Cyclone Usa, Inc. v. Sei Kim

FILED
NOT FOR PUBLICATION DEC 15 2011
MOLLY C. DWYER, CLERK
UNITED STATES COURT OF APPEALS U .S. C O U R T OF APPE ALS
FOR THE NINTH CIRCUIT
CYCLONE USA, INC., a Nevada No. 10-55735
corporation,
D.C. No. 2:03-cv-00992-AJW
Plaintiff-counter-defendant -
Appellee,
MEMORANDUM *
LL&C DEALER SERVICES, LLC,
Defendant-counter-claimant -
Appellee,
v.
SEI KIM, DBA Korean Industrial Design
Company, Erroneously Sued as Korean
Industrial Design Corporation,
Defendant-counter-claimant-
3rd-party-plaintiff - Appellant,
_____________________________,
and
JAY KIM,
Third-party-defendant.
*
This disposition is not appropriate for publication and is not precedent
except as provided by 9th Cir. R. 36-3.
Appeal from the United States District Court
for the Central District of California
Andrew J. Wistrich, Magistrate Judge, Presiding
Submitted December 8, 2011 **
Pasadena, California
Before: NOONAN, GOULD, and IKUTA, Circuit Judges.
Sei Kim appeals the district court’s award of $500 for a single transaction of
false patent marking by Cyclone USA under 35 U.S.C § 292. On September 16,
2011, Congress amended 35 U.S.C. § 292 and made the amendments retroactive on
pending cases. Leahy-Smith America Invents Act, Pub. L. No. 112-29, § 16(b)(4),
125 Stat. 329 (2011). The penalty under the amended § 292(a) is no longer
available to a private party such as Sei Kim. Instead, § 292(b) now grants Sei Kim
the right to recover damages to compensate for competitive injury due to the false
patent marking. We VACATE and REMAND for a calculation of Cyclone USA’s
liabilities under the amended statute.
**
The panel unanimously concludes this case is suitable for decision
without oral argument. See Fed. R. App. P. 34(a)(2).
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