Judge Thomas P. Griesa
Rowpar Pharmaceuticals’ CloSys Complete Oral Health System toothpaste (CloSys) is distributed nationwide. Patent lawyer Mikityanskiy’s qui tam action charged Rowpar with false patent marking violating 35 USC §292(a). The 15 patents marking the tube of CloSys toothpaste that Mikityanskiy bought in 2011 had expired between 2004 and 2007. Mikityanskiy sought $500 per offending article falsely marked, with half the recovery payable to the government, and the remainder payable to him. District court granted Rowpar dismissal of Mikityanskiy’s qui tam suit. On Sept. 16, 2011, president Obama signed the Leahy-Smith America Invents Act, revising 35 USC §292. The Act’s revisions to §292 “appl[ied] to all cases, without exception, that [were] pending on, or commenced on or after” the Act’s effective date. More importantly Congress enacted §292(a), which provided that the marking of a product with matter relating to a patent that covered that product but has expired did not violate §292. District court held that the Act deprived Mikityanskiy of any cause of action. As his complaint was wholly predicated on a theory of false marking overruled by Congress, Mikityanskiy lacked standing to sue for violation of 35 USC §292.
