In denying an appellant’s motion for reconsideration, the U.S. Court of Appeals for the Federal Circuit found that the Leahy-Smith America Invents Act (AIA), which amended the false marking statute to retroactively eliminate the qui tam provision from the false marking statute, did not violate the  of Takings or Due Process Clauses of the United States Constitution. Rogers v. TriStar Prods., Inc., Case Nos. 11-1494; -1495 (Fed. Cir., May 2, 2012) (Bryson, J.; Schall, J.; Prost, J.) (per curiam).

Rogers had initially filed his complaint against TriStar, alleging that TriStar had violated the false marking statute by marking its juicing products with words or phrases claiming that its products were subject to patent protection, when in fact, they were not. The district court dismissed the suit, finding that the false marking statute violated the Take Care Clause of the Constitution because the statute failed to provide the executive branch with sufficient control over the suit. Rogers appealed to the Federal Circuit. While the appeal was pending, the president signed into law the AIA, thereby amending the false marking statute to retroactively eliminate the qui tam provision. Because Rogers conceded that he could not meet the new standing requirement, the Federal Circuit dismissed the appeal as moot. Rogers then filed a motion for reconsideration, challenging dismissal of his appeal on the grounds that the AIA’s amendment violated the Takings and Due Process Clauses.

The Federal Circuit first noted that in civil cases, no litigant is entitled to insist that a law that prevailed at the time the case began shall remain unchanged solely for his or her benefit. In addition, no “vested” right attaches to a suit merely because a complaint is filed. The fact that Rogers brought a qui tam action did not alter the Court’s position. Although the Supreme Court has described qui tam statutes as “effecting a partial assignment of the Government’s damages claim,” the “assignments” were revocable prior to final judgment. Accordingly, the Federal Circuit held that the AIA’s amendment did not violate the Takings Clause.

Regarding Rogers’ Due Process arguments, the Federal Circuit reasoned that Rogers failed to explain how Congress acted irrationally in retroactively eliminating the qui tam provision. The Federal Circuit found that Congress was attempting to rein in abuses in false marking actions by limiting such suits to only those parties who had actually suffered a competitive injury as a result of the false marking. That objective, the Federal Circuit noted, was a legitimate justification for making the AIA amendments retroactive. Accordingly, the Federal Circuit held that the AIA’s amendment did not violate the Due Process Clause.

Practice Note: Given this decision by the Federal Circuit, it now appears likely that the era of “false marking trolls” is finally over. (See IP Update, Vol. 14, No. 3; Vol. 13, No. 9; Vol. 13, No. 1). However, there may be at least one more part of the saga to pay out. Public Patent Foundation, Inc., in the appeal to the Federal Circuit of the dismissal of its false marking suit against McNeil-PPC (alleging marking using expired patents on Tylenol® packaging) has asked the Federal Circuit to take its appeal en banc; i.e., to attempt to avoid the controlling panel decision in Rogers.