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On Jan. 7, Rep. Robert E. Latta (R-Ohio) introduced H.R. 243, a bill to modify the false patent marking statute that would effectively preclude pending and future qui tam complaints and set the penalty at $500 per decision, rather than for falsely marked item.
The Patent Lawsuit Reform Act of 2011 is identical to another bill, H.R. 6352, that Latta sponsored last year (80 PTCJ 776, 10/15/10). Reps. Lynn Jenkins (R-Kan.) and Michael R. Turner (R-Ohio) are listed as co-sponsors.
The bill was referred to the House Judiciary Committee.
The impetus for Latta's desired change was the 2009 decision by the U.S. Court of Appeals for the Federal Circuit in Forest Group Inc. v. Bon Tool Co., 590 F.3d 1295, 93 USPQ2d 1097 (Fed. Cir. 2009) (79 PTCJ 247, 1/8/10).
In Forest Group, the appellate court overturned penalty jurisprudence applicable since 1910 by concluding that the 1952 Patent Act's amendment to Section 292 required a per article fine for falsely marked items.
According to reports, about 600 hundred qui tam complaints of false marking have been filed in the district courts since that decision. The qui tam provision in Section 292 allows any person to bring a false patent marking lawsuit on behalf of the U.S. government and, if successful, receive half the fine against the false marker.
In the prior Congress, another bill on the topic, H.R. 4954, was introduced by Rep. Darrell Issa (R-Calif.) (79 PTCJ 665, 4/2/10). It would have amended Section 292(b) of the Patent Act, 35 U.S.C. §292(b), to allow standing in false patent marking lawsuits only if the plaintiff “has suffered a competitive injury. ” That bill matched the approach taken by the U.S. Senate in the context of its more comprehensive patent reform bill, the Managers' Amendment to S. 515.
As was the case in 2010, Latta's bill includes comparable provisions as well, then adds the $500 penalty for false patent marking as a per decision fee, rather than a per falsely marked product fee.
If implemented, H.R. 243 would “apply to any case pending on the date of the enactment of this Act, and to any case commenced on or after such date of enactment.” Recently filed qui tam lawsuits that have not settled or have yet to make significant progress toward a resolution are thus likely to be eliminated under the bill.
By Tony Dutra
H.R. 243 at http://pub.bna.com/ptcj/HR243Latta.pdf
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