IP: Return of the Son of the Bride of Falsemarking-stein!

Recent federal court decision may bring back patent marking trolls

Let's start with a quiz for you horror film buffs: What do Frankenstein, Bride of Frankenstein and Son of Frankenstein have in common? That's right: each movie ends with the monster dying, like monsters always do at the end of a movie, only to come back for more mayhem in the next.

Unfortunately, sometimes life imitates art. If you hoped that false marking trolls were (figuratively speaking) burned up, staked through the heart and/or shot with a silver bullet following the passage of the America Invents Act (AIA) last September, don't look behind you: They might be back (with a twist), at least if a recent federal court decision gains traction.

The district court treated all the state law claims similarly for purposes of the preemption analysis. After noting the general presumption against federal preemption of state law claims, the court analyzed the three types of preemption recognized by the Supreme Court—express, field and conflict—concluded that none of them applied, and so denied Nautilus's motion:

1. The court found no express preemption since there is no express preemption clause regarding false marking suits in the AIA or elsewhere in the Patent Act.


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Cullen Pendleton

Cullen Pendleton, Ph.D., is a litigation partner at Marshall, Gerstein & Borun LLP. He is an alumnus of the University of Houston, the University...

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