What Patent Reform Means for Retailers: 4 Key Provisions of the America Invent Act

With the imminent enactment of the America Invents Act (AIA) into law, the patent experts are examining the legislation and helping us understand how it will impact the patent community at large.  R. David Donoghue, Partner at Holland & Knight and Practice Center Contributor, recently posted on his Retail Patent Litigation blog an article discussing how the bill will impact retailers and their supply chains.  He highlights four key provisions of the America Invents Act for retailers:

  1. Smaller Patent Troll Suits: The most immediate impact on most retailers will be Section 19, limiting joinder in a single suit of unrelated parties. This is not the more extreme restrictions on venue or joinder that many had hoped for. But it will have some positive impact on patent troll litigation. For suits filed on or after the date of enactment, plaintiffs will only be able to join related parties in a single suit — for example, multiple manufacturers, distributors or resellers of an identical product. And while cases against unrelated parties could still be joined for discovery, they will not be able to be joined for trial. At first glance, this is not much of a barrier to entry for patent trolls. Very few defendants get to trial, and cases may still be consolidated for discovery purposes at the court’s discretion. Where a troll today could pay one $300 filing fee and sue 100 unrelated defendants, after enactment that same troll would have to file 100 suits and pay $30,000 in filing fees. $30,000, however, is dwarfed by the settlement demands in many cases. The hassle of filing the extra suits and the related filing fees, however, may be enough to prevent suits against some of the much smaller entities that almost always end up in these suits. And the requirement of separate suits will allow defendants a much greater ability to seek transfer to an appropriate venue. So, while this is not the sea change that many sought, it is a real benefit to retailers who are tired of being sued in Texas and want a better shot at transferring cases. This Section only applies to cases filed after enactment, not pending cases. So, existing cases will not be impacted. (more…)

Recent Developments and Potential Changes in the Litigation of False Marking Claims Under 35 U.S.C. § 292

 Our friends at Fenwick & West sent in this alert discussing the recent developments in False Marking law and what the impact of these changes may be on the body of law. 

 A number of notable developments in Patent False Marking law over the last month indicate that courts and legislators continue to focus on clarifying the reach of the law. Suits brought under U.S.C. Section 292, the False Marking Statute, provide penalties against any person that marks an “unpatented article” with any word or number indicating that the article is patented with the intent to deceive the public. This provision permits enforcement via qui tam actions, whereby any person, not merely one who has been harmed, may sue on the behalf of the government and claim half of the award. 

False marking suits became more attractive after the Federal Circuit’s December 2009 decision in Forest Group Inc. v. Bon Tool Co., 590 F.3d 1295 (Fed. Cir. 2009), which held that penalties in false marking actions must be imposed on a per article basis. The statute provides that such penalties amount to “not more than $500 for every such offense,” so the new rule had the potential to lead to hefty fines for mass-produced articles. It has been estimated that over 800 false marking cases have been filed since December 2009. (more…)

Federal Circuit Adopts Heightened Pleading Standard in False Marking Cases

It’s likely that there were many patentees doing  a victory dance yesterday when the Federal Circuit  imposed a stricter pleading requirement in false marking cases.  In the In re BP Lubricants USA decision, the Court held that plaintiff’s must now plead with particularity the specific facts underlying the false marking allegations.  Foley & Lardner Partner and Practice Center Contributor Jeanne Gills sent in this alert which discusses the decision and what effect it may have on both pending and future false marking cases.

On March 15, 2011, the Federal Circuit held that “Rule 9(b)’s particularity requirement applies to false marking claims and that a complaint alleging false marking is insufficient when it only asserts conclusory allegations that a defendant is a ‘sophisticated company’ and ‘knew or should have known’ that the patent expired.” In re BP Lubricants USA Inc., No. 2010-M960, at *1 (Fed. Cir. Mar. 15, 2011). In granting BP Lubricants’ mandamus petition (in part), the Court agreed that this case “warrant[ed] the extraordinary remedy of mandamus” since the Court had not previously decided “whether Rule 9(b) applied” or “discussed the requisite level of pleading required.” Id. at *11. The Court directed the district court to dismiss the relator’s complaint with leave to amend in accordance with 9(b)’s pleading requirements. Id. This decision may lead to the dismissal of similarly pled complaints filed by other qui tam plaintiffs. (more…)

False Marking Statute Ruled Unconstitutional by Ohio District Court

Mayer Brown’s Partner James R. Ferguson passed along this article he wrote with colleagues Richard M. Assmus and Emily C. Melvin on the recent Unique Product Solutions v. Hy-Grade Value decision wherein Judge Polster of the U.S. District Court for the Northern District of Ohio struck down the false marking statute as violating the “Take Care” Clause of Article II of the U.S. Constitution. The article discusses how the decision could affect the numerous false patent marking cases pending in district courts throughout the country.

The Northern District of Ohio has become the first court to strike down the qui tam provision of 35 U.S.C. § 292. Employing the “Take Care” clause of the Constitution, Judge Dan Aaron Polster ruled on February 23, 2011, that the false marking statute lacks the statutory controls necessary to pass constitutional muster. Unique Product Solutions, Ltd. v. Hy-Grade Valve, Inc., Case. No. 5:10-cv-1912 (N.D. Ohio, Feb. 23, 2011). (more…)

Hoffman & Baron: The Current State of Patent Law

During late 2009 – 2010, we saw a significant number of remarkable decisions from the Supreme Court and the Federal Circuit that impacted the patent community.  From Bilski v. Kappos, to Forest Group v. Bon Tool, to Wyeth v. Kappos, to Ariad Pharmaceuticals v. Eli Lilly, just to name a few.  The following article discussing these decisions was written by Robert Neuner, Partner with Hoffman & Baron and presenter at PLI’s upcoming 5th Annual Patent Law Institute.  Here is an excerpt and a link to the article.

This paper discusses a range of cases decided in late 2009 and 2010 that reflect the current state of the law on issues with which each of us should have at least some familiarity.  Having decided Bilski, the Supreme Court has one again exercised its oversight over the Federal Circuit.  It will review three Federal Circuit decisions concerning the Bayh-Dole Act and the proofs necessary to establish (a) inducement of infringement and (b) patent invalidity.  There is also the blockbuster Myriad case now wending its way to a decision by the Federal Circuit. (more…)