One of the most immediate effects of the recently enacted Leahy-Smith America Invents Act is the dismissal of pending false patent marking cases. False patent marking had become the claim du jour. The AIA contains provisions, however, that place significant limitations on a plaintiff’s ability to bring a claim of false patent marking.
For example, Section 16 of the AIA eliminates the ability for non-governmental plaintiffs to sue for statutory damages for false patent marking. The government is now the only entity that may sue for statutory damages. Non-governmental entities and individuals may still bring a suit for false patent marking, but now under Section 16, a plaintiff must show that, as a result of defendant’s false marking, it has suffered a “competitive injury.” Further, under the AIA, marking a product with a patent that covered the product, but has expired, is not a violation of the false marking statute.
These changes apply to claims brought on or after the date of the enactment of the AIA and also to cases pending on the date of enactment. Courts have already begun to clear their dockets of these cases by, in some instances, dismissing cases sua sponte. See, e.g., Kilts Resources LLC v. Uniden Direct in USA, Inc. (E.D. Tex. Sept. 19, 2011), Case No. 2:10-cv-00428 TJW (September 20, 2011 E.D. Tex) (Judge T. John Ward sua sponte dismissing case based on plaintiff’s failure to plead “competitive damages,” as now required under the statute).