By
Donald Zuhn —

On
Thursday, Rep. Darrell Issa (R-CA) introduced a bill in the House (H.R. 4954)
that would amend 35 U.S.C. § 292(b) to permit "[a] person who has suffered
a competitive injury as a result of a violation of this section may file a
civil action in a district court of the United States for recovery of damages
adequate to compensate for the injury."  Currently, that section of Title 35 states that "[a]ny
person may sue for the penalty, in which event one-half shall go to the person
suing and the other to the use of the United States."  Thus, the legislation introduced by
Rep. Issa (at right) would, if enacted, put an end to qui
tam (or whistleblower) suits for false patent marking.

While
the text of Rep. Issa's bill has not yet been made available on THOMAS.loc.gov, the draft bill appears to use essentially the same language as the
provision added to the Senate patent reform bill (S. 515) by Manager's
Amendment (see "Qui Tam Actions
in Senate Sights").  Both the Senate provision and Rep.
Issa's bill would "apply to all cases, without exception, pending on or
after the date of the enactment of this Act."  The legislation would therefore impact the more than 150 qui tam lawsuits that have been filed since
the Federal Circuit's decision in Forest
Group, Inc. v. Bon Tool Co.
on December 28, 2009 (see "False
Patent Marking Resources").  At least sixteen of these qui tam suits have been filed against
biotech or pharma companies:

Promote Innovation LLC v. Sanofi-Aventis US
LLC, March 22
Simonian v. Allergan, Inc., March 9,
2010
Simonian v. Abbott Laboratories,
March 9, 2010
Simonian v. Amgen Inc., March 9, 2010
Simonian v. Baxter Healthcare Corp.,
March 9, 2010
Simonian v. Astellas Pharma US, Inc.,
March 9, 2010
Hollander v. Ortho-McNeil-Janssen
Pharmaceuticals, Inc., March 1, 2010
Simonian v. Merck & Co., Inc.,
February 25, 2010
Simonian v. Novartis Pharmaceuticals
Corp., February 25, 2010
Simonian v. Novartis Consumer Health,
Inc., February 24, 2010
Simonian v. Novartis Consumer Health,
Inc., February 24, 2010
Public Patent Foundation, Inc. v. Novartis
Consumer Health, Inc., February 24, 2010
O'Neill v. Roche Diagnostics Corp.,
February 23, 2010
Simonian v. Pfizer, Inc., February
23, 2010
Simonian v. Merial L.L.C., February
23, 2010
Hollander v. Ranbaxy Laboratories Inc.,
February 23, 2010

(see "Court Report," March 28,
2010; March 14, 2010;
March 7, 2010; March 1, 2010).

The House bill, which was co-sponsored by Rep. Rick Boucher (D-VA), Howard Coble
(R-NC), Steve
Cohen (D-TN), John Conyers, Jr. (D-MI), Trent Franks (R-AZ), Daniel Lungren
(R-CA), and Lamar Smith (R-TX), was referred to the House Judiciary Committee
after being introduced.  Rep. Issa
and the seven co-sponsors are all members of the House Judiciary Committee, which is
responsible for crafting the House patent reform bill.  On March 4, Chairman Conyers, Ranking
Member Smith, and Rep. Howard Berman (D-CA) and Zoe Lofgren (D-CA) released a
statement concerning the Senate Judiciary Committee's latest patent reform
effort (see "Chairman Leahy
Announces 'Tentative Agreement in Principle' on Patent Reform Bill"),
saying that:  "With regard to
the proposed Senate Judiciary Committee language released today, we believe a
number of changes are essential before it could be considered by the House. We
are hopeful our Senate Judiciary colleagues will consider these changes as part
of their process."  By
introducing H.R. 4954, and attempting to quickly and directly address the recent
surge in qui tam actions, the House
Judiciary Committee could be sending a message to Senate Judiciary Chairman
Patrick Leahy (D-VT) that enactment of more comprehensive patent reform legislation
is farther off than Chairman Leahy would like.

For
additional information regarding this topic, please see:

•
"PUBPAT Expresses 'Deep Concern' over Senate False Marking Provision,"
March 25, 2010