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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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Federal Circuit Summarily Affirms District Court Decision Dismissing False Marking Case

Public Patent Foundation, Inc. v. McNeil-PPC, Inc.(Fed. Cir. May 3, 2013) (nonprecedential)

In this case, the Federal Circuit issued an order summarily affirming a district court's decision dismissing a qui tam false marking case pursuant to the retroactive changes to the false marking provisions enacted by the America Invents Act ("AIA").

Initially, the Appellant petitioned the Federal Circuit to hear the appeal en banc in the first instance, or, in the alternative, for summary affirmance due to the Court's nonprecedential decision in Rogers v. Tristar Products.  That decision held that the AIA's retroactive application of changes to the false marking statute does not violate either the Takings Clause or the Due Process Clause of the Fifth Amendment.  Appellant also asked the Federal Circuit to make the Rogers decision precedential under Federal Circuit Rule 32.1(e).  Last year, the Court denied Appellant's requests.

Late last year in Brooks v. Dunlop Manfacturing Inc., the Federal Circuit held in a precedential decision that the retroactive application of the false marking provisions in the AIA did not violate the Due Process Clause or the Intellectual Property Clause of the Constitution.  Soon after that decision, Appellant again petitioned the Court to summarily affirm the district court under the Brooks decision.  Appellee agreed that Brooks was controlling, but pointed out that Appellant has made an argument that Rogers and Brooks are distinguishable from its case as its case was filed prior to the Federal Circuit's Forest Group decision and Congress's intent in passing the retroactive false marking provisions of the AIA was due, at least in part, to the growing number of false marking cases filed after Forest Group.

The Federal Circuit ordered that the district court's judgment is summarily affirmed.