False Marking Action Stayed Pending Legislative Action on America Invents Act

The court granted defendant's motion to stay plaintiff's qui tam false marking action "[i]n light of the possible passage of legislation." "On June 23, 2011, the House of Representatives passed H.R. 1249. The Senate passed its version of the legislation (S.23) on March 8, 2011. Both S.23 and H.R. 1249 amend the false marking statute. First, these bills permit only the United States standing to sue for the per article fine. Second, these bills permit only those who have suffered competitive injury as a result of false marking standing to sue for compensatory damages. One provision included in the House bill, but not the Senate legislation, is new subsection 292(c) which states that no civil or criminal liability will arise if one marks a product with an expired patent number, provided that the patent actually covered the product. This legislation would apply to all false marking cases pending on or after the date of enactment. In light of the possible passage of legislation, I grant Defendant’s motion to stay until further order of court."

Heathcote Holdings Corp., Inc. v. Suncast Corporation, 1-11-cv-01010 (ILND July 18, 2011, Order) (Zagel, J.)