Congress’s retroactive elimination of the qui tam provision from § 292 does not violate the Due Process Clause or the Intellectual Property Clause of the Constitution. For all intents and purposes, false marking suits on behalf of otherwise disinterested third parties (i.e., non-competitors) are dead.
Background / Facts: Section 292(a) makes it unlawful for any person to engage in specified acts of false patent marking, such as affixing to a product a mark that falsely asserts that the item is patented, with the intent to deceive the public. Prior to 2011, 35 U.S.C. § 292(b) authorized private parties (relators) to bring a qui tam or informer’s suit for violations of § 292(a): “[a]ny person may sue for the penalty, in which event one-half shall go to the person suing and the other to the use of the United States.” However, the AIA has eliminated the qui tam provision of § 292(b) and provided that “[o]nly the United States” or a person “who has suffered a competitive injury as a result of a violation [of § 292(a)]” may sue for the false marking penalty. Moreover, the AIA expressly provides for retroactive effect in that “[t]hese amendments … shall apply to all cases, without exception, that are pending on, or commenced on or after, the date of the enactment of this Act.” The present action is one such suit retroactively affected, having been filed under the previously prevailing version of § 292 and alleging that Dunlop marked a guitar string winder with the number of a patent that was both expired and invalidated.
Issue(s): Whether Congress’s retroactive application of the AIA’s amendments to § 292 to pending qui tam actions is constitutional.
Holding(s): Yes. “Provided that the retroactive application of a statute is supported by a legitimate legislative purpose furthered by rational means, judgments about the wisdom of such legislation remain within the exclusive province of the legislative and executive branches.” This “burden is met simply by showing that the retroactive application of the legislation is itself justified by a rational legislative purpose.” Here, by making the elimination of the qui tam provision of § 292(b) retroactive, Congress “was in significant part attempting to reduce the litigation expenditures in the large number of complaints filed, but not yet subject to a final judgment.” Further, “it was rational for Congress to pass legislation eliminating a potential constitutional issue and sparing the courts, private parties, and the United States the litigation burdens and risks associated with such issues.” Congress’s retroactive elimination of the qui tam provision of § 292(b) was accordingly a rational means of pursuing a legitimate legislative purpose.