January 2013

Spotlight Info

In Brooks v. Dunlop Manufacturing Inc., No. 12-1164 (Fed. Cir. Dec. 13, 2012), the Federal Circuit affirmed the constitutionality of the retroactive elimination of the qui tam provisions of the federal false marking statute, 35 U.S.C. § 292, effectuated by the Leahy-Smith America Invents Act (“AIA”).  Historically, § 292 allowed any person to sue for false marking, splitting the penalty evenly with the United States.  The prevalence of false marking suits brought by private qui tam plaintiffs increased rapidly in 2009 after the Federal Circuit held that the penalty applied on a per article basis.  On September 16, 2011, § 292 was retroactively amended by the AIA to require persons bringing suit to show competitive injury, and in Brooks, the Federal Circuit affirmed the constitutionality of the retroactive provisions.  See this month’s edition of Last Month at the Federal Circuit for a full summary of the decision.