In dismissing plaintiff's false marking action, the court agreed with Unique Prod. Solutions, Ltd. v. Hy-GradeValve, Inc., ___F. Supp. 2d __, (N.D. Ohio Feb. 23, 2011) and concluded that the qui tam provisions of the false marking statute violate the Take Care clause of the U.S. Constitution. "[T]he fact that notice of all pending patent cases is provided to the PTO within one month of filing . . . does not constitute sufficient notice to the Executive Branch. This notice is not expedient enough to provide the United States with sufficient time to protect its interests, and is not directed to the Department of Justice -- the agency responsible for representing the United States’ interests in a false marking suit. . . . While the United States could prevent a section 292(b) relator from voluntarily dismissing the case upon intervention, this requires the Court to order intervention on the United States’ motion in the first instance. Although the Federal Circuit has reversed a district court for refusing to permit intervention in a false marking suit under Rule 24(a)(2), it is not clear to the Court that intervention will or must be ordered in any given case. Moreover . . . a section 292(b) relator could voluntarily dismiss a case before the United States even has the opportunity to seek intervention at all. Thus, despite the external protections available, the United States is not able to effectively exercise even a basic degree of control over a section 292(b) relator’s case."
Rogers v. TriStar Products Inc., 5-11-cv-01111 (PAED June 2, 2011, Order) (Robreno, J.)