Wham-O! There Go ‘Patent False Marking’ Suits

It’s fun to be on the winning side of a fight, even if someone else gets to land the knockout punch. Yesterday the U.S. Court of Appeals for the Federal Circuit dismissed as moot the case of FLFMC, LLC, v. Wham-O, in which I and Cato’s Center for Constitutional Studies had entered an amicus brief on the side of toymaker defendant Wham-O. The Western District of Pennsylvania federal court had agreed with our position that the qui tam (bounty-hunter) provision of the false marking statute was unconstitutional; the Federal Circuit heard argument on the issue, but before it could rule the U.S. Congress resolved the controversy by wisely acting, as part of its patent reform bill, to do away with the whole cottage legal industry of bounty-hunting litigation over false patent marking.

For those who came in late, federal law had long provided that anyone could sue a manufacturer that wrongly claims patent protection for its product, and collect a minor award ($500) so as to help defray the cost of bringing the action. In a 2009 case, a federal court shocked the business world by ruling that the $500 bounty should be construed as per mismarked item sold – meaning that a company that had mismarked a million paper cups or mascara applicators might owe hundreds of millions of dollars. Entrepreneurial lawyers rushed to file more than a thousand lawsuits, most of them aimed at companies that had gone on selling products with a marking after a given patent had expired. (More background here, here, and generally here at my Overlawyered site.) The constitutional issue arose because the overall setup, like the unlamented “independent counsel” scheme, delegated to private attorneys too much of the government’s distinctive law enforcement authority, an authority that in this case is essentially criminal rather than civil in nature, given the Powerball penalties to be applied with no showing of harm to either consumers or competitors.

It would have been nice to get the Federal Circuit on record agreeing with this line of reasoning, which had persuaded a number of lower courts. But what happened instead was in its own way equally satisfying. Congress specified in its patent bill last month that wholly uninjured bystanders do not have standing to pursue false marking cases, and that expired markings, without more, are not “false.” It also explicitly applied these principles to pending cases, generally seen as a choice that is within its discretion to make in cases in which, as here, no one is suing over an privately vested property right.

Around the country, many a manufacturer can now heave a sigh of relief at not having to sign its future over to lawyers. And Cato can move on to more fights over classical liberal principle in its very successful amicus program, about which you can learn more here.

P.S. Almost forgot to thank the real heroes of the adventure, the ones who wrote and edited the Wham-O brief: Paul Wolfson and Pamela Bookman at Wilmer Hale, and Ilya Shapiro and Michael Wilt at Cato.