07/10/14

Stauffer v. Brooks. Bros. Group: AIA Amendment of False-Marking Statute Survives Constitutional Challenge


 
 
 
 By: Jesus Hernandez, Blog Editor/Contributor  
 
TitleStauffer v. Brooks. Bros. Group, No. 2013-1180 (Fed. Cir. July 10, 2014).
IssueAfter the AIA became law and eliminated the qui tam provision of the false-marking statute, Mr. Stauffer acknowledged that he no longer had standing to pursue his lawsuit [which was initially brought prior to enactment of the AIA]. The district court subsequently issued an order directing him to show cause why, in light of the AIA, his suit should not be dismissed for lack of standing. Mr. Stauffer responded by arguing that the AIA amendments were unconstitutional because [1] they amounted to a pardon by Congress, thus violating the doctrine of separation of powers. He also argued [2] that, by making the elimination of the qui tam provision applicable to pending suits, the statute violated the common-law principle that prohibits use of a pardon to vitiate a qui tam action once the action has commenced.
Stauffer at *3 (text added).
Holding
[1] We […] conclude that the AIA amendment to the false-marking statute that eliminated liability for expired patents does not constitute an impermissible pardon [because the amendments amount to a repeal of a law, and not an attempt to set aside an already adjudicated punishment].
Id. at *11-12.
[2] [W]e conclude that the AIA amendments do not violate the common-law principle on which Mr. Stauffer relies because (1) he has no vested rights in his lawsuit, and (2) the AIA amendments do not constitute a pardon.
Id. at *12.
 

 
Procedural HistoryPro se plaintiff-appellant Raymond E. Stauffer brought this qui tam action in the United States District Court for the Southern District of New York in 2008.1 In his suit, Mr. Stauffer sued defendant-appellee Brooks Brothers, Inc. (“Brooks Brothers”) under the then-extant version of the false-marking statute, 35 U.S.C. §292 (2006).[...] Mr. Stauffer alleged that Brooks Brothers violated the statute by marking its bow ties with expired patent numbers. […] On December 19, 2012, the district court dismissed Mr. Stauffer’s suit for lack of standing due to the AIA’s elimination of the false-marking statute’s qui tam provision, Stauffer v. Brooks Bros., Inc., No. 08-Civ-10369, 2012 WL 6621374 (S.D.N.Y. Dec. 19, 2012) (“Final Decision”), and on January 16, 2013, the court denied reconsideration, Stauffer v. Brooks Bros., Inc., No. 08-Civ- 10369 (S.D.N.Y. Jan. 16, 2013). Mr. Stauffer now appeals the dismissal of his suit.
Stauffer at *2-3.
 
 
 
Legal Reasoning (Lourie, Schall, Moore)
Background
35 U.S.C. § 292The false-marking statute, 35 U.S.C. § 292, makes unlawful various acts of falsely marking products with patent numbers. Under § 292(a), a person who violates the statute “[s]hall be fined not more than $500 for every such offense.” At the time Mr. Stauffer filed his suit, § 292(b) allowed any person to sue for the penalty. If the suit was successful, one half of the penalty paid would go to the United States.
Stauffer at *4.
AIA passage and false marking provisionIn 2011, while Mr. Stauffer’s action was pending, the President signed into law the America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (the “AIA”). The AIA made three significant changes to the false-marking statute that affected Mr. Stauffer’s claim: (1) it eliminated the statute’s qui tam provision, changing the law so that only a “person who has suffered a competitive injury” may bring a claim, AIA § 16(b)(2); (2) it expressly stated that marking a product with an expired patent is not a false-marking violation, id. § 16(b)(3); and (3) it expressly stated that these amendments apply to all pending cases, id. § 16(b)(4).
Id. at *2-3.
Standing
Legal StandardThe Supreme Court has explained that, in order for there to be standing in a case, at a minimum, three re- quirements must be met: First, the plaintiff must have suffered an “injury in fact”—an invasion of a legally protected interest which is (a) concrete and particularized, and (b) “actual or imminent, not ‘conjectural’ or ‘hypothetical.’” Second, there must be a causal connection between the injury and the conduct complained of—the injury has to be “fairly . . . trace[able] to the challenged action of the defend- ant, and not . . . th[e] result [of] the independent action of some third party not before the court.” Third, it must be “likely,” as opposed to merely “speculative,” that the injury will be “redressed by a favorable decision.” Lujan v. Defenders of Wildlife, 504 U.S. 555, 560–61 (1992) (citations omitted).
Stauffer at *9-10.
Stauffer has standing to Challenge ConstitutionalityMr. Stauffer has the necessary standing on appeal to make his arguments. First, Mr. Stauffer seeks to establish that Congress carried out an unconstitutional pardon when it amended the false- marking statute to permit marking with expired patent numbers. Second, he seeks to show that Congress could not have constitutionally eliminated the ability of a qui tam plaintiff to enforce false-marking violations. Were he to win on both issues, it is likely rather than speculative that a favorable decision would redress his alleged injury.
Id. at *10-11.
[1] Whether AIA amendments are unconstitutional because they amounted to a pardon by Congress, thus violating the doctrine of separation of powers.
The U.S. Constitution grants the President the “power to grant reprieves and pardons for offenses against the United States.” U.S. Const. art. II, § 2. The grant of a pardon is an “executive action that mitigates or sets aside punishment for a crime.” Nixon v. United States, 506 U.S. 224, 232 (1993) (quoting Black’s Law Dictionary 1113 (6th ed. 1990)). Rather than granting a pardon, the amendments to the false-marking statute are better characterized as repealing a law, an action undoubtedly within Congress’s power. Indeed, at common law, it has long been held that Congress has the power to “repeal[] a penal provision (whether criminal or civil)” and that “such repeals [are] understood to preclude punishment for acts antedating the repeal.” Landgraf v. USI Film Prods., 511 U.S. 244, 270–71 (1994) (collecting cases); see also United States v. Chambers, 291 U.S. 217, 223 (1934) (“In case a statute is repealed or rendered inoperative, no further proceedings can be had to enforce it in pending prosecutions unless competent authority has kept the statute alive for that purpose.”).[...] Significantly, this is not a case where Congress attempted to set aside an already adjudicated punishment for a specific individual or a group of individuals; rather, Congress repealed the provisions of the false-marking statute that it did not wish to remain in force. The amendments, therefore, do not constitute a pardon.
Stauffer at *11-12.
[2] Whether, by making the elimination of the qui tam provision applicable to pending suits, the statute violated the common-law principle that prohibits use of a pardon to vitiate a qui tam action once the action has commenced.
First, a plaintiff has no vested rights in a lawsuit until final judgment has been entered. McCullough v. Virginia, 172 U.S. 102, 123–24 (1898). Because Mr. Stauffer’s case is still pending and has not reached final judgment, he has no vested rights in it. Further, we have already considered and rejected the argument that a litigant like Mr. Stauffer enters into a contract with the government upon filing a qui tam false-marking claim. Brooks, 702 F.3d at 632. Even if the law had not changed, Mr. Stauffer might still have lost his lawsuit against Brooks Brothers. He, therefore, could not have acquired a private-property interest in his share of the statutory penalty simply by filing suit. See id. In addition, as noted above, the AIA amendments do not constitute a pardon. The common-law principle on which Mr. Stauffer relies, therefore, does not apply here and does not save his suit from dismissal.
Stauffer at *12-13.
Conclusion
For the foregoing reasons, we affirm the dismissal of Mr. Stauffer’s suit for lack of standing due to the elimination of the qui tam provision in the false-marking statute.
Stauffer at *14.
 
 
 
 
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