In the ongoing saga against the Patent Act’s False Marking Statute, Judge Dan Aaron Polster of the Northern District of Ohio has ruled the law unconstitutional as violating the Take Care Clause of the Constitution. Unique Product Solutions, Ltd. v. Hy-Grade Valve, Inc. The arguments in a similar case were previously reported.
In Hy-Grade, unlike in the GSK case reported earlier, the court noted that it had provided a great deal of notice and opportunity for the Justice Department to intervene and to file a brief regarding the statute’s constitutionality. Despite indicating an intent to defend the statute and intervene in the case, the Justice Department did not do so.
The court also noted that the Federal Circuit has yet to decide this question, but does have a pending case where the constitutionality of the False Marking Statute is now before it. United States ex rel. FLFMC, LLC v. Wham-O, Inc., No. 2011-1067.
The court in Hy-Grade stated that application by the Sixth Circuit of an earlier Supreme Court decision requires that for such actions to be constitutional, the government must be given notice and the opportunity to control the action such as by intervening and even dismissing the case.
Although the Hy-Grade court claimed that it did not matter whether the False Marking Statute is deemed to be civil or criminal in nature, it seemed to rely on the Federal Circuit statement in Pequignot that the statute is a criminal one. Criminal statutes are enforced by prosecutors who are supposed to be objective rather than by individuals who would experience a pecuniary benefit on the outcome of the case. The doctrine of prosecutorial discretion permits government prosecutors to dismiss or settle cases through plea bargains. No such similar provision exists in the False Marking Statute.
This case and similar ones will undoubtedly end up being decided by the Federal Circuit. While most people believe that this statute is not well written and is subject to abuse, this does not make it unconstitutional. It is the purview of Congress to fix bad statutes, not the courts.
Thanks to Gray on Claims for keeping track of the large number of false marking cases being filed and decided.