(Sunday, September 25, 2011 – Marshall, TX) Judge Ward is in the process of retiring, but before doing so, he expedited resolution of Title 35 U.S.C. Section 292 false marking cases by dismissing several of these cases without prejudice due to the recent enactment of the America Invents Act. By doing so, Judge Ward appears to advocate that the new legislation has taken away the standing of certain qui tam plaintiff who have not pled a commercial injury. The qui tam plaintiffs, known as relators, had standing initially under the prior version of the statute. The relators relied on the previous version of section 292 to seek out violators of section 292 and bring them to justice. The new legislation only allows parties that have suffered a competitive injury or the government to proceed with with false patent marking cases. Accordingly, now relators that relied on the previous statute to their financial detriment have standing to seek recovery from the government for the retroactive taking away of a vested property right.
By dismissing the cases sua sponte however, Judge Ward appears to have neglected the fact relators should have a chance to challenge the retroactive effect of the statute itself. In other words, “as applied” the new AIA legislation appears to be a violation of the due process clause whereby a right to sue under 292 previously existed for “any person” but now the legislature has limited the right to only allow competitors of the alleged false marking defendant to bring a lawsuit or the government.
