Brooks v. Dunlop Manufacturing Inc.

United States Court of Appeals
for the Federal Circuit
__________________________

KENNETH C. BROOKS,
Plaintiff-Appellant,

v.
DUNLOP MANUFACTURING INC.,
Defendant-Appellee,

AND

UNITED STATES,
Intervenor.
__________________________

2012-1164
__________________________

Appeal from the United States District Court for the
Northern District of California in case no. 10-CV-4341,
Judge Charles R. Breyer.
__________________________

Decided: December 13, 2012
__________________________

KENNETH C. BROOKS, Law Office of Kenneth C.
Brooks, of Campbell, California, argued for plaintiff-
appellant.

GINA A. BIBBY, Foley & Lardner, LLP, of Palo Alto,
California, argued for defendant-appellee. With her on
BROOKS v. DUNLOP MANUFACTURING 2

the brief was WILLIAM J. ROBINSON, of Los Angeles, Cali-
fornia.

ADAM C. JED, Attorney, Civil Division, United States
Department of Justice, of Washington, DC, argued for
intervenor. With him on the brief were STUART F.
DELERY, Acting Assistant Attorney General, MELINDA
HAAG, SCOTT R. MCINTOSH and DOUGLAS N. LETTER,
Attorneys.
__________________________

Before NEWMAN, PROST, and MOORE, Circuit Judges.
PROST, Circuit Judge.

Kenneth Brooks appeals from the decision of the
United States District Court for the Northern District of
California dismissing his false marking claim and reject-
ing his argument that the application of amendments to
35 U.S.C. § 292 effectuated by the Leahy-Smith America
Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011)
(“AIA”) to pending actions is unconstitutional. Because
we conclude that Congress’s retroactive elimination of the
qui tam provision from § 292 does not violate the Due
Process Clause or the Intellectual Property Clause of the
Constitution, we affirm.

I. BACKGROUND

A

Section 292(a) makes it unlawful for any person to
engage in specified acts of false patent marking, such as
affixing to a product a mark that falsely asserts that the
item is patented, with the intent to deceive the public.
Any person who engages in false patent marking prohib-
3 BROOKS v. DUNLOP MANUFACTURING

ited by § 292(a) “[s]hall be fined not more than $500 for
every such offense.”

Prior to 2011, 35 U.S.C. § 292(b) provided 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.” More particularly, § 292(b) authorized
private parties (relators) to bring a qui tam or informer’s
suit for violations of § 292(a). Section 292(b) did not,
however, specify the procedures to be used in adjudicating
the relator’s suit, nor did it expressly authorize the gov-
ernment to file its own suit to collect the penalty. The qui
tam provision of § 292 had been the subject of ongoing
litigation, both before district courts and this court. See,
e.g., Forest Group, Inc. v. Bon Tool Co., 590 F.3d 1295
(Fed. Cir. 2009) (holding that § 292 required the court to
impose a penalty for false marking on a per article basis);
Pequignot v. Solo Cup Co., 608 F.3d 1356 (Fed. Cir. 2010)
(holding that the defendant did not falsely mark its
products for purposes of deceiving the public); Stauffer v.
Brooks Brothers, Inc., 619 F.3d 1321 (Fed. Cir. 2010)
(holding that the qui tam relator had standing to bring
suit, but refusing to decide the constitutionality of § 292
without the issue having been raised or argued by the
parties).

On September 16, 2011, the President signed into law
the AIA, which amends § 292 in several respects. Specifi-
cally, Section 16 of the AIA eliminates the qui tam provi-
sion of § 292(b) and amends § 292(a) to provide that
“[o]nly the United States may sue for the penalty author-
ized by this subsection.” AIA § 16(b)(1). In lieu of the qui
tam provision, the AIA amends § 292(b) to authorize
actions for damages by any person “who has suffered a
competitive injury as a result of a violation” of § 292(a).
Id. § 16(b)(2). Moreover, the AIA narrows the scope of
BROOKS v. DUNLOP MANUFACTURING 4

liability by providing that marking products with expired
patents is not a violation. Id. § 16(b)(3). And of particu-
lar relevance here, the AIA expressly provides that
“[t]hese amendments . . . shall apply to all cases, without
exception, that are pending on, or commenced on or after,
the date of the enactment of this Act.” Id. § 16(b)(4).

B

In September 2010, Mr. Brooks sued Dunlop Manu-
facturing Inc. (“Dunlop”) under the then-prevailing ver-
sion of § 292, alleging that Dunlop marked a guitar string
winder with the number of a patent that was both expired
and invalidated. Dunlop moved to dismiss the case,
arguing both that Mr. Brooks had not pled the required
intent to deceive and that the qui tam provision violated
the Take Care Clause, U.S. Const. art. II, § 3. The United
States intervened to defend the constitutionality of § 292,
and the district court stayed the case pending our resolu-
tion of the same constitutional question in FLFMC, LLC
v. Wham-O, Inc., No. 2011-1067, 2011 WL 4952991 (Fed.
Cir. Oct. 19, 2011).

While the Wham-O case was pending, Congress en-
acted the AIA, amending § 292 and eliminating qui tam
actions under that section. The Wham-O parties agreed
that the passage of the AIA, by eliminating the qui tam
provision on which the case was predicated, rendered
their case moot. Id. at *1.1 Shortly thereafter, Dunlop
moved to lift the stay and to dismiss this case, arguing
that Mr. Brooks no longer has standing because he can no
longer recover a statutory penalty and has not alleged any

1 In Wham-O, we also noted that “[t]he parties do
not challenge, and this court does not address, the consti-
tutionality of the retroactive application of the amend-
ments to § 292.” Id.
5 BROOKS v. DUNLOP MANUFACTURING

right to damages for competitive injury. Mr. Brooks
opposed the motion, arguing that Congress’s elimination
of qui tam actions constitutes a taking of Mr. Brooks’s
property without just compensation.

The district court held a hearing on Dunlop’s motion
to dismiss. At that hearing, Mr. Brooks also introduced,
for the first time, the argument that the AIA violates the
Due Process Clause. Specifically, Mr. Brooks argued that
he has “rights [that] are contractual in nature” under the
former version of § 292 and that “repudiat[ing] the Gov-
ernment’s contractual obligations may violate the Consti-
tution.”

After supplemental briefing on this new contractual
issue, the district court dismissed Mr. Brooks’s case.
Brooks v. Dunlop Mfg. Inc., No. 3:10-cv-04341, 2011 WL
6140912 (N.D. Cal. Dec. 9, 2011). The district court first
held that the application of the false marking amend-
ments to pending qui tam actions under § 292 does not
violate the Due Process Clause. Id. at *4-5. After observ-
ing that Congress is free to give retroactive effect to
economic legislation as long as doing so is a rational
means of pursuing a legitimate legislative purpose, the
district court found “that Congress, by eliminating the qui
tam provision in § 292, rationally furthered a legitimate
legislative purpose by comprehensively reducing the costs
and inefficiencies associated with the ‘cottage industry’ of
false marking litigation that developed after the Federal
Circuit’s decision in Forest Group, Inc., 590 F.3d 1295.”
Id. at *5. The district court further determined that it
“need not address whether a binding contract was actu-
ally formed,” because even were there such a contract, the
due process inquiry would still require only that Congress
had a rational basis for changing the law. Id. at *4.
BROOKS v. DUNLOP MANUFACTURING 6

Indeed, Mr. Brooks “submit[ted] no legal authority . . .
that would require a higher standard of scrutiny.” Id.

The district court also rejected Mr. Brooks’s claim
that AIA’s amendments to pending qui tam actions under
§ 292 violated the Takings Clause. Specifically, the
district court reasoned that even if a government act
constitutes a taking, it cannot be declared “void so long as
the government ‘provide[s] an adequate process for ob-
taining compensation.’” Id. at *5 (quoting Williamson
Cnty. Reg’l Planning Comm’n v. Hamilton Bank of John-
son City, 473 U.S. 172, 194 (1985) (alteration in original)).
“The government has provided such a compensation
process by consenting to suit in the United States Court of
Federal Claims under the Tucker Act, 28 U.S.C.
§ 1491(a)(1).” Id. The district court went on to reject Mr.
Brooks’s argument that he cannot seek compensation
under the Tucker Act because “no amount has been set
forth by any party in this action.” Id. at *6. That obser-
vation, the district court noted, “is the very reason [the]
takings claim would likely fail, were it to be adjudicated.”
Id. The district court further noted that “[t]he Takings
Clause protects only vested property rights.” Id. (citing
Landgraf v. USI Film Prods., 511 U.S. 244, 266 (1994)).
But a “‘property right in any cause of action does not vest
until a final unreviewable judgment is obtained.’” Id.
(quoting Ileto v. Glock, Inc., 565 F.3d 1126, 1141 (9th Cir.
2009)). Mr. Brooks “never had the guarantee of a prop-
erty interest in his lawsuit,” the district court explained,
“if for no other reason, because he might lose his case
against Dunlop.” Id.

On December 9, 2011, the district court issued a final
judgment on the pleadings pursuant to Fed. R. Civ. P.
12(c). Mr. Brooks filed a timely notice of appeal. We have
jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).
7 BROOKS v. DUNLOP MANUFACTURING

II. DISCUSSION

In reviewing a judgment on the pleadings, we follow
the procedural law of the regional circuit. Imation Corp.
v. Koninklijke Philips Elecs. N.V., 586 F.3d 980, 985 (Fed.
Cir. 2009). In the Ninth Circuit, a grant of judgment on
the pleadings is reviewed de novo. Or. Nat. Desert Ass’n
v. U.S. Forest Serv., 550 F.3d 778, 782 (9th Cir. 2008).
The constitutionality of an act of Congress is a question of
law that is likewise reviewed de novo. Thomson Multi-
media Inc. v. United States, 340 F.3d 1355, 1359 (Fed.
Cir. 2003).

A

Mr. Brooks is no longer contesting the district court’s
rejection of his takings claim. Nor does he challenge the
application of amended § 292 to future actions that have
not yet been filed. Mr. Brooks, however, renews his claim
that the Due Process Clause prevents Congress from
applying the AIA’s amendments to § 292 to pending qui
tam actions. As Mr. Brooks admitted before the district
court, if applied as intended by Congress, the AIA’s
amendments to § 292 have taken away whatever right
Mr. Brooks may have had to bring a false marking claim
against Dunlop because Mr. Brooks is not a competitor of
Dunlop.

“No person has a vested interest in any rule of law,
entitling him to insist that it shall remain unchanged for
his benefit.” N.Y. Cent. R.R. Co. v. White, 243 U.S. 188,
198 (1917); see also Plaut v. Spendthrift Farm, 514 U.S.
211, 226 (1995) (“When a new law makes clear that it is
retroactive, an appellate court must apply that law in
reviewing judgments still on appeal that were rendered
before the law was enacted, and must alter the outcome
BROOKS v. DUNLOP MANUFACTURING 8

accordingly.”). Nevertheless, retroactive legislation, like
the false marking provisions of the AIA at issue here,
“must meet the test of due process.” Pension Benefit
Guar. Corp. v. R.A. Gray & Co., 467 U.S. 717, 730 (1984).
“Provided that the retroactive application of a statute is
supported by a legitimate legislative purpose furthered by
rational means, judgments about the wisdom of such
legislation remain within the exclusive province of the
legislative and executive branches.” Id. at 729; see also
United States v. Carlton, 512 U.S. 26, 30-31 (1994). This
“‘burden is met simply by showing that the retroactive
application of the legislation is itself justified by a ra-
tional legislative purpose.’” Carlton, 512 U.S. at 31
(quoting Pension Benefit, 467 U.S. at 729-30 (1984)).

According to Mr. Brooks, Congress’s retroactive elimi-
nation of the qui tam provision of § 292(b) is arbitrary and
irrational because it is tantamount to sanctioning
Dunlop’s public deception and indemnifying its violation
of § 292. Mr. Brooks, however, overlooks that the AIA
replaced qui tam actions under § 292(b) with a compensa-
tory cause of action for any person who has suffered a
competitive injury as a result of a false marking violation.
Moreover, the United States may sue for the penalty
authorized by § 292(a). Accordingly, we reject the argu-
ment that the AIA’s amendments to § 292 somehow
sanction public deception. We therefore turn to Mr.
Brooks’s more general argument that the retroactive
elimination of the qui tam provision of § 292 is not justi-
fied by a rational legislative purpose.

As an initial matter, we cannot say that it was irra-
tional for Congress to conclude that the costs associated
with qui tam actions under § 292(b) exceeded their bene-
fits, and to respond by replacing such actions with a
compensatory cause of action for private parties suffering
9 BROOKS v. DUNLOP MANUFACTURING

competitive injury. Indeed, the legislative history of the
AIA suggests that this is what many members of Con-
gress had in mind. See 157 Cong. Rec. S5320 (daily ed.
Sept. 6, 2011) (statement of Sen. Jon Kyl) (“The America
Invents Act reins in abuses that are reflected in a recent
surge in false marking litigation. It allows such suits to
be brought only by those parties who have actually suf-
fered a competitive injury as a result of false marking.”).
Commentators expressed similar concern that the qui tam
action, combined with the statutory penalty, had created
a surge of vexatious litigation and posed a risk of grossly
disproportionate penalties for false marking. See, e.g.,
Michael R. O’Neill, False Marking Claims: The New
Threat To Business, 22 No. 8 Intell. Prop. & Tech. L.J. 22,
22-23 (2010) (noting that “false patent marking claims are
now the new and very real threat to any business that
marks any of its products or promotional materials with
patent numbers”).

It follows that, by making the elimination of the qui
tam provision of § 292(b) retroactive, Congress “was in
significant part attempting to reduce the litigation expen-
ditures in the large number of complaints filed, but not
yet subject to a final judgment.” Rogers v. Tristar Prods.,
Inc., No. 2011-1194, 2012 WL 1660604, at *3 (Fed. Cir.
May 2, 2012) (nonprecedential) (per curiam order denying
motion for reconsideration). In fact, the legislative his-
tory suggests that Congress was particularly concerned
with the perceived abuses and inefficiencies stemming
from false marking claims that were initiated before the
AIA was signed into law. See 157 Cong. Rec. S1372 (daily
ed. Mar. 8, 2011) (statement of Sen. Jon Kyl) (“[B]ecause
the Federal Circuit’s recent decision in Forest Group, Inc.
v. Bon Tool Co., 590 F.3d 1295, Fed. Cir. 2009, appears to
have created a surge in false marking qui tam litigation,
the changes made by paragraph (1) of section 2(k) of the
BROOKS v. DUNLOP MANUFACTURING 10

bill are made fully retroactive by paragraph (2).”); 157
Cong. Rec. S5320-21 (daily ed. Sept. 6, 2011) (statement
of Sen. Jon Kyl) (“Currently, such suits are often brought
by parties asserting no actual competitive injury from the
marking—or who do not even patent or manufacture
anything in a relevant industry. . . . They represent a tax
that patent lawyers are imposing on domestic manufac-
turing . . . .”). In our view, this alone constitutes a ra-
tional legislative purpose. See, e.g., Landgraf v. USI Film
Prods., 511 U.S. 244, 267-68 (1994) (holding that retroac-
tive legislation “often serve[s] entirely benign and legiti-
mate purposes,” including to “give comprehensive effect to
a new law Congress considers salutary”).

But there is more. At the time that Congress acted,
there was a live question about the constitutionality of
the then-existing qui tam provision. See, e.g., Rogers,
2012 WL 1660604; Wham-O, Inc., 2011 WL 4952991.
This too appears to have been a concern when Congress
eliminated the qui tam provision from § 292(b). See, e.g.,
157 Cong. Rec. S1368 (daily ed. Mar. 8, 2011) (statement
of Sen. Chuck Grassley). Indeed, it was rational for
Congress to pass legislation eliminating a potential
constitutional issue and sparing the courts, private par-
ties, and the United States the litigation burdens and
risks associated with such issues. At bottom, Congress
made a considered choice to modify the private cause of
action in § 292(b) and apply that modification to pending
as well as future cases. Given Congress’s legitimate
concerns with respect to the cost and constitutionality of
pending qui tam actions, we conclude that the retroactive
application of amended § 292 to pending actions was a
rational means of pursuing a legitimate legislative pur-
pose.
11 BROOKS v. DUNLOP MANUFACTURING

B

Mr. Brooks primarily contends that by filing a lawsuit
against Dunlop, he entered into a binding contract with
the United States. Although he does not articulate what
exactly this contract was for or what was promised to
him, Mr. Brooks asserts that the qui tam provision of
former § 292(b) was essentially an offer to enter into a
unilateral contract—an offer which Mr. Brooks accepted
when he filed suit. Then, according to Mr. Brooks, Con-
gress violated the Due Process Clause when it retroac-
tively eliminated the qui tam provision from § 292(b) and
repudiated its contract with Mr. Brooks.2 In particular,
Mr. Brooks relies on Perry v. United States for the propo-
sition that every time Congress “repudiate[s] the sub-
stance of its own engagements,” it violates the Due
Process Clause. 294 U.S. 330, 351 (1935).

Mr. Brooks’s reading of Perry goes too far. Notably,
the plaintiff in Perry had a written contract with the
United States, in the form of a government bond. Id. at
346-48. That bond expressly imposed financial obliga-
tions on the United States, including the obligation to
repay the borrowed funds in gold. Id. The federal legisla-
tion at issue in Perry relieved the government from the
obligation to repay the debt in gold. Id. at 349. In con-
trast, nothing in the AIA relieves Congress from a finan-
cial obligation owed to Mr. Brooks. Rather, it simply
eliminated his standing to bring a qui tam action under
§ 292.

2 To be clear, Mr. Brooks did not bring an actual
breach of contract claim against the United States under
the Tucker Act, 28 U.S.C. § 1491, or the Little Tucker Act,
28 U.S.C. § 1346. Rather, he only alleges that Congress’s
repudiation of the alleged contract violates the Due
Process Clause.
BROOKS v. DUNLOP MANUFACTURING 12

Even more to the point, the pre-AIA version of § 292
was not an offer to enter into a unilateral contract with
Congress. The Supreme Court “has maintained that
absent some clear indication that the legislature intends
to bind itself contractually, the presumption is that ‘a law
is not intended to create private contractual or vested
rights, but merely declares a policy to be pursued until
the legislature shall ordain otherwise.’” Nat’l R.R. Pas-
senger Corp. v. Atchison, 470 U.S. 451, 465-66 (1985)
(quoting Dodge v. Bd. of Educ., 302 U.S. 74, 79 (1937)).
“This well-established presumption is grounded in the
elementary proposition that the principal function of the
legislature is not to make contracts, but to make laws
that establish the policy of the state.” Id. at 466. Accord-
ingly, “the party asserting the creation of a contract must
overcome this well-founded presumption and [courts
should] proceed cautiously both in identifying a contract
within the language of a regulatory statute and in defin-
ing the contours of any contractual obligation.” Id.

In determining whether a statute creates a contract,
the Court has instructed us to first look to the language of
the statute. Id. Before passage of the AIA, § 292(b)
provided that “[a]ny person may sue for the penalty, in
which one-half shall go to the person suing and the other
to the use of the United States.” Nothing in this language
“create[s] or speak[s] of a contract” between the United
States and a qui tam relator. Id. at 467. Although not
necessarily determinative, no words typically associated
with contract formation, such as “offer” or “acceptance,”
were used. The far more natural interpretation of this
text, which is not framed in contractual language, is that
it simply authorized a qui tam action and specified how
any penalty would be divided.
13 BROOKS v. DUNLOP MANUFACTURING

We next look to whether the circumstances surround-
ing the statute’s passage manifested any intent by Con-
gress to bind itself contractually. Id. at 468-70. Mr.
Brooks has not pointed to any legislative history, or any
other evidence, which suggests that during the passage of
the pre-AIA version of § 292, Congress had the intent to
enter into a contract with qui tam relators. The pre-AIA
language of § 292(b) at issue here was added in 1952,
when Congress recodified the patent laws. Act of July 19,
1952, Pub. L. No. 82-593, 66 Stat. 792, 814. The Senate
Report stated that two paragraphs in the predecessor
version were being “consolidated,” a new form of false
marking was being added, and the fine was being in-
creased. S. Rep. 82-1979, at 31 (1952). The only mention
of the qui tam action was that “[t]he informer action is
included as additional to an ordinary criminal action.” Id.
There is no indication that Congress intended to create a
special provision that forms a contract or otherwise vests
rights upon the filing of suit.

Instead of legislative history, Mr. Brooks relies on the
Ninth’s Circuit’s holding in United States ex rel. Kelly v.
Boeing Co., 9 F.3d 743 (9th Cir. 1993) for the broad propo-
sition that qui tam provisions, including the one at issue
here, operate as enforceable unilateral contracts. In
Kelly, the Ninth Circuit held that qui tam relators under
the False Claims Act (“FCA”) meet the constitutional
requirements for Article III standing because “the FCA
effectively assigns the government’s claims to qui tam
plaintiffs.” Id. at 748. In the course of its standing dis-
cussion, the court characterized the FCA’s qui tam provi-
sions as a “unilateral contract.” Id. But the passing
reference to a “unilateral contract” in Kelly was neither
the Ninth Circuit’s actual holding nor a necessary ele-
ment of that holding. As shown by the Supreme Court’s
subsequent decision in Vermont Agency of Natural Re-
BROOKS v. DUNLOP MANUFACTURING 14

sources v. United States ex rel. Stevens, 529 U.S. 765
(2000), the comparison between a qui tam plaintiff and an
assignee does not depend on the existence of contract
between the government and the relator. Rather, the
Court in Vermont Agency held that “a qui tam relator is,
in effect, suing as a partial assignee.” Id. at 733 n.4. The
Court reached this conclusion without any suggestion
that there is a contract between the government and the
relator. Id. at 773-74, 778. Moreover, the Kelly decision
merely reflects the Ninth Circuit’s opinion regarding qui
tam relator standing under the FCA. It does not address
any opinion of Congress relating to whether the language
of § 292 or the circumstances surrounding its passage
manifest any intent on the part of Congress to bind itself
contractually to false marking qui tam plaintiffs like Mr.
Brooks.

Treating the former qui tam provision of § 292 as a
unilateral contract offer would also be inconsistent with
the history of qui tam provisions. It is true that qui tam
provisions “have been in existence for hundreds of years
in England, and in this country ever since the foundation
of our government.” United States ex rel. Marcus v. Hess,
317 U.S. 537, 541 n.4 (1943) (quoting Marvin v. Trout,
199 U.S. 212, 225 (1905)). But federal courts have consis-
tently recognized that amendments to qui tam statutes
that interfere with a relator’s pending action do not
“deprive him of rights guaranteed by the Constitution.”
United State ex rel. Rodriguez v. Weekly Publ’n, Inc., 144
F.2d 186, 188 (2d Cir. 1944). That is, a qui tam plaintiff
has “no vested right” and his “privilege of conducting the
suit on behalf of the United States and sharing in the
proceeds of any judgment recovered, [i]s an award of
statutory creation, which, prior to final judgment, [i]s
wholly within the control of Congress.” Id.; accord United
States ex rel. Bayarsky v. Brooks, 210 F.2d 257, 258 (3d
15 BROOKS v. DUNLOP MANUFACTURING

Cir. 1954); Sherr v. Anaconda Wire & Cable Co., 149 F.2d
680, 681 (2d Cir. 1945).

Because Mr. Brooks cannot point to “some clear indi-
cation that the legislature intend[ed] to bind itself con-
tractually,” Mr. Brooks cannot overcome the presumption
that the pre-AIA version of § 292 was “not intended to
create private contractual or vested rights.” Nat’l R.R.
Passenger Corp., 470 U.S. at 465-66. Without a contract,
Mr. Brooks’s due process argument fails in every particu-
lar.

C

In addition to his due process arguments, Mr. Brooks
contends that the retroactive elimination of the qui tam
provision of § 292(b) violates the Intellectual Property
Clause, U.S. Const. art. I, § 8, cl. 8. More precisely, Mr.
Brooks argues that Congress’s authority under the Intel-
lectual Property Clause is subject to “a more searching
analysis” than Congress’s other enumerated powers.
Appellant’s Reply Br. 15. In support of his argument, Mr.
Brooks relies on the Supreme Court’s decision in Graham
v. John Deere Co., 383 U.S. 1 (1966). There, the Court
explained that the Intellectual Property Clause is a
“qualified authority” and that:

Congress in the exercise of the patent power may
not overreach the restraints imposed by the stated
constitutional purpose. Nor may it enlarge the
patent monopoly without regard to the innovation,
advancement, or social benefit gained thereby.
Moreover, Congress may not authorize the issu-
ance of patents whose effects are to remove exis-
tent knowledge from the public domain, or to
restrict free access to materials already available.
BROOKS v. DUNLOP MANUFACTURING 16

Id. at 5-6.

Mr. Brooks’s reliance on Graham is unavailing. To be
sure, Congress’s patent power is limited. However,
“[w]ithin the limits of the constitutional grant, the Con-
gress may, of course, implement the stated purpose of the
Framers by selecting the policy which in its judgment
best effectuates the constitutional aim.” Id. at 6. Here,
the AIA’s retroactive amendments to § 292 do not impli-
cate the scope of the patent power, but rather, Congress’s
judgment in effectuating and maintaining a patent sys-
tem.3 Accordingly, our judicial review is limited to deter-
mining whether Congress’s actions were “a rational
exercise of the legislative authority conferred by the
[Patent] Clause. On that point, we defer substantially to
Congress.” Eldred v. Ashcroft, 537 U.S. 186, 204-05
(2003); see also Figueroa v. United States, 466 F.3d 1023,
1031-32 (Fed. Cir. 2006) (citing Eldred and noting that
“[i]n deciding whether . . . legislation was permissible
under the Patent Clause, we accord great deference to
Congress’s policy determinations”). We have already
determined that Congress’s retroactive elimination of the
qui tam provision of § 292(b) was a rational means of
pursuing a legitimate legislative purpose. Accordingly,
we conclude that the retroactive elimination of the qui
tam provision of § 292(b) does not violate the Intellectual
Property Clause.

3 Mr. Brooks’s argument that Congress’s retroactive
elimination of the qui tam provision of § 292(b) impermis-
sibly extends patent monopolies lacks merit. False mark-
ers remain subject to penalties under § 292. Congress has
merely traded one enforcement mechanism for another.
As already noted, amended § 292 now authorizes both the
United States and any person who has suffered a com-
petitive injury as a result of a false marking violation to
bring suit.
17 BROOKS v. DUNLOP MANUFACTURING

III. CONCLUSION

We have considered Mr. Brooks’s remaining argu-
ments and find them unpersuasive. Accordingly, we
affirm the final judgment of the district court.

AFFIRMED