Enacted into law September 16, 2011, the America Invents Act
("AIA"), makes dramatic changes to many substantive areas
of U.S. patent law. Five important provisions became effective upon
enactment, and five more will take effect September 16, 2012. The
federal courts have started to issue decisions based on the AIA,
and the U.S. Patent and Trademark Office ("USPTO") is
busy promulgating rules to implement new AIA procedures. Here is a
brief update:
False patent marking. "False marking"
refers to the marking of a product as being protected by a patent
when in fact, it is not. The AIA makes it considerably more
difficult for a party to benefit from bringing a lawsuit for false
patent marking, since the AIA requires that claimants show that the
false marking caused a competitive injury. The AIA also prohibits
claims for false marking based solely on marking with an expired
patent. Since September 16, several courts have rejected false
marking claims because of the claimants' failures to show a
direct competitive injury. See, e.g., Fisher-Price, Inc. v.
Kids II, Inc., No. 10-cv-00988 A(F), 2011 WL 6409665 (W.D.N.Y.
Dec. 21, 2011); Advanced Cartridge Techs., LLC v. Lexmark
Int'l, Inc., No. 8:10-cv-486-T-23TGW, 2011 WL 6719725
(M.D. Fla. Dec. 21, 2011).
One court acknowledged that the claimant had demonstrated
competitive injury, but dismissed the false marking claim to the
extent it depended on false marking with an expired patent number.
Fasteners for Retail, Inc. v. Andersen, No. 11 C 2164,
2011 WL 5130445 (N.D. Ill. Oct. 28, 2011). Another court has ruled
that enactment of the AIA does not preclude claimants from
continuing to assert that false patent marking violates state
consumer protection laws, such as state laws of false advertising
and unfair competition. Sukumar v. Nautilus, Inc., No.
7:11-cv-00218, 2011 WL 6325854 (W.D. Va. Dec. 19, 2011). A
challenge to the constitutionality of the new false marking
provision has been rejected. Seirus Innovative Accessories,
Inc. v. Cabela's Inc., No. 09-cv-102 H(WMC), 2011 WL
6400630 (S.D. Cal. Oct. 19, 2011).
Multiple-defendant lawsuits. In response to a
series of lawsuits, each naming large numbers of multiple
defendants, the AIA imposed a new requirement that, in order to
name multiple defendants, a plaintiff must show not only that the
defendants infringed the same patent, but additionally, that the
defendants were involved in some common infringing conduct. In a
multiple-defendant lawsuit brought in Illinois, the court cited the
AIA in support of its decision to grant a motion to sever the
claims against one of the defendants and transfer them to Maine.
Pinpoint Inc. v. Groupon, Inc., No. 11 C 5597, 2011 WL
6097738 (N.D. Ill. Dec. 5, 2011).
Enhanced ability of third parties to cite prior
art. Meanwhile, on January 5, 2012, the USPTO gave notice
of its proposed rules to implement the third-party prior art
submission provision of the AIA. This provision provides an
enhanced mechanism for competitors and other third parties to
submit prior art to the USPTO against any pending U.S. patent
application. Under this provision, to become effective September
16, 2012, third parties will have the right to argue the relevance
of each prior art document to the U.S. examiner in charge of
reviewing the application. The proposed rules appear in the
Federal Register, Vol. 77, No. 3, at page 448 (www.uspto.gov/aia_implementation/77fr448.pdf),
and public comments can be submitted on or before March
5, 2012.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.