or what procedural posture they may be in, unless the plaintiff could demonstrate that it had suffered a competitive injury.
The Federal Circuit rejected plaintiff’s assertion that he had a property right in maintaining such a claim or that the retroactive elimination of his claim violated the Due Process Clause. The Court found that Congress had a legitimate justification for eliminating these types of claims and rationally made the requirements retroactive.
The America Invents Act has effectively eliminated the nascent cottage industry of individuals suing companies for leaving expired patent numbers on its products. Companies no longer need to fear that they will be sued in such circumstances by individuals who likely have never used the products in question. Despite this, companies still need to be concerned about monitoring their products to make sure that they are appropriately marked. In the high stakes of patent litigation, defendants are still likely to look at whether they can bring false marking counterclaims if they are sued. As a competitor, it will be far easier (although by no means certain) to establish a competitive injury.
Well I do not believe that the argument was very well briefed. Firstly, Graham v. Deere makes clear that when Congress operates under Art. I, sec. 8, cl. 8 a more exactly scrutiny of the act must be undertaken, i.e., there is no minimal scrutiny. Moreover, by retroactively vitiating the standing of informer’s Congress has effectively stated that even if a finding of deception occurred, but before judgement, such deception is acceptable. Moreover, considering that only the first informer could bring an action, Congress would be barred from bringing an action against a false marking defendant on the same theory. In short, the amendments made to former 35 U.S.C. section 292 operate to indemnify past acts of deception. Absent a compelling interest, e.g., national security, there is no legitimate government interest in allowing Congress to deceive the public or allowing a third party to deceive the public. This is the real problem with amendments made by the AIA. You basically have a government that says its ok to lie to the public and we will indemnify those that have done so. This is criminal in nature-the amendments by the AIA, that is.