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Justin E. Gray

IP Litigation Attorney at Foley & Lardner LLP

Former Adjunct Professor at Northwestern University School of Law

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Second District Court Rejects Constitutional Challenges to False Marking Provisions of America Invents Act

Brooks v. Dunlop Manufacturing Inc. (N.D. Cal. Dec. 9, 2011)

Since the passage of the America Invents Act, a number of entities with pending false marking claims have challenged the constitutionality of the AIA with respect to its false marking provisions, specifically asserting that the retroactive application of the false marking amendments in the AIA violate Due Process and the amendments operate as an unconstitutional taking of property by the government.

As previously reported by this blog, at least one district court has rejected these constitutional challenges.  Now, a second district court has found that "Congress, by eliminating the qui tamprovision in 292, rationally furthered a legitimate legislative purpose by comprehensively reducing the costs and inefficiencies associated with the 'cottage industry' of false marking litigation" and the Takings Clause protects only vested property rights which the Ninth Circuit "ha[s] squarely held that although a cause of action is a species of property, a party's property right in any cause of action does not vest until a final unreviewable judgment is obtained ... [plaintiff] has not obtained any judgment in his favor, let alone a 'final unreviewable judgment,' and thus has no vested property interest in his cause of action."

A PDF copy of this decision can be found here.

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