Imagine if professional football games worked accordingly: The referee whistles the start of the game, but, given his limited perspective, he asks the closest fans to make the necessary penalty calls – holding, offsides, pass-interference, you name it. And not only do the fans make the calls, but the calls they make are not overseen by the referee, nor can they be overruled by the referee, no matter how biased the fan.
Seems a bit absurd doesn’t it?
But this is how some patent litigation operates under a part of the federal patent law known as the False Marking Statute. This statute allows individual citizens to bring claims against companies whose unpatented products are marked as patented or are “falsely” marked with a patent number (most often with an expired patent number). Like the fan making the calls at the football game, the qui tam litigant faces no restraints or oversight – he does not have to notify the DOJ; the case can be litigated without the government; the government cannot stay discovery; and the government cannot dismiss the action.
This unmonitored action flies in the face of the Constitution. According to the “Vesting and Take Care” clauses of Article II, the executive must “take care that the laws be faithfully executed.” Simply put, the government must reap what it sows – it cannot make the rules of the game and then abandon them, hoping that the fans implement them faithfully.
Washington Legal Foundation has questioned the constitutionality of the False Marking Statute on multiple occasions, most recently in this Legal Backgrounder by Adam H. Charnes and Chad D. Hansen of Kilpatrick Stockton LLP, and in this blog post on a false marking case against popular toy manufacturer Wham-O. These arguments have become especially critical as the popularity of the False Marking Statute has risen in recent years.
Fortunately, on February 23, the U.S. District Court for Northern District of Ohio validated WLF’s position by declaring in the case Unique Product Solutions, Ltd. V. Hy-Grade Valve, Inc. that the False Marking Statute is unconstitutional:
The False Marking statute lacks any of the statutory controls necessary to pass Article II Take Care Clause muster. The False Marking statute essentially represents a wholesale delegation of criminal law enforcement power to private entities with no control exercised by the Department of Justice. See Pequignot, 608 F.3d at 1363 (False Marking statute is criminal). It is unlike any statute in the Federal Code with which this Court is familiar.
How this will affect the Statute’s well-being in other districts remains to be seen, and no doubt the losing qui tam plaintiff will appeal. But in the meantime, the Northern District of Ohio should be celebrated for declaring that the government must exercise some control over the laws it makes, lest impartial plaintiffs’ lawyers become the arbiters of the rules of the game.