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Justin E. Gray

Partner at Eversheds Sutherland (US) LLP

Former Adjunct Professor at Northwestern University School of Law

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District Court Rejects Constitutional Challenge to New False Marking Statute

Serius Innovative Accessories, Inc. v. Cabela's Inc. (S.D. Cal. Oct. 19, 2011)

In this case, the district court rejected a challenge to the constitutionality of the amended False Marking Act, 35 U.S.C. § 292, on grounds of violating both the Due Process and the Takings Clauses of the U.S. Constitution.

The district court found that "Congress enacted AIA [the America Invents Act] for a legitimate purpose, and Congress clearly intended for AIA to apply retroactively", thereby finding that the false marking provisions of the AIA did not violate Due Process.

The district court went on to explain that "a successful Takings Clause argument involves a taking of 'vested property rights' 'for public use'" and "[t]here is no showing of a public use associated with [defendant's] assertion that AIA destroyed its false marking claim, or that [defendant] would prevail on its false marking claim."  The court then denied the defendant's Takings Clause challenge to the false marking provisions of the AIA.

Gray on Claims, in conjunction with Docket Navigator®, is providing a false marking chart that is updated periodically with new false marking cases as well as status updates on pending cases.  A downloadable PDF chart is available on this page as well including information on the specific patents and products at issue in each litigation.  Gray on Claims is also providing information on false marking settlements.  Other writings on false marking can be found here