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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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Eastern District of Texas Dismisses False Marking Case Sua Sponte in Light of America Invents Act

Kilts Resources LLC v. Uniden Direct in USA, Inc. (E.D. Tex. Sept. 19, 2011)

In this case, Judge Ward in the Eastern District of Texas dismissed sua sponte a false marking case without prejudice in light of the America Invents Act.  The court stated:  "The statute notes that the amendments made shall apply to all cases that are pending on or commenced on or after the Act's date of enactment, which was September 16, 2011.  The Court has reviewed Plaintiff's complaint in light of the new amendments to the law.  In accordance, the Court holds that Plaintiff's complaint is DISMISSED for failure to state a claim under Federal Rule of Civil Procedure 12(b)(6).  This dismissal is without prejudice for Plaintiff to re-file its complaint in the event Plaintiff can prove it has suffered a 'competitive injury' and it can satisfy the other requirements under the statute."

A copy of the court's order can be found here.

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.