Subscribe and Connect

Justin E. Gray

Partner at Eversheds Sutherland (US) LLP

Former Adjunct Professor at Northwestern University School of Law

Send questions, comments and suggestions to

« Federal Circuit Holds FLFMC v. Wham-O Oral Argument | Main | Federal Circuit Reverses District Court's Finding That Claim Terms Not Using "Means" Were Subject to § 112 ¶ 6 »

FLFMC v. Wham-O Appeal Set for July 7th Oral Argument at Federal Circuit

FLFMC, LLC v. Wham-O, Inc. (Fed. Cir. No. 2011-1067)

On Thursday, July 7th, the Federal Circuit will hold oral argument in the FLFMC v. Wham-O case concerning the constitutionality of the false marking statute, 35 U.S.C. § 292(b).  The Federal Circuit has agreed to allow the U.S. Government and the U.S. Chamber of Commerce to both participate in the oral argument.

Wham-O has asked the Federal Circuit to hold that the false marking statute is unconstitutional under both the Take Care Clause and the Appointments Clause of the Constitution.

Wham-O's brief raises the following four issues in its "Statement of the Issues":

  1. Whether a private litigant who has suffered no injury in fact has standing to assert a false marking claim under 35 U.S.C. § 292(b).
  2. Whether 35 U.S.C. § 292(b) violates Article II, section 3 of the Constitution (the President "shall take Care that the Laws be faithfully executed") by permitting any person to file, prosecute and terminate false marking cases on behalf of the government, but failing to require notice to the government of false marking cases, and failing to provide the government with any means of controlling their initiation, prosecution or termination.
  3. Whether 35 U.S.C. § 292(b) violates the Appointments Clause (Article II, section 2) of the Constitution by improperly vesting in a self-appointed relator the unbridled power to file and prosecute an unlimited number of false marking cases, failing to provide the government with any power to remove a relator from a false marking action, and failing to give the government any means of controlling the initiation, prosecution or termination of false marking actions prosecuted on the government’s behalf.
  4. Whether a false marking relator’s allegations that a manufacturer falsely marked a product with long-expired patents, coupled with an allegation that the patents-at-issue were among the assets the manufacturer purchased from a corporate predecessor after the patents’ expiration, are sufficient to meet the heightened pleading standards of Fed. R. Civ. P. 9(b) in a false marking action.

The following briefs have been filed in this appeal and are being made available here in PDF form:

  • Brief of Defendant-Appellee Wham-O, Inc. (PDF)
  • Response of Plaintiff-Appellant FLFMC, LLC to Brief of Defendant-Appellee Wham-O, Inc. (PDF)
  • Brief for the Intervenor United States (PDF)
  • Brief of Amicus CuriaeChamber of Commerce of the United States of America in SUpport of Defendant-Appellee and Affirmance (PDF)
  • Brief for the Cato Institute and Walter Olson as Amici Curiae in Support of Defendant-Appellee and Affirmance (PDF)

Gray on Claims, in conjunction with Docket Navigator®, is providing a false marking chart that is updated daily 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.