USA Brief in Wham-O

8/6/2019 USA Brief in Wham-O

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No. 2011-1067

IN THE UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

FLFMC, LLC,

Plaintiff-Appellant,

v.

WHAM-O, INC.,

Defendant-Appellee,

v.

UNITED STATES,

Intervenor.

Appeal from the United States District Court For the Western District

of Pennsylvania in case no. 10-CV-0435, Judge Arthur J. Schwab

BRIEF FOR THE INTERVENOR UNITED STATES

TONY WEST

Assistant Attorney General

MICHAEL F. HERTZ

Deputy Assistant Attorney General

DOUGLAS N. LETTER

(202) 514-3602

Appellate Litigation Counsel

Civil Division, Room 7513

Department of Justice

950 Pennsylvania Ave., N.W.

Washington, D.C. 20530


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TABLE OF CONTENTS

Page

INTRODUCTION AND INTERESTS OF THE UNITED STATES. ...................... 1

ARGUMENT. ............................................................................................................... 7

I. THE PURPOSE AND HISTORY OF THE GOVERNING

STATUTORY SCHEME IN SECTION 292 STRONGLY

SUPPORT ITS CONSTITUTIONALITY. ............................................ 8

A. Qui Tam Provisions Like Section 292(b) Have a

Sterling Pedigree in the Law of the United States. ...................... 9

B. The History of Qui Tam Statutes in the United States

Confirms the Constitutionality of Section 292(b). .................... 16

II. THE QUI TAM MECHANISM IN SECTION 292 DOES

NOT FACIALLY VIOLATE CONSTITUTIONAL

SEPARATION OF POWERS PRINCIPLES. ...................................... 23

A. History and Practice Demonstrate that Section 292(b)

Does Not Prevent the President from Accomplishing

His Constitutionally Assigned Functions. .................................. 24

B. Section 292(b) Does Not Impermissibly Interfere

with the President's Duties.......................................................... 29

C. Morrison is Readily Distinguishable............................................. 45

D. The Facial Constitutionality of Section 292(b) is

Not Squarely Presented. .............................................................. 48

III. THE QUI TAM MECHANISM IN SECTION 292(b) DOES

NOT VIOLATE THE APPOINTMENTS CLAUSE. .......................... 51

CONCLUSION. ......................................................................................................... 56


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CERTIFICATE OF SERVICE

CERTIFICATE OF COMPLIANCE WITH RULE 32(a)

OF THE FEDERAL RULES OF APPELLATE PROCEDURE

ii


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TABLE OF AUTHORITIES

Cases: Page

Arcadia Mach. & Tool, Inc. v. Sturm, Ruger & Co.,786 F.2d 1124 (Fed. Cir. 1986). ........................................................................... 41

Auffmordt v. Hedden,

137 U.S. 310 (1890). ............................................................................................. 54

Blodgett v. Holden,

275 U. S. 142 (1927). .............................................................................................. 7

Bollingv. Sharpe,347 U.S. 497 (1954). ............................................................................................. 22

Bonito Boats, Inc. v. Thunder Craft Boats, Inc.,

489 U.S. 141 (1989). ............................................................................................... 8

Bowsherv. Synar,

478 U.S. 714 (1986). ................................................................................. 17, 23, 48

Boyd v. Schildkraut Giftware Corp.,936 F.2d 76 (2d Cir. 1991). .................................................................................. 41

Brose v. Sears, Roebuck & Co.,

455 F.2d 763 (5th Cir. 1972). ......................................................................... 16, 43

Buckley v. Valeo,

424 U.S. 1. ........................................................................................... 52, 53, 54, 55

Butte City Water Co. v. Baker,196 U.S. 119 (1905). ............................................................................................. 35

C.J. Hendrey Co. v. Moore,

318 U.S. 133 (1943). ............................................................................................. 10

iii


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Hooperv. California,

155 U.S. 648 (1895). ............................................................................................. 50

Hughes Aircraft Co. v. United States ex rel. Schumer,

520 U.S. 939 (1997). ....................................................................................... 26, 33

Humphrey's Executorv. United States,

295 U.S. 602 (1935). ............................................................................................. 49

In re BP Lubricants USA Inc.,

--- F.3d ----, 2011 WL 873147 (Fed. Cir. 2011). ..................................................... 41

In re International Business Machines Corp.,

687 F.2d 591 (2d Cir. 1982). ................................................................................ 38

Kendall v. United States ex rel. Stokes,

37 U.S. (12 Pet.) 524 (1838). ................................................................................ 38

Kingsley Books, Inc. v. Brown,

354 U.S. 436 (1957). ................................................................................. 14, 26, 42

Lear, Inc. v.Adkins,

395 U.S. 653 (1969). ............................................................................................... 9

Lithographic Co. v. Sarony,

111 U.S. 53 (1884). ............................................................................................... 18

London v. Everett H. Dunbar Corp.,

179 F. 506 (1st Cir. 1910). .................................................................................... 15

Lujan v. Defenders of Wildlife,

504 U.S. 555 (1992). .................................................................... 18, 22, 25, 32, 47

Luka v. Procter & Gamble, Co.,

Case No. 10-cv-2511 (N.D. Ill. Mar. 28, 2011). ...................................................... 5

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Marbury v. Madison,

5 U.S. (1 Cranch) 137 (1803)................................................................................ 17

Marsh v. Chambers,

463 U.S. 783 (1983). ............................................................................................. 17

Marvin v. Trout,

199 U.S. 212 (1905). ....................................................................................... 10, 26

Mayview Corp. v. Rodstein,

620 F.2d 1347 (9th Cir. 1980). ............................................................................. 43

McCulloch v. Maryland,

17 U.S. 316 (1819). ............................................................................................... 16

Memphis Community School District v. Stachura,

477 U.S. 299 (1986). ............................................................................................. 30

Mistretta v. United States,

488 U.S. 361 (1989). ............................................................................. 7, 16, 18, 23

Morrison v. Olson,

487 U.S. 654 (1988). .................................................. 19, 22, 24, 27, 35, 39, 46, 47

Myers v. United States,

264 U.S. 95 (1924). ............................................................................................... 44

Myers v. United States,

272 U.S. 52 (1926). ......................................................................................... 17, 24

Newman-Green Inc. v.Alfonzo-Larrain ,

490 U.S. 826 (1989). ............................................................................................. 45

Nichols v. Newell,

18 F. Cas. 199 (C.C.D. Mass. 1853). .................................................................... 15

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Nixon v. Administrator of General Services,

433 U.S. 425 (1977). ....................................................................................... 24, 27

Nixon v. Fitzgerald,

457 U.S. 731 (1982). ............................................................................................. 47

Osborn v. United States,

91 U.S. 474 (1875). ............................................................................................... 51

Pequignot v. Solo Cup Co.,

608 F.3d 1356 (Fed. Cir. 2010). ......................................................... 40, 41, 42, 55

Pequignot v. Solo Cup Co.,

640 F. Supp. 2d 714 (E.D.Va. 2009). ..................................................................... 4

Pub. Patent Found., Inc. v. Glaxo Smith Kline Consumer Healthcare, L.P.,

Case. No. 2:09-cv-05881 (S.D.N.Y. Mar. 22, 2001)................................................ 5

Riley v. St. Luke's Episcopal Hosp.,

252 F.3d 749 (5th Cir. 2001). ................................................ 20, 28, 29, 37, 53, 54

Schick v. United States,

195 U.S. 65 (1904). ............................................................................................... 25

Shizzle Pop, LLC v. Wham-O, Inc.,

Case No. CV 10-3491 PA,

2010 WL 3063066 (C.D. Cal., Aug. 2 , 2010). .................................................... 4, 5

Sippit Cups, Inc. v. Michael's Creations, Inc., ,

180 F. Supp. 58 (E.D.N.Y. 1960).............................................................. 15, 16, 41

Skillingv. United States,130 S.Ct. 2896 (2009). .......................................................................................... 51

Smith v. Wade,

461 U.S. 30 (1983). ............................................................................................... 30

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St. Louis, Iron Mountain, & S. Rwy. Co. v. Taylor,

210 U.S. 281 (1908). ............................................................................................. 35

Staufferv. Brooks Brothers, Inc.,

619 F.3d 1321 (Fed. Cir. 2010). .......................................... 2, 8, 19, 20, 32, 33, 50

The Laura,

114 U.S. 411 (1885). ....................................................................................... 17, 18

The Nassau,

71 U.S. (4 Wall.) 634 (1866). ................................................................................ 11

The Pocket Veto Case,

279 U.S. 655 (1929). ............................................................................................. 16

The Sally,

12 U.S. (8 Cranch) 382 (1814). ............................................................................ 11

Thomas v. Union Carbide Agric. Products Co.,

473 U.S. 568 (1985). ............................................................................................. 35

Tignerv. Texas,

310 U.S. 141 (1940). ....................................................................................... 14, 26

Townsend v. Sain,

372 U.S. 293 (1963). ............................................................................................. 37

Trabon Engineering Corp. v. Eaton Mfg. Co.,

37 F.R.D. 51 (N.D. Ohio 1964). ........................................................................... 41

Unique Product Solutions, Ltd. v. Hy-Grade Valve, Inc.,

Case No. 5:10-CV-1912,2011 WL 924341 (N.D. Ohio March 14, 2011),

appeal docketed, No. 2011-1254 (Fed. Cir. Mar. 16, 2011)...................................... 5

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United States ex rel. A+ Homecare, Inc. v. Medshares Management Group, Inc.,

400 F.3d 428 (6th Cir. 2005). ............................................................................... 32

United States ex rel. Eisenstein v. City of New York,

129 S. Ct. 2230 (2009). ......................................................................................... 36

United States ex rel. Jennings v. Ragen,

358 U.S. 276 (1959). ............................................................................................. 37

United States ex rel. Kelly v. Boeing Co.,

9 F.3d 743 (9th Cir. 1993). ............................................................................. 28, 54

United States ex rel. Kreindler & Kreindlerv. United Technologies Corp.,

985 F.2d 1148 (2d Cir. 1993). .............................................................................. 28

United States ex rel. Marcus v. Hess,

317 U.S. 537 (1943). .......................................................... 4, 10, 14, 26, 27, 40, 43

United States ex rel. Ridenourv. Kaiser-Hill Co., L.L.C.,

397 F.3d 925 (10th Cr. 2005). ........................................................................ 29, 51

United States ex rel. Stone v. Rockwell Int'l Corp.,

282 F.3d 787 (10th Cir. 2002). ....................................................................... 29, 54

United States ex rel. Taxpayers Against Fraud v. General Electric Co.,

41 F.3d 1032 (6th Cir. 1994). ......................................................................... 28, 54

United States v. Cox,

342 F.2d 167 (5th Cir. 1965). ............................................................................... 38

United States v. Curtiss-Wright Export Corp.,

299 U.S. 304 (1936). ....................................................................................... 18, 23

United States v. Germaine,

99 U.S. (9 Otto) 508 (1879). ................................................................................. 53

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Act of July 5, 1790, ch. 25, 1, 1 Stat. 129. ............................................................... 12

Act of July 20, 1790, ch. 29, 1, 4, 1 Stat. 131, 133. .............................................. 12

Act of July 22, 1790, ch. 33, 3, 1 Stat. 137-138. ...................................................... 12

Act of Mar. 3, 1791, ch. 15, 44, 1 Stat. 209. ........................................................... 12

Act of February 20, 1792, ch. 7, 25, 1 Stat. 232, 239. ............................................ 13

Act of May 8, 1792, ch. 36, 5, 1 Stat. 277-278. ....................................................... 13

Act of March 1, 1793, ch. 19, 12, 1 Stat. 329, 331. ................................................ 13

Act of March 22, 1794, ch. 11, 2, 4, 1 Stat. 347, 349. .......................................... 13

Act of May 19, 1796, ch. 30, 18, 1 Stat. 469, 474. .................................................. 13

Act of April 2, 1802, ch. 13, 18, 2 Stat. 139, 145. .................................................. 13

Act of April 29, 1802, ch. 36, 3-4, 2 Stat. 171, 172. ............................................. 13

Act of May 3, 1802, ch. 48, 4, 2 stat. 189. ........................................................ 13, 21

Act of March 26, 1804, ch. 38, 10, 2 Stat. 283, 286. .............................................. 13

Act of March 2, 1807, ch. 22, 3, 2 stat. 426. ........................................................... 13

5 Stat. 543, 544............................................................................................................ 13

12 Stat. 696.................................................................................................................. 13

Act of March 2, 1863, ch. 67, 6, 12 Stat. 698. ........................................................ 14

Act of July 19, 1952, ch 950, 1, 66 Stat. 814. .......................................................... 15

P.L. 103-465, 108 Stat. 4990. ...................................................................................... 15

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15 U.S.C. 1691e(b)................................................................................................... 31

16 U.S.C. 1540(g).. ................................................................................................... 30

17 U.S.C. 1326. ........................................................................................................ 15

18 U.S.C. 962. .......................................................................................................... 14

18 U.S.C. 3571. ........................................................................................................ 43

18 U.S.C. 3571(b)(2). ............................................................................................... 43

18 U.S.C. 3571(b)(7). ............................................................................................... 43

18 U.S.C. 3571(c)(2). ............................................................................................... 43

18 U.S.C. 3571(c)(7). ............................................................................................... 43

18 U.S.C. 3571(d). ................................................................................................... 43

25 U.S.C. 81 . ........................................................................................................... 15

25 U.S.C. 201. .......................................................................................................... 14

25 U.S.C. 305e(b)..................................................................................................... 31

25 U.S.C. 305e(c). .................................................................................................... 31

26 U.S.C. 7341.......................................................................................................... 15

28 U.S.C. 517. .......................................................................................................... 50

28 U.S.C. 518. .......................................................................................................... 50

28 U.S.C. 594(a). ...................................................................................................... 46

28 U.S.C. 1295(a). ...................................................................................................... 7

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28 U.S.C. 2403(a). ...................................................................................................... 1

31 U.S.C. 3729. ........................................................................................................ 32

31 U.S.C. 3730(b). ................................................................................................... 13

31 U.S.C. 3730(b)(1). ............................................................................................... 37

33 U.S.C. 1319(d). ................................................................................................... 30

33 U.S.C. 1365(a)(1). ................................................................................................ 30

35 U.S.C. 290. .......................................................................................................... 50

35 U.S.C. 292(a). ............................................................................................. 2, 8, 43

35 U.S.C. 292(b). ...................................................................................... 1, 2, 42, 43

42 U.S.C. 1983. ........................................................................................................ 30

45 U.S.C. 711(j). ...................................................................................................... 31

46 U.S.C. 723. .......................................................................................................... 15

46 U.S.C. 80103(b). ................................................................................................. 15

Rules:

Fed. R. App. P. 44(a). .................................................................................................... 1

Fed. R. Civ. P. 24(a)(2). ............................................................................................... 50

Fed. R. Civ. P. 24(b). ................................................................................................... 50

Fed. R. Civ. P. 26(c)..................................................................................................... 50

Fed. R. Civ. P. 41(a)(1)(A)(ii)....................................................................................... 50

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Legislative Materials:

S. Rep. 82-1979............................................................................................................ 42

Other Authorities:

1 Annals of Cong. 463 (1789) (J. Madison)................................................................ 34

3 W. Blackstone, Commentaries on the Laws of England..................................... 3, 10

A Dictionary of American & English Law with Definitions

of the Technical Terms of the Canon and Civil Laws (1888)

(S. Rapalje & R. Lawrence eds.). ................................................................................. 42

Blacks Law Dictionary (9th ed. 2009). ....................................................................... 43

H. Black, Dictionary of Law Containing Definitions of the Terms

and Phrases of American and English Jurisprudence,

Ancient and Modern (1891). ...................................................................................... 42

H. Krent, Executive Control Over Criminal Law Enforcement: Some Lessons

from History, 38 Am. U. L. Rev. 275 (1989). ............................................. 13, 22, 42

John Salmond, Jurisprudence (Glanville L. Williams ed., 10th ed. 1947). ........ 43, 44

L. Lessig & C. Sunstein, The President and the Administration,

94 Colum. L. Rev. 1 (1994). ........................................................................... 12, 21

Note, The History and Development of Qui Tam,

1972 Wash. U. L.Q. 81.......................................................................................... 11

William M. Lile et al., Brief Making and the Use of Law Books

(3d ed. 1914). ......................................................................................................... 44

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STATEMENT OF RELATED CASES

To our knowledge, no other appeal in, or from, the present civil action has

previously been before this or any other appellate court. We are aware of one other

case pending before this Court involving the same constitutional Article II issues being

raised in this appeal, Unique ProductSolutions, Ltd.v. HyGrade Valve, Inc., No. 2011-

1254. Notices of appeal have been filed by the United States and by the private party

plaintiff in that case. Pursuant to Federal Circuit Rule 47.5(b), we note that there are

other cases involving the same constitutional issues as this one pending in scattered

district courts around the United States. Presumably, a ruling by this Court on this

issue will directly affect those various cases in the district courts.


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No. 2011-1067

IN THE UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

FLFMC, LLC,

Plaintiff-Appellant,

v.

WHAM-O, INC.,

Defendant-Appellee,

v.

UNITED STATES,

Intervenor.

Appeal from the United States District Court For the Western District

of Pennsylvania in case no. 10-CV-0435, Judge Arthur J. Schwab

BRIEF FOR THE INTERVENOR UNITED STATES

INTRODUCTION AND INTERESTS OF THE UNITED STATES

The United States exercised its statutory right to intervene in this case under 28

U.S.C. 2403(a), because the defendant-appellee Wham-O Inc. filed a notice under

Fed. R. App. P. 44(a), stating its intention to challenge the constitutionality of an Act

of Congress: the qui tam provision of the patent mismarking statute in 35 U.S.C.

292(b) (Section 292(b)).


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In this case, plaintiff FLFMC sued Wham-O for allegedly violating Section 292

by affixing expired and non-applicable patents on certain of its products for the

purpose of deceiving the public. FLFMC is proceeding under the qui tam provision of

Section 292, which permits private persons (relators) to sue for misuse of patent

markings: Section 292(a) prohibits such false marking and provides for a fine of not

more than $500 for every such offense. 35 U.S.C. 292(a). And Section 292(b)

permits any person to 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. 292(b).

Wham-O moved to dismiss, urging, inter alia, that the statute is unconstitutional

because it does not contain an adequate mechanism for Executive Branch oversight

and control of the litigation, as supposedly required by the Take Care and

Appointments Clauses of Article II of the U.S. Constitution. The district court did

not rule on these Article II constitutional arguments; it instead dismissed the case on

the ground that relator FLFMC could not establish Article III constitutional standing

to bring this action against Wham-O because the relator had not individually been

injured by the alleged patent mismarking. See A2-17; A2 n.2.

This Court subsequently rejected the Article III standing rationale on which the

district court had relied. See Staufferv. Brooks Brothers, Inc., 619 F.3d 1321 (Fed. Cir.

2010). Wham-O concedes that the Stauffer decision is binding on this panel.

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Defendants Brief (Def. Br.) 8. The company, however, in its appellee brief requests

that this Court affirm the judgment of dismissal on the alternative ground that Section

292(b) violates the Take Care and Appointments Clauses because the statute assertedly

fails to provide the necessary Executive Branch control over a qui tam plaintiff.

The United States has an interest in the validity of the Section 292(b) qui tam

provision, embodying a regulatory tool that Congress has repeatedly used. As we

explain in this brief, the substantial history ofqui tam actions and an understanding of

how qui tam suits operate requires the conclusion that this Court should reject

Wham-Os constitutional attack. The Government will address solely Wham-Os

constitutional arguments and takes no view on the ultimate merits of relators claim of

patent mismarking.

It is important to understand that a qui tam case is a hybrid form of suit having

significant characteristics of both a private and a public action. On the one hand, a1

qui tam relator is similar in substantial respects to a plaintiff in a private civil action.

The relator does not hold a position within the United States Government. In his

The term qui tam is an abbreviation of the Latin phrase qui tampro domino rege1

quam pro se ipso in hac parte sequitur, which means who pursues this action on our Lord

the Kings behalf as well as his own. See Vermont Agency of Nat. Resourcesv. United

States ex rel. Stevens, 529 U.S. 765, 768, n.1 (2000) (citing 3 W. Blackstone,

Commentaries on the Laws of England *160 ).

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conduct of a qui tam case, the relator does not owe primary allegiance to the

Government. And, unlike a public official conducting litigation on behalf of the

United States, a relator has a personal financial stake in the suit.2

On the other hand, a qui tam suit is an action created primarily to advance the

public interest. Aqui tam complaint does not allege that a relator was personally

injured by the defendants unlawful conduct; rather, the gravamen of a qui tam suit is

an allegation of wrong done to the Federal Government or a failure to abide by

regulatory requirements. And, because the Government is generally entitled to at least

half of any recovery in such actions, qui tam litigation can immensely benefit the United

States financially, as well as provide a deterrent to impermissible conduct.

Accordingly, as we explain in this brief, the qui tam provision in Section 292(b)

in no way facially violates the constitutional separation of powers doctrine. Every

district court but one that has addressed these issues is in agreement. See, e.g., Pequignot

v. Solo Cup Co., 640 F. Supp. 2d 714, 724-28 (E.D.Va. 2009); Shizzle Pop, LLC v.

Indeed, the premise behind thequi tam

mechanism is that a plaintiff will be

2

motivated in substantial part by the desire to further his own private interest. See

United States ex rel. Marcusv. Hess, 317 U.S. 537, 541 n.5 (1943) ([Qui tam statutes are]

passed upon the theory, based on experience as old as modern civilization, that one of

the least expensive and most effective means of preventing frauds on the treasury is to

make the perpetrators of them liable to actions by private persons acting, if you please,

under the strong stimulus of personal ill will or the hope of gain.).

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Wham-O, Inc., Case No. CV 10-3491 PA, 2010 WL 3063066, at *3 (C.D. Cal., Aug. 2,

2010); Pub. Patent Found., Inc. v. Glaxo Smith Kline Consumer Healthcare, L.P., Case. No.

2:09-cv-05881, slip. op., at 5-7 (S.D.N.Y. Mar. 22, 2001); Luka v. Procter & Gamble, Co.,

Case No. 10-cv-2511, slip. op., at 9-16 (N.D. Ill. Mar. 28, 2011); but see Unique Product

Solutions, Ltd.v. Hy-Grade Valve, Inc., Case No. 5:10-CV-1912, 2011 WL 924341, at *2-

*4 (N.D. Ohio March 14, 2011), appeal docketed, No. 2011-1254 (Fed. Cir. Mar. 16,

2011).

Qui tam statutes have a lengthy pedigree in England and Colonial America. And

the earliest congressional sessions which included many of the Framers of the

Constitution enacted numerous qui tam statutes. Critically for the constitutional

issue before this Court today, most or all of these statutes were like Section 292(b), in

that they did not include the measure of Executive Branch litigation control that

Wham-O now contends is constitutionally required.

Further, contrary to Wham-Os position, the Executives prosecutorial discretion

does not, as a constitutional mandate, include the power to bar other parties from

filing their own suits under statutory schemes that permit enforcement through both

governmental and private actions.

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Given that the Government has not attempted in any way to take over and

dismiss or otherwise restrict or limit relator FLFMCs action in this case, the only

separation of powers issue actually posed here is whether a relator by merely filing suit

impermissibly impinges on the Executives prosecutorial discretion. Aqui tam suit

initiated by a relator pursuant to Section 292(b) could impinge on the Executives

constitutionally assigned functions only if the Constitution categorically forbids the qui

tam mechanism or requires affirmative authorization from the Executive Branch before

the suit can proceed. As we demonstrate below, the Constitution does neither of those

things.

The thrust of Wham-Os argument is that Section 292(b) is unconstitutional

because it provides no express mechanism by which the Executive Branch can intervene

in a qui tam suit or bring it to a close. We assume for present purposes that the absence

of such authority would present additional constitutional considerations. But not only

has the Government not sought to terminate this civil action, it also has not sought to

intervene on the merits of the FLFMCs claim.

The possibility that a substantial constitutional issue might be raised in a

hypothetical future suit is no reason to declare Section 292(b) invalid on its face, or as

applied here. If the Government seeks to intervene in a future suit brought under

Section 292(b) or to have such a suit terminated, a court might still avoid any

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constitutional difficulty by construing other relevant statutory and Federal Rule

provisions to allow the Government to achieve its objective. But it is both unnecessary

and inappropriate for the Court in this case to try to resolve those hypothetical

statutory and constitutional issues here where the Government has not sought (and

failed) to intervene in or terminate this Section 292(b) case.

Although the district court here did not rule on Wham-Os Article II claims, we

urge this Court to reach them now. These identical issues are pending in many district

courts around the United States, all of which are within the appellate jurisdiction of

this Court. See 28 U.S.C. 1295(a). Thus, by ruling on these strictly legal issues now,

this Court will save considerable judicial resources nationwide by making it

unnecessary for the many district courts to wrestle with them.

ARGUMENT

Judging the constitutionality of an Act of Congress is the gravest and most

delicate duty that [a] Court is called on to perform. Blodgett v. Holden, 275 U. S. 142,

147-148 (1927) (Holmes, J., concurring). Thus, when a court is asked to invalidate a

statutory provision that has been approved by both Houses of the Congress and signed

by the President, * * * it should only do so for the most compelling constitutional

reasons. Mistretta v. United States, 488 U.S. 361, 384 (1989) (internal quotation marks

omitted). As described herein, Wham-O has not met this burden.

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I. THE PURPOSE AND HISTORY OF THE GOVERNING STATUTORY

SCHEME IN SECTION 292 STRONGLY SUPPORT ITS

CONSTITUTIONALITY

As noted above, 35 U.S.C. 292(a) provides that any person who commits

specified acts, such as affixing to a product a mark that falsely asserts that the item is

patented, with the intent to deceive the public, [s]hall be fined not more than $500

for every such offense. The current appeal revolves around the qui tam provision in

Section 292(b), which 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.

This qui tam provision sprang from Congress judgment that deceptive patent

mismarking * * * is harmful and should be prohibited. Stauffer, 619 F.3d at 1325.

Congress interest in preventing false marking was so great that it enacted a statute

which sought to encourage third parties to bring qui tam suits to enforce the statute.

Forest Group, Inc. v. Bon Tool Co., 590 F.3d 1295, 1303 (Fed. Cir. 2009).

The rationale behind the statutory prohibition against false marking of patents

is that a properly marked patented article provides the public with a ready means of

discerning the status of the intellectual property embodied in an article of manufacture

or design. Bonito Boats, Inc.v. Thunder Craft Boats, Inc., 489 U.S. 141, 162 (1989).

This rationale is consistent with federal patent policy, which recognizes an important

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public interest in permitting full and free competition in the use of ideas which are in

reality a part of the public domain. Lear, Inc.v.Adkins, 395 U.S. 653, 670 (1969).

False marking harms the public interest because it misleads the public into

believing that a patentee controls the article in question (as well as like articles),

externalizes the risk of error in the determination, placing it on the public rather than

the manufacturer or seller of the article, and increases the cost to the public of

ascertaining whether a patentee in fact controls the intellectual property embodied in

an article. Clontech Labs., Inc.v. Invitrogen Corp., 406 F.3d 1347, 1356-57 (Fed. Cir.

2005) (footnote omitted).

A. Qui Tam Provisions Like Section 292(b) Have a Sterling Pedigree in the

Law of the United States.

The essence of the qui tam mechanism is that a private party may bring suit

because of a wrong done to the public, and is entitled to a share of the judgment if the

action is successful. Several centuries ago Blackstone explained that:

these forfeitures created by statute are given at large, to any

common informer; or, in other words, to any such person or

persons as will sue for the same; and hence such actions are

called popular actions, because they are given to the people

in general.

Sometimes one part is given to the king, to the poor, or

to some public use, and the other part to the informer or

prosecutor. * * * But if anyone hath begun action, no other

person can pursue it * * *.

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3 W. Blackstone, Commentaries *160.

Central to the Constitutional defense of qui tam provisions is the Supreme

Courts observation that [s]tatutes providing for actions by a common informer, who

himself had no interest whatever in the controversy other than that given by statute,

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, 317 U.S., at 541 n.4;

accord Marvin v. Trout, 199 U.S. 212, 225 (1905).

As the Supreme Court explained in Vermont Agency, the qui tam mechanism

developed in England in the 13 century, as a common law device, and soon becameth

a standard enforcement mechanism in various statutory schemes. 529 U.S. at 774-76.

This mechanism was adopted by the American colonies and enforced in colonial and

pre-Constitution courts. See, e.g.,C.J. Hendrey Co. v. Moore, 318 U.S. 133, 145-48

(1943).3

In C.J. Hendrey Co., 318 U.S. 133, the Supreme Court discussed the development3

in England of the use ofqui tam procedures for seizures and forfeitures to the Crown

of ships or articles used in violation of the law, whereby a qui tam relator brought a civilaction and received a share of the forfeiture proceeds. In that opinion, the Court cited

and discussed several qui tam cases of this type decided by colonial and pre-Constitution

courts in America. Id., at 145-48 (citing and discussing Hammond qui tam v. Sloop

Carolina, a 1735 case in New York, six other New Yorkqui tam cases between 1752 and

1772, and Phile qui tamv. The Ship Anna, a 1787 Pennsylvania case).

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By the time the Constitution was ratified, statutes authorizing qui tam suits were

well known in England for several hundred years and also had been utilized by the

colonial legislatures. See Note, The History and Development of Qui Tam, 1972 Wash.

U. L.Q. 81, 83. The Supreme Court in Vermont Agency recognized that [q]ui tam

actions appear to have been as prevalent in America as in England, at least in the

period immediately before and after the framing of the Constitution. 529 U.S., at

776.

Indeed, the Constitution itself provided the basis for early Congresses to create

causes of action in a way closely related to the type ofqui tam action brought here by

relator FLFMC. Pursuant to Congress power to grant Letters of Marque and

Reprisal, and make Rules concerning Captures on Land and Water (U.S. Const., Art.

I, Sec. 8, cl. 11), these Congresses authorized the President to commission private ships

(known as privateers) to capture enemy vessels and vessels engaged in illegal trade

with our enemies. Under the prize statutes, the captor could bring the captured vessel

into the jurisdiction of the United States and file an action against the ship in federal

court. If the vessel was condemned, the captor was entitled to the ship or its value.

See, e.g., The Sally, 12 U.S. (8 Cranch) 382, 384 (1814) (Story, J.); see also The Nassau,

71 U.S. (4 Wall.) 634, 640-642 (1866). As with the idea behind Section 292(b), the

premise of these prize statutes was that important sovereign purposes could be

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furthered by assigning to private persons the task of attacking enemy shipping, and

making this system succeed through the offer of a bounty collected through an action

in federal court.

As the Supreme Court has noted, immediately after the framing, the First

Congress enacted a considerable number of informer statutes. Vermont Agency, 529

U.S.,at 776. Significantly, at least five of these statutes hewed closely to the model

described by Blackstone, and were like Section 292(b); i.e., they provided for a division

of any recovery between the informer and the Government, authorized the informer

to file his own suit, placed no restrictions on the class of persons who could serve as

relators, and important in light of Wham-Os argument provided no mechanisms

for the Executive to control the litigation. See Vermont Agency, 529 U.S. at 777 n.64

(listing and describing such statutes).5

Indeed, the first Congress diffused responsibility for litigation to vindicate public4

interests, vesting the responsibility in some federal officers not subject to direct

presidential control, state officials clearly beyond federal, Executive Branch control,

and private individuals wholly outside the executives control. L. Lessig & C.

Sunstein, The President and the Administration, 94 Colum. L. Rev. 1, 18-20 (1994).

See Act of Mar. 1, 1790, ch. 2, 3, 1 Stat. 102 (census taking); Act of July 5, 1790,5

ch. 25, 1, 1 Stat. 129 (extending census provisions to Rhode Island); Act of July 20,

1790, ch. 29, 1, 4, 1 Stat. 131, 133 (regulation of seamen); Act of July 22, 1790, ch.

33, 3, 1 Stat. 137-138 (trade with Indians); Act of Mar. 3, 1791, ch. 15, 44, 1 Stat.

209 (duties on liquor).

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Act like Section 292(b) made no provision for intervention or control by the

Executive Branch over a relators suit. See Act of March 2, 1863, at ch. 67, 6, 12

Stat. 698.

By the twentieth century, qui tam actions had become so ingrained in the menu

of regulatory devices that the Supreme Court casually remarked that Congress has

power to choose this method[.] United States ex rel. Marcus, 317 U.S., at 542; see also

KingsleyBooks, Inc.v. Brown, 354 U.S. 436, 441 (1957) (Whether proscribed conduct

is to be visited by a criminal prosecution or by a qui tam action or by an injunction or

by some or all of these remedies in combination, is a matter within the legislatures

range of choice); Tignerv. Texas, 310 U.S. 141, 148 (1940) (Whether proscribed

conduct is to be deterred by qui tam action or triple damages or injunction, or by

criminal prosecution, or merely by defense to actions in contract, or by some, or all, of

these remedies in combination, is a matter within the legislatures range of choice.).

There are currently several qui tam provisions in the United States Code in

addition to Section 292(b) and the False Claims Act. In Vermont Agency, the Supreme

Court identified several that had been enacted prior to 1900, but were still in existence.

See 529 U.S., at 768 n.1 (discussing 25 U.S.C. 201 (penalties for violation of laws

protecting commercial interests of Native Americans); 18 U.S.C. 962 (forfeitures of

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vessels privately armed against friendly nations); 46 U.S.C. 80103(b) (forfeiture of7

vessels taking undersea treasure from the Florida coast)). Congress has also enacted8

qui tam statutes of more recent vintage that remain on the books. See 26 U.S.C.

7341 (forfeiture of sums paid for property sold to avoid tax); 17 U.S.C. 1326 (penalty

for false marking of copyright of vessel designs).

Moreover, Section 292(b) and its antecedents have not simply constituted a

historical artifact. Congress has revisited and amended this statute on more than one

occasion. See Act of July 19, 1952, ch 950, 1, 66 Stat. 814; Act of Dec. 8, 1994, P.L.

103-465, Title V, Subtitle C, 533(b)(6), 108 Stat. 4990. And the statute has been

used byqui tam relators in various reported decisions through its 169 years of existence.

The earliest reported qui tam case under the statute that we have located is Nichols v.

Newell, 18 F. Cas. 199 (C.C.D. Mass. 1853), and other reported decisions demonstrate

its continued use. See, e.g., Winnev. Snow, 19 F. 507 (D. N.Y. 1884); Londonv. Everett

H. Dunbar Corp. 179 F. 506 (1st Cir. 1910); Sippit Cups, Inc.v. Michaels Creations, Inc.,

The previous cite for this statute was 46 U.S.C. 723. This statute is now found7

at 46 U.S.C. 80103(b).

Vermont Agency also identified 25 U.S.C. 81 (providing a cause of action and8

share of recovery for contracting with Native Americans in an unlawful manner) as

being on the books at the time of that decision; however, the qui tam provisions of that

statute were repealed when Section 81 was amended in 2000.

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180 F. Supp. 58 (E.D.N.Y. 1960); Brose v. Sears, Roebuck & Co., 455 F.2d 763 (5th Cir.

1972).

B. The History of Qui Tam Statutes in the United States Confirms theConstitutionality of Section 292(b).

We have recounted in some detail the history and continuing practice of

Congress legislating, and the courts enforcing, qui tam provisions not simply to provide

background for the constitutional analysis required by Wham-Os challenge to Section

292(b). Rather, this history and practice is constitutionally significant in its own right.

As the Supreme Court repeatedly has instructed, the way that constitutional provisions

have been applied and understood over a lengthy period give those constitutional

provisions meaning. See, e.g., Mistretta, 488 U.S., at 401 (traditional ways of

conducting government * * * give meaning to the constitution) (quoting Youngstown

Sheet & Tube Co. v. Sawyer, 343 U.S. 579, 610 (1952) (Frankfurter, J., concurring)

(internal quotation marks omitted); The Pocket Veto Case, 279 U.S. 655, 689 (1929)

(Long settled and established practice is a consideration of great weight in

constitutional adjudication); McCulloch v. Maryland, 17 U.S. 316, 401 (1819)

(constitutional issues if not put at rest by the practice of the government, ought to

receive a considerable impression from that practice).

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As the Supreme Court has explained, legislation passed by the first [C]ongress

assembled under the [C]onstitution, many of whose members had taken part in

framing that instrument, * * * is contemporaneous and weighty evidence of its true

meaning. Wisconsin v. Pelican Ins. Co., 127 U.S. 265, 297 (1888). The Court has

repeatedly laid down the principle that a contemporaneous legislative exposition of the

Constitution, when the founders of our Government and framers of our Constitution

were actively participating in public affairs, acquiesced in for a long term of years, fixes

the construction to be given its provisions. Myersv. United States, 272 U.S. 52, 175

(1926); accord Marshv. Chambers, 463 U.S. 783, 790 (1983); Bowsherv. Synar, 478 U.S.

714, 723-24 (1986).

We recognize that there are limits to the use of history alone in interpreting the

Constitution. For example, the First Congress also passed the statute struck down by

the Supreme Court in Marbury v. Madison, 5 U.S. (1 Cranch) 137 (1803). But, in this

instance, as demonstrated already, the historical evidence from long English practice,

the American colonial experience, and the early sessions of Congress repeatedly

utilizing the qui tam mechanism is overwhelming.

Moreover, not only did the early Congresses understand qui tam actions to be

compatible with Article II, but the ongoing practice and acquiescence by all three

branches throughout our nations history should lay the question * * * at rest. The

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Laura, 114 U.S. 411, 416 (1885); see Lithographic Co. v. Sarony, 111 U.S. 53, 57 (1884)

(while the [t]he construction placed upon the Constitution by early Congresses is

of itself entitled to very great weight, when the rights thus established have not been

disputed during a period of nearly a century, it is almost conclusive);see also United

States v. Curtiss-Wright Export Corp., 299 U.S. 304, 328 (1936) ([T]he practical

construction of the Constitution, as given by so many acts of Congress, and embracing

almost the entire period of our national existence, should not be overruled, unless

upon a conviction that such legislation was clearly incompatible with the supreme law

of the land.).

Historical evidence and practice is especially compelling when analyzing the

Constitutions separation of powers, a concept that depends largely upon common

understanding of what activities are appropriate to legislatures, to executives, and to

courts. Lujan v. Defenders of Wildlife, 504 U.S. 555, 559-60 (1992); see, e.g., Vermont

Agency, 529 U.S., at 774 (Article III's restriction of the judicial power to Cases and

Controversies is properly understood to mean cases and controversies of the sort

traditionally amenable to, and resolved by, the judicial process.); Mistretta, 488 U.S.,

at 401 (relying on a 200-year tradition to determine whether separation of powers has

been offended); cf. Youngv. United States ex rel. Vuitton et Fils S.A., 481 U.S. 787, 793,

795-96 & n.7, 799-800 (1987) (reviewing the long history of contempt proceedings to

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conclude that courts have authority to appoint private attorneys to prosecute

contempt, and such actions are not an execution of the criminal law in which only

the Executive Branch may engage). Indeed, in Morrisonv. Olson, 487 U.S. 654 (1988),

concerning the validity of the Independent Counsel statutory scheme, the Supreme

Courts analysis of Executive Branch control was necessary because [t]here [was] no

real dispute that the functions performed by the independent counsel are executive

in the sense that they are law enforcement functions that typically have been undertaken

by officials within the Executive Branch. 487 U.S., at 691 (emphasis added). That is

not the case for qui tam actions.

Thus, when the Supreme Court held that a federal courts hearing a qui tam case

does not exceed the Article III judicial power, it is not at all surprising that it looked

to the long tradition ofqui tam actions in England and the American Colonies, which

the Court examined in some detail. 529 U.S., at 774-78. The Court found this

history well nigh conclusive with respect to the [Article III] question. 529 U.S., at 777.

Similarly, this Court, in its recent Staufferruling recognized and relied upon the

Supreme Courts focus on history in Vermont Agency. In concluding that qui tam

plaintiffs under Section 292(b) have standing, this Court looked to examples of early

qui tam statutes (619 F.3d, at 1326-27), and explained that, given the Supreme Courts

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heavy reliance upon that historical underpinning, * * * the question [is] decided, that

the United States may assign even a purely sovereign interest. 619 F.3d, at 1327, n.3.

Although the Supreme Court in Vermont Agency expressed no view as to whether

qui tam suits violate Article II (529 U.S. at 778 n.8), the same historical pedigree that

the Supreme Court found conclusive on the issue of Article III standing also establishes

that qui tam provisions are permitted under Article II. As the en banc Fifth Circuit

reasoned, with regard to the False Claims Act qui tam provision, it is logically

inescapable that the same history that was conclusive on the Article III question * * *

is similarly conclusive with respect to the Article II question. Riley v. St. Luke's

Episcopal Hosp., 252 F.3d 749, 752 (5th Cir. 2001) (en banc). And, indeed, although

the Supreme Court in Vermont Agency expressed no opinion regarding the role of

history in evaluating the Article II issues, two Justices noted that the long, unbroken

history is also sufficient to resolve the Article II question. 529 U.S., at 801 (Stevens,

J., dissenting).

Wham-O suggests the folly of placing emphasis on the history ofqui tam

actions by pointing to two particular statutes passed in the first decades of the

Republic, which in Wham-Os view are surely not constitutional. Def. Br. 45. To be

clear, we do not argue that every statute passed by early Congresses was constitutional.

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See supra at 17. Rather we argue that a broad and longstanding consensus, amongst

both the Constitutions Framers and subsequent generations, is strong evidence that

the qui tam device is constitutional. Wham-Os two examples do not alter the fact that

qui tam actions generally were understood not to infringe on core Executive powers,

even if, as discussed below, some were constitutionally problematic.

Wham-Os examples, moreover, do not stand for much when analyzingSection

292(b) because neither one appears to create the same type of classic qui tam action that

any person may bring. And each statute raises constitutional issues not present here.

One example (which Wham-O never suggests would violate Article II) created a penalty

for employment of other than a free white person in the postal service, Def. Br. 46

(quoting 2 Stat. 189, 191), and provided that half of that penalty would go to the

person who shall sue for, and prosecute, the same. 2 Stat. 191. It is not apparent

whether this statute, like Section 292(b), authorized any person to sue, or instead

merely provided financial compensation to parties that alleged a direct injury or state

prosecutors who pursued the case in an era before centralized, full-time U.S. Attorneys

(see Lessig & Sunstein, supra, at 18-20); or it may have provided a bounty only, that

informers could collect once the fine was assessed. Vermont Agency, 529 U.S., at 777.

Regardless, this provision would have raised constitutional issues not present

here because, as Wham-O notes (see Def. Br. 46), the statute certainly would violate

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federal due process and equal protection guarantees (see Bollingv. Sharpe, 347 U.S. 497

(1954)). Moreover, if Wham-O is correct that this statute authorized any person to sue,

the statute may have raised additional constitutional concerns not relevant to Section

292(b) by authorizing private parties directly to interfere in the conduct of an Executive

department, the Postal Service. See Morrison, 487 U.S., at 662-63 (describing the

Independent Counsels power to investigate Executive Branch officials and force the

Executive Branch to halt its own investigations); cf. Lujan, 504 U.S., at 577 (suggesting

that if Congress creates a civil action to compel action by Executive Branch officers, it

would interfere with the Presidents duty, to take Care that the Laws be faithfully

executed, Art. II, 3 ).9

Finally, it bears repeating that even if Wham-O can produce constitutionally

problematic examples, a few bad apples in a 220-year history obviously do not disprove

Wham-Os other example was a prohibition against theft and embezzlement of,9

inter alia, military supplies and spoils belonging to the United States and goods from

places under the sole and exclusive Jurisdiction of the United States. 1 Stat. 116.

The statute provided that on conviction, the perpetrator would be fined four times

the value of the stolen property with one half of that fine going to the informer and

Prosecutor. Ibid. The statute might not have created a qui tam action that any person

could bring. And even if it did, despite Wham-Os query whether the relator wasentitled to administer half of the blows when a convict was publicly whipped (Def. Br.

45-46) a proposition that the statutes text does not support (see 1 Stat. 116) the

statute did not surely run afoul of the Article II requirements, (Def. Br. 46). Indeed,

it resembled early versions of the False Claims Act that the Supreme Court never called

into question.

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that there is a long pedigree of qui tam statutes and that this pedigree places a

tremendous burden on Wham-O to show that all three branches of government have

been getting it so wrong for so long.

In short, the qui tam method for achieving public goals was well known to the

Framers of the Constitution and the Members of the first sessions of Congress. They

viewed qui tam actions as perfectly permissible and did not believe, as Wham-O urges,

that the Constitution requires direct Executive Branch control over qui tam plaintiffs

and lawsuits. Two centuries of judgments, made by Congresses and Presidents,

reaffirm that understanding that qui tam actions are perfectly constitutional. [T]he

practical construction of the Constitution, as given by so many acts of Congress, and

embracing almost the entire period of our national existence, should, in and of itself,

resolve this case. Curtiss-Wright, 299 U.S., at 327-328.

II. THE QUI TAM MECHANISM IN SECTION 292 DOES NOT FACIALLY

VIOLATE CONSTITUTIONAL SEPARATION OF POWERS

PRINCIPLES.

This case does not involve the paradigmatic disruption to the separation of

powers about which courts must remainvigilan[t]: encroachment or aggrandizement.

See Mistretta, 488 U.S., at 382. By creating qui tam actions, Congress has not usurped

the Presidents power or injected itself into the execution of its laws. See, e.g., Bowsher,

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478 U.S., at 726-27; Myers, 272 U.S., at 161. Instead, Wham-O alleges that for 220

years, Congress has impermissibly undermined the role of the Executive Branch by

using qui tam actions to preven[t] the Executive Branch from accomplishing its

constitutionally assigned functions. Morrison, 487 U.S. at 695 (quoting Nixon v.

Administrator of General Services, 433 U.S. 425, 443 (1977)); see also Clinton v.Jones, 520

U.S. 681, 701 (1997) ([T]he separation-of-powers doctrine requires that a branch not

impair another in the performance of its constitutional duties). Both the history of

qui tam actions and a common sense understanding of how they operate demonstrate

that this is not the case.

A. History and Practice Demonstrate that Section 292(b) Does Not

Prevent the President from Accomplishing His Constitutionally

Assigned Functions.

As we have shown, the long history and established practice ofqui tam actions

is highly instructive here. The Constitution does not define what it means for a

President to take Care that the Laws be faithfully executed (U.S. Const., Art. II,

3), or what constitutes an impermissible interference with that duty. In theory, one

could argue that any private cause of action that vindicates some public purpose is a

usurpation of the Presidents responsibility to execute the laws. But in reality, the

requirements of the Take Care Clause necessarily turn on the common

understanding of the Presidents exclusive responsibilities and thus of what sorts of

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litigation can be conducted by private parties to vindicate public interests. Lujan, 504

U.S., at 559-60. The pre-constitutional history ofqui tam actions, the many such

provisions passed by Congress and signed by the President, and the Supreme Courts

application of such provisions in numerous cases, demonstrate that understanding.

The Executive Power and Take Care Clauses of the Constitution, like any

ambiguous constitutional language, could not be understood without reference to the

* * * common law, the principles and history of which were familiarly known to the

framers of the Constitution. Schick v. United States, 195 U.S. 65, 69 (1904); cf.

Vermont Agency, 529 U.S., at 774 (Article III's restriction of the judicial power to

Cases and Controversies is properly understood to mean cases and controversies of

the sort traditionally amenable to, and resolved by, the judicial process.). And as we

have explained, neither clause could be understood to prohibit the qui tam method for

achieving public goals, a method that was well known to the Framers of the

Constitution and the Members of the first sessions of Congress, and was obviously

viewed by them as fully consistent with the new constitutional scheme they were

creating. It would have been quite odd for the individuals who had just spent immense

effort molding a new governmental structure to have enacted immediately thereafter

not simply one, but a score of statutes violating that very structure. There is no

evidence that early Congresses and Presidents were troubled by the qui tam mechanism

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or feared that it posed a threat to the new system of government. As already discussed,

these considerations must be highly influential for this Court today.

Thus, the Supreme Court has on numerous occasions enforced qui tam

provisions without raising doubts about their constitutionality. See, e.g., Marvin, 199

U.S., at 225; United States ex rel. Marcus, 317 U.S., at 541; Hughes Aircraft Co.v. United

States ex rel. Schumer, 520 U.S. 939, 949 (1997). And the Court has stated that it views

qui tam mechanisms as merely one of various legitimate regulatory devices: Whether

proscribed conduct is to be deterred byqui tam action or triple damages or injunction,

or by criminal prosecution, or merely by defense to actions in contract, or by some, or

all, of these remedies in combination, is a matter within the legislatures range of

choice. Tigner, 310 U.S., at 148; accord Kingsley Books, Inc., 354 U.S., at 441.

The Supreme Courts decision in United States ex rel. Marcus is particularly

revealing. The Court was asked to interpret the False Claims Acts qui tam provision

and determine whether a qui tam relator could sue on the basis of information learned

from a criminal indictment. At a time when the False Claims Act provided for no

Executive intervention into qui tam suits, the Government asked the Court to interpret

the qui tam action narrowly, arguing that once the Government is aware of the wrongful

conduct, control of litigation should be left to the Attorney General (317 U.S., at

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547). The Court rejected that argument because it was addressed to the wrong forum

and is a matter for Congress to decide. Ibid.

The underlying premise of the Marcus Courts ruling is that it was open to

Congress to create qui tam actions if it so desired, and it was also open to Congress to

determine the terms under which qui tam suits could proceed. The Court did not

engage in any Article II analysis because the Government did not argue that the

Constitution limits to the Executive the right to initiate litigation to vindicate the

interests of the United States. It is noteworthy, however, that the Court adopted a

construction of the False Claims Act that increased the scope of cases that a qui tam

plaintiff could bring over the objections of the Government a construction that,

according to Wham-O, would create constitutional infirmities.

It is difficult to imagine that despite this centuries-long pedigree, all this time

Congress has beenprevent[ing] the Executive Branch from accomplishing its

constitutionally assigned functions. Morrison, 487 U.S., at 695 (quoting Nixon v.

Administrator of General Services, 433 U.S. 425, 443 (1977)).

It is true, as Wham-O notes, that when several courts of appeals have rejected

Take Care Clause challenges to the False Claims Act, they did not find the history

in and of itself to be dispositive. Not much can be gleaned, however, from these

courts functional analysis. There are multiple arguments in support of the False

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violate Article II, is certainly a touchstone illuminating their constitutionality. Id., at

753.10

B. Section 292(b) Does Not Impermissibly Interfere with the PresidentsDuties

Wholly aside from the long history ofqui tam actions, for the reasons explained

below, Section 292(b) does not violate the separation of powers doctrine by unduly

interfering with the Presidents constitutional duties.

1. The Constitution permits Congress to create private rights for the purpose

of vindicating public interests. And as the Supreme Courts approach to Article III

standing for qui tam plaintiffs makes clear, a relator does not sue as the United States,

but instead sues as a private person, even though his suit helps accomplish public goals.

See Davis v. Passman, 442 U.S. 228, 241 (1979) (Statutory rights and obligations are

established by Congress, and it is entirely appropriate for Congress, in creating these

Since Vermont Agency, one Circuit has addressed the issue narrowly. In United10

States ex rel. Stone v. Rockwell Intl Corp., 282 F.3d 787 (10th Cir. 2002), the Government

initially declined to intervene in the qui tam action, but later did so. Given that the

Government intervened and was a full and active participant in the litigation as it

jointly prosecuted the case, the court was unconvinced * * * that the presence of a qui

tam relator * * * so hindered the Government's prosecutorial discretion as to deprive

the Government of its ability to perform its constitutionally assigned responsibilities.

Id. at 806; see also United States ex rel. Ridenourv. Kaiser-Hill Co., L.L.C., 397 F.3d 925

(10th Cr. 2005).

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rights and obligations, to determine in addition, who may enforce them and in what

manner.)

Federal law frequently permits private parties to vindicate public interests

through litigation. In many federal statutes, such as Title VII of the Civil Rights Act,

42 U.S.C. 1983, and the Sherman Antitrust Act, Congress has provided a private

right of action by which aggrieved parties may both vindicate their rights under federal

law and help achieve public objectives such as adherence to antidiscrimination or

antitrust laws.

Many federal regulatory schemes contain provisions for citizen suits that allow

private citizens to bring lawsuits, and even seek monetary penalties, primarily for the

purposes of vindicating public interests. See, e.g., Clean Water Act (33 U.S.C.

1365(a)(1), 1319(d)); Endangered Species Act (16 U.S.C. 1540(g)).

Congress may, moreover, authorize remedies such as punitive damages to be

awarded to private parties, even though such damages serve no compensatory function,

but are instead designed to advance the public interest in deterrence and punishment.

See, e.g.,Smithv. Wade, 461 U.S. 30, 51 (1983) (punitive damages may be awarded

under 42 U.S.C. 1983 for intentional violations of federal law); Memphis Community

School Districtv. Stachura, 477 U.S. 299, 306, n.9 (1986) ([t]he purpose of punitive

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damages is to punish the defendant for his willful or malicious conduct and to deter

others from similar behavior).11

All of these provisions vindicate a societal interest in deterring and punishing

violations of federal law, and they do so by enlisting private plaintiffs. Moreover, they

frequently permit private parties to file lawsuits, even if governmental officials believe

that no violation has occurred. Such common provisions raise no separation of powers

concerns.

Congress also has given the Executive Branch authority to enforce most or all

of these statutes, including through litigation that might in many respects parallel suits

brought by private parties. The fact that Congress has provided these alternative means

of law enforcement does not raise separation of powers problems, even though the

private causes of action may, in many applications, obstruct or conflict with the

preferred strategy of the Executive (including the litigation strategy). As these statutes

demonstrate, the fact that a private person can pursue litigation to enforce federal

statutes in no way violates the Presidents constitutionally assigned functions.

Similarly, in Section 292(b), Congress created a cause of action whereby private

individuals, seeking a personal benefit, would serve the function of deterring unlawful

For examples of federal statutes expressly authorizing the award of punitive11

damages, see, e.g., 15 U.S.C. 1691e(b); 25 U.S.C. 305e(b) & (c); 45 U.S.C. 711(j).

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conduct. As it has in many statutes, Congress has created a concrete private interest

in the outcome of a suit against a private party for the Governments benefit, by

providing a cash bounty for the victorious plaintiff. Lujan, 504 U.S., at 572-573; see

also Stauffer, 619 F.3d, at 1326. As the Supreme Court observed in Vermont Agency,

[t]here is no doubt that a qui tam plaintiff has his own concrete private interest that

he seeks to vindicate. 529 U.S., at 772. This interest is not merely that of statutorily

designated agent of the United States. Ibid. Rather, it is the plaintiffs own interest,

created by statute. See id., at 773-74.12

Like a plaintiff in a citizen suit or a party seeking punitive damages, a qui tam

plaintiff is not merely engaging in law enforcement for its own sake, but is pursuing his

own interests even while also benefitting the public. Thus, although Congress intended

One of Wham-Os amici argues that a private action under Section 292(b) is12

different from a private action under the False Claims Act because the former

vindicates only the Governments sovereign interest whereas the latter addressees

both proprietary and sovereign injuries. Brief for the Cato Institute and Walter

Olson as Amicus Curiae 19-21. Even if that framework of public interests, which this

Court declined to rely on in Stauffer(619 F.3d, at 1326), is sound, false patent marking

is not so easily categorized. Like a company that obtains fraudulent payments from the

Government, a company that engages in false marking not only harms the public but

also takes from the Government what is not theirs: the imprimatur of the

Governments stamp of novelty and inventiveness. Indeed, a False Claims Act suit is

not always so easily categorized either. Under that Act, a plaintiff need not prove that

the Government suffered a financial loss. See 31 U.S.C. 3729; see, e.g., United States

ex rel. A+ Homecare, Inc. v. Medshares Management Group, Inc., 400 F.3d 428, 446 (6th

Cir. 2005).

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for qui tam suits to serve public interests, the Supreme Court has recognized that the

relators primary purpose in filing the suit is to acquire money for himself. See Hughes

Aircraft Co., 520 U.S., at 949 (As a class of plaintiffs, qui tam relators are different in

kind than the Government. They are motivated primarily by prospects of monetary

reward rather than the public good).

One might argue that the nature of that private interest deprives the plaintiff of

Article III standing an argument that the Supreme Court and this Court have

rejected, see Vermont Agency, 529 U.S., at 778; Stauffer, 619 F.3d, at 1325. But a

concrete private interest created by a qui tam statute has no greater effect on the

Presidents control of core executive powers than any other interest created by statute.

If a plaintiff who goes to the store and buys a frisbee can sue for false marking and

collect substantial statutory penalties without offense to Article II a claim that is

indistinguishable from citizen suits or punitive damages then it makes no sense to say

that Article II is violated if a plaintiff without a frisbee initiates a proceeding.

2. Wham-Os attack on Section 292(b) proceeds from the assumption that the

Constitution requires Congress to empower the Executive, and only the Executive, to

file and litigate civil suits that vindicate public interests. Wham-O asserts that because

this function is constitutionally assigned exclusively to the Executive, Congress may not

empower private persons to bring such suits. That position is incorrect. Private

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enforcement suits are a supplementary method of enforcement to the unitary and

plenary power of government prosecution residing in the Executive Branch.

If the Constitution vested the responsibility for bringing a particular suit (e.g.,

to enforce Title VII or the antitrust laws) exclusively in an official of the United States

Government (as, for example, the Constitution vests the pardon power exclusively in

the President), then serious constitutional questions would be raised by any

Congressional attempt to vest part or all of that authority in private persons outside the

Executive Branch. But the Constitution imposes no such requirement.

In other words, to say that a function must be performed by the Executive

Branch if the Government is to perform it at all does not answer the question whether

the Constitution requires that the function be performed exclusively by the

Government. Article II enshrines the basic principle that those who are employed

in the execution of the law will be answerable to the President, because Article II

makes a single President responsible for the actions of the Executive Branch. Free

Enter. Fundv. Pub. Co. Accounting Oversight Bd., 130 S. Ct. 3138, 3155, 3154 (2010)

(quoting 1 Annals of Cong. 463, 499 (1789) (J. Madison) (emphasis added)) (internal

quotation marks omitted). But it does not speak to Presidential control over private

persons who in pursuing private interests also promote public goals. See Young, 481

U.S., at 816 (Scalia, J., concurring) (reasoning that the implementation of the laws *

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* * is at least to the extent that it is publicly exercised executive power) (emphasis

added); see also Morrison, 487 U.S., at 706 (Scalia, J., dissenting) (In what other sense

can one identify the executive Power that is supposed to be vested in the President

(unless it includes everything the Executive Branch is given to do) except by reference

to what has always and everywhere if conducted by government at all been conducted

never by the legislature, never by the courts, and always by the executive.) (emphasis

added).

Thus, in analogous contexts, the Supreme Court has on occasion rejected

arguments that Congress cannot authorize private persons to exercise power that

would, ifassigned exclusively to the Government, be carried out by a particular branch.

For example, the Supreme Court has approved a statute assigning to a private railroad

industry group the power to impose safety codes that were binding on the industry and

private individuals. St. Louis, Iron Mountain, & S. Rwy. Co.v. Taylor, 210 U.S. 281, 285-

87 (1908). The Court found that Congress could validly provide authority to groups

of private miners to set binding rules governing mining claims. Butte City Water Co.v.

Baker, 196 U.S. 119, 126-27 (1905). And the Court has upheld delegation to private

arbitrators. Thomasv. Union Carbide Agric. Products Co., 473 U.S. 568 (1985).

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A qui tam plaintiff does not act as the United States. Significantly for this

discussion, the Supreme Court in Vermont Agency declined to rely on a theory that a qui

tam relator has standing simply because he is the statutorily designated agent of the

United States * * *. 529 U.S., at 772. Rather, the Court found that a qui tam plaintiff

has a concrete, private interest in the outcome of a case. Ibid.

In other words, a qui tam plaintiff is not the Government itself, and is not a legal

representative of the Government. In litigation, a relator does not appear and is not

reasonably understood to appear as the United States. Cf. United States ex rel.

Eisenstein v. City of New York, 129 S. Ct. 2230, 2235 (2009) (In False Claims Act qui tam

litigation, the United States is not a party if it has declined to intervene in the case).

Aqui tam plaintiff like any other private litigant must deal with the Government

as a third party, for example, in the context of discovery requests. And, if choices in

the litigation must be made relating to governmental privileges (e.g., state secrets or

executive privilege), those choices are for the Government alone, and not for a qui tam

relator. Although the judgment ultimately entered in a qui tam action may have

preclusive effect in a subsequent suit brought by the United States, the relators legal

and factual representations (for example, in pleadings and at oral argument) are not

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those of the United States, may be contradicted by representations made by attorneys

for the United States, and are not binding on the United States.

In sum, a private plaintiff in a qui tam case is not a government official and does

not represent the United States. See Riley, 252 F.3d at 755. Only the Executive, and

not the relator, has the power to decide whether the United States will bring suit.13

Hence, a qui tam relator is not interfering with the Presidents constitutionally assigned

functions because the relator is not suing as the United States. And, although his

successful suit benefits himself as well as the United States Treasury, in that sense (and

in other relevant respects) a relator is no different from other private plaintiffs who sue

under federal statutes on their own behalf, but simultaneously vindicate public

purposes.

The fact that under other statutes although not Section 292(b) a relator files a13

qui tam action in the name of the Government (31 U.S.C. 3730(b)(1)), is a

procedural practice that in no way alters this analysis. The use of the term ex rel. in

itself distinguishes qui tam suits from actions that are truly brought by the United States

Government. That caption alerts all concerned to the fact that the suit is actually beingcarried on by a party other than the Government itself. Habeas corpus actions brought

by state prisoners in federal court, for instance, have often been styled United States ex

rel. [State Prisoner] v. [State Warden]. See, e.g., United States ex rel. Jennings v. Ragen, 358

U.S. 276 (1959); and cases cited in Townsend v. Sain, 372 U.S. 293, 310 and nn. 7 &

8 (1963).

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the laws faithfully executed, implies a power to forbid their execution, is a novel

construction of the constitution, and entirely inadmissible.); cf. Davis, 442 U.S., at

241 (Statutory rights and obligations are established by Congress, and it is entirely

appropriate for Congress, in creating these rights and obligations, to determine in

addition, who may enforce them and in what manner.).15

By creating a qui tam action in Section 292(b), Congress determined not only

that patent mismarking is difficult to deter without the assistance or private parties, but

also that it would set in motion an enforcement machinery designed to encourage legal

action to enforce the statute. See Forest Group, 590 F.3d, at 1303 (Congress interest

in preventing false marking was so great that it enacted a statute which sought to

encourage third parties to bring qui tam suits to enforce the statute.); id., at 1303-04

(interpreting Section 292 in light of Congress policy of encouraging substantial private

litigation). This is within Congress power.

Indeed, even in Morrison, where the Independent Counsel was an arm of the15

Government acting at odds with members of the Executive Branch, the Court analyzed

the removal provision to assure itself that the Executive, through the Attorney

General, could assure that the counsel is competently performing his or her statutory

responsibilities in a manner that comports with the provisions of theAct (487 U.S.,

at 692 (emphasis added)), not that the counsel was abiding by the Presidents

discretionary preferences.

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F.3d 1356, 1363 (Fed. Cir. 2010); Clontech Labs., 406 F.3d, at 1352. And a qui tam

action seeking that civil penalty is a civil action. See Pequignot, 608 F.3d, at 1363.

Thus, this Court applies the general statute of limitations for civil fines. Arcadia Mach.

& Tool, Inc. v. Sturm, Ruger & Co., 786 F.2d 1124, 1125 (Fed. Cir. 1986). This Court

applies the civil rules of procedure. See In re BP Lubricants USA Inc. --- F.3d ----, 2011

WL 873147 (Fed. Cir. 2011) ; see also, e.g., G.LeBlanc Corp. v. H. & A. Selmer, Inc., 310

F.2d 449 (7th Cir. 1962). And judgment in favor of a defendant may be appealed16

without violating the Double Jeopardy Clause. Filmon Process Corp. v. Spell-Right Corp.,

404 F.2d 1351, 1355 (D.C. Cir. 1968).

This Court has held that the substantive prohibition against false marking is a

criminal one. Pequignot, 608 F.3d, at 1363; see also Boyd v. Schildkraut Giftware Corp.,

936 F.2d 76, 79 (2d Cir. 1991). That conclusion, however, does not alter the fact that

a qui tam action under Section 292(b) is a civil action to recover a civil fine. See

See Fish v. Manning, 31 F. 340, 340 (S.D.N.Y. 1887) (The sufficiency of the16

complaint is to be determined according to the rules applicable to civil actions, and

according to the state practice in similar or analogous actions at common law, and not

according to the analogies of criminal procedure.); see also, e.g., Channel Master Corp.

v.JFD Electronics Corp., 260 F. Supp. 568 (E.D.N.Y. 1966) (Section 292(b) claim may

be joined with other civil claims); Trabon Engineering Corp. v. Eaton Mfg. Co., 37 F.R.D.

51 (N.D. Ohio 1964) (civil discovery rules apply); Sippit Cups, Inc. v. Michael's Creations,

Inc., 180 F. Supp. 58 (E.D.N.Y. 1960) (defendant must submit to discovery through

deposition); Hawloetz v. Kass, 25 F 765 (CCD NY 1885) (civil burden of proof and

rules of evidence apply).

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Pequignot, 608 F.3d, at 1361-63. Thus, when the patent laws were recodified in 1952,

the Committee report described the changes to the false marking prohibition and

distinguished between the criminal action and the [t]he informer action (a synonym

for qui tam suit). S. Rep. 82-1979, at 31; cf. Kingsley Books, Inc., 354 U.S., at 441 (listing

separately a criminal prosecution and a qui tam action).

This two-pronged approach is consistent with the historic practice of Congress

provid[ing] what we would now consider to be both civil and criminal penalties for the

same conduct, and authoriz[ing] private citizens to bring defendants to justice by action

of debt [a civil action]. Krent, supra, at 297. It is also consistent with the statutes17

text which permits a qui tam plaintiff to sue, ( 292(b)) a term generally reserved for

civil actions.

Accordingly, if a person or company engages in false marking, the United States

may prosecute the criminal infraction and, if there is a conviction, ask a Court to

impose criminal penalties. Section 292(a) imposes a fine of not more than $500 per

An action of debt was a historic form of civil action used to collect sums of

17

money. See A Dictionary of American & English Law with Definitions of the

Technical Terms of the Canon and Civil Laws 353 (1888) (S. Rapalje & R. Lawrence

eds.); H. Black, Dictionary of Law Containing Definitions of the Terms and Phrases of

American and English Jurisprudence, Ancient and Modern 234 (1891) (giving as an

example of a civil action, an action of debt).

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occurrence. 35 U.S.C. 292(a). In the context of a criminal prosecution, because it is

a criminal fine for an infraction, that fine is increased by 18 U.S.C. 3571 to a

maximum of $5,000 for individuals ($10,000 for corporations) per occurrence, or twice

the monetary gain or loss, whichever is greatest. See 18 U.S.C. 3571(b)(2

Documents

USA Brief in Wham-O