Celgene Corp. v. Peter: Should the Federal Circuit Leave PTAB ‘Patent Takings’ Issue for Another Day?

“In light of Supreme Court Takings Clause precedent, the Federal Circuit may want to either request supplemental briefing [in Celgene] to decide whether it should have addressed the constitutional question in the first place, or potentially even revise the panel opinion and leave this issue to be decided in another case.”

Nearly four months ago, the Federal Circuit for the first time addressed the applicability of the Takings Clause of the Fifth Amendment to IPRs, holding in Celgene Corp v. Peter “that the retroactive application of inter partes review (IPR) proceedings to pre-America Invents Act (AIA) patents is not an unconstitutional taking under the Fifth Amendment” Celgene Corp. v. Peter, 931 F.3d 1342, 1362 (Fed. Cir. 2019). Since then, the court has continued to reject similar Patent Trial and Appeal Board (PTAB)-related Takings Clause claims on the merits. E.g., Collabo Innovations v. Sony Corp., No. 2018-1311 (Fed. Cir. Aug. 5, 2019). Unsurprisingly, Celgene filed a request for an en banc rehearing, and the government has just this week filed its response. Both Celgene’s en banc petition and the government’s response address the merits of Celgene’s constitutional claim—but as we hinted at in an earlier article analyzing the Celgene decision, there is a serious question whether the Federal Circuit should have even reached the merits of the Takings Clause issue in its panel opinion. In light of Supreme Court Takings Clause precedent, the Federal Circuit may want to either request supplemental briefing to decide whether it should have addressed the constitutional question in the first place, or potentially even revise the panel opinion and leave this issue to be decided in another case.

The Celgene Panel Decision

To recap, Celgene involved a series of IPR challenges to two patents owned by Celgene and directed to methods for safely providing teratogenic agents (such as thalidomide) to patients without risking distributing the drug to patients who are pregnant or may become pregnant. After receiving adverse decisions at the PTAB Celgene appealed, asserting that the Board erred in finding these claims obvious and that retroactive application of IPRs to these patents—which were filed and issued long before the AIA’s effective date of September 16, 2012—was an unconstitutional “taking” of private property under the Fifth Amendment.

After affirming the PTAB’s obviousness finding, the Federal Circuit considered whether the pre-AIA patents’ cancellation through an IPR effected an unconstitutional taking. The Federal Circuit looked to the nearly 40-year history of the U.S. Patent and Trademark Office (USPTO) being able to revisit the validity of patents in post-grant proceedings such as ex parte and inter partes reexaminations, and found the mere fact that different procedures were now being used by the USPTO was not sufficient to effect a taking under the Fifth Amendment. As such, the court rejected the constitutional claim. 

Celgene’s En Banc Petition and the Government’s Response 

In late September, Celgene filed a petition for en banc rehearing. In support of its petition, Celgene argued that the panel opinion is contrary to Supreme Court precedent and the issue addressed is one of national importance. Relying on Supreme Court cases both young (such as Return Mail, SAS Institute, and Festo) and old (McClurg), Celgene argued that retroactive application of the AIA’s new IPR regime to patents issued before IPRs existed impairs patent owners’ vested property rights without compensating them for the loss of such rights, and is therefore unconstitutional. Celgene explained that the IPR regime “differs fundamentally” from prior post-grant validity proceedings, such as ex parte and inter partes reexamination, and alleged that the procedural changes are so dramatic that they go beyond mere procedure to affect substantive entitlement to relief.  As such, Celgene argued that whether IPRs are viewed under the rubric of a “physical” or “regulatory” taking, they violate the Fifth Amendment.

On November 19, the government filed its response to the en banc petition. The government argued broadly that just as the Federal Circuit had previously rejected takings-related challenges to ex parte reexamination, it should reject the takings challenge here and deny the en banc petition—particularly because at the time Celgene applied for and received the patents, it knew that they were subject to post-grant challenge on the same substantive grounds (anticipation and obviousness) and on the same burden of proof (preponderance of the evidence) through both ex parte and inter partes reexamination. The government pushed back on Celgene’s argument that the change in procedure from inter partes reexamination to IPR was relevant to the takings analysis, arguing that the Supreme Court has held that no one has a vested right in any given mode of procedure. The government also argued that while there is no question that “a valid patent is private property for the purposes of the Takings Clause . . . an invalid patent is not.”  Therefore, regardless of whether Celgene’s takings claim is positioned as a physical or regulatory one, the government said, it fails.

[[Advertisement]]

Insecticides, Bike Paths, and Scooters Might Provide Guidance on the Way Forward

One issue not substantively addressed by either party is whether the Federal Circuit should have addressed the merits of Celgene’s constitutional challenge in the first place, or whether it was unripe and should be left for another day. After all, the Takings Clause doesn’t prohibit the government from taking private property—it simply imposes limits on that taking (it must be for a “public use”) and requires that the property owner be paid “just compensation” if there is a taking.  Because the Tucker Act (28 U.S.C. § 1491 et seq.) grants jurisdiction to the United States Court of Federal Claims to decide claims for monetary damages arising out of the Constitution, courts have commonly found that a Takings Clause claim must be brought to the Court of Federal Claims in the first instance—unless, that is, Congress has expressly or implicitly withdrawn Tucker Act jurisdiction. Eastern Enterprises v. Apfel, 524 U.S. 498, 520 (1998).  At least one Federal Circuit judge, Judge Hughes, speculated earlier this year that patent owners should “go to the Court of Federal Claims” to assert a takings claim once their patents are cancelled rather than raise them in an appeal from the PTAB decision itself. See Oral Argument, Trading Tech. Int’l v. IBG LLC, No. 2018-1443 (May 9, 2019).

In fact, in the past the Supreme Court has found that, where a suit under the Tucker Act is available as a remedy for any uncompensated taking a party may suffer as a result of a challenged statute, any challenges to the constitutionality of the statute are not ripe until and unless a claim under the Tucker Act is brought. In Ruckelshaus v. Monsanto (467 U.S. 986 [1984]), Monsanto had argued that certain data disclosure requirements of the Federal Insecticide, Fungicide, and Rodenticide Act effected an unconstitutional taking without compensation, and a district court agreed. The Supreme Court reversed, explaining that the Tucker Act is available as a remedy for any uncompensated taking Monsanto may suffer as a result of the operation of the challenged provisions of statute, and that until Monsanto was denied compensation under the Tucker Act, Monsanto’s challenges to the constitutionality of the statute are not ripe. And in Preseault v. ICC (494 U.S. 1 [1990]), the Second Circuit had rejected a Takings Clause challenge to a federal “rails-to-trails” statute, finding on the merits that the statute did not effect an unconstitutional taking of the appellants’ property. The Supreme Court, again, reversed—explaining that because the Takings Clause does not prohibit government action and simply mandates payment if an action is taken, then takings claims against the federal government are premature until the property owner has availed itself of the process provided by the Tucker Act (unless Congress has expressly displaced Tucker Act jurisdiction). It concluded: “In sum, petitioners’ failure to make use of the available Tucker Act remedy renders their takings challenge to the ICC’s order premature. We need not decide whether a taking occurred in this case.”

The Celgene panel decision is silent on the issue of ripeness, and there is likewise very little relevant discussion in the parties’ en banc briefing: Celgene expressly states that “[t]he PTO certainly does not dispute this Court’s jurisdiction to decide the takings challenge” and argues that “a Fifth Amendment takings claim may be raised as a defense where, as here, the taking is ‘final’ and there is no ‘adequate process for obtaining compensation.’”  The government, for its part, states that even if administrative cancellation were assumed to “take” property, because that cancellation does not occur until after the Federal Circuit affirms the PTAB and the Director issues a cancellation certificate, no “taking” of a valid patent occurred here. But no one—not the court, Celgene, or the government—addressed the question of whether Congress, in the AIA, withdrew Tucker Act jurisdiction over PTAB-related takings claims.

Given the importance of the issue, at the very least it would seem wise for the Federal Circuit to request supplemental briefing from the parties on the question of whether Congress affirmatively withdrew the Tucker Act jurisdiction—much as it recently did in the Arthrex and Polaris cases on another constitutional issue (the Appointments Clause).

Failing that, the court could also follow the cautious path it took in Swagway v. ITC (923 F.3d 1349, 1357 [Fed. Cir. 2019]) earlier this year. The original panel decision in Swagway included a portion addressing the question of whether trademark-related decisions issued by the U.S. International Trade Commission have preclusive effect on district courts. But the intervenor in the appeal, Segway, filed a combined petition for panel rehearing and rehearing en banc, arguing in part that the Federal Circuit should not have reached the preclusion issue. After considering Segway’s petition and the Commission’s and Swagway’s responses, the Federal Circuit granted Segway’s petition for panel rehearing and vacated the portion of the original decision on the issue of the preclusive effect of the Commission’s trademark decisions. It is certainly possible that, upon further review, the panel or en banc Federal Circuit decides that the more prudent course of action would be to vacate the portion of the Celgene panel decision addressing the merits of the takings claim, and let that issue be decided in a future case instead. As noted in our previous article, there is a case percolating at the Federal Circuit where a patent owner brought a PTAB-related Tucker Act claim, which was dismissed by the Court of Federal Claims. Christy, Inc. v. United States, 141 Fed. Cl. 641, 659-60 (2019) In that appeal (Christy Inc. v. United States, No. 19-1738), Christy’s reply brief is due on November 27, and oral argument is expected some time in early 2020.

The Risks of Acting Too Soon

A failure to fully flesh out this issue (or at least wait for an appropriate case in which to do so) would risk the Supreme Court finding the takings claims to be unripe and reversing the Federal Circuit—just as the Court did with the takings claims at issue in Ruckelshaus and Preseault. Given the Supreme Court’s continued interest in both intellectual property and takings-related matters, this is a case (and an issue) worth keeping an eye on.

 

The Author

Matthew Rizzolo

Matthew Rizzolo is a partner in the Intellectual Property Litigation practice group of Ropes & Gray, and is resident in the firm’s Washington, DC office. He works extensively with technology companies to both enforce clients’ intellectual property rights and defend clients from patent infringement claims, and litigates in a variety of jurisdictions, including federal district courts throughout the United States, the Federal Circuit, the Patent Trial & Appeal Board, and in Section 337 actions before the United States International Trade Commission. Matt received his J.D. from The George Washington University Law School.

For more information or to contact Matthew, please visit his Firm Profile Page.

Matthew Rizzolo

Kathryn Thornton is an associate in the Intellectual Property Litigation practice group of Ropes & Gray, and is also resident in the firm’s Washington, DC office. She cultivates a diverse practice across false advertising, trademark, patent, and copyright matters. Kathryn has worked on litigation in federal district court, the United States International Trade Commission, the Fourth Circuit, and the Federal Circuit. Kathryn received her J.D. from The George Washington University Law School.

For ore information or to contact Kathryn please visit her Firm Profile Page.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 34 Comments comments. Join the discussion.

  1. anonymous November 22, 2019 1:12 am

    No pre-AIA patentee could have foreseen an unconstitutionally appointed cadre of PTAB “judges” would invalidate their patent. Is invalidation by an unconstitutionally appointed APJ analogous to any pre-AIA ex parte or inter partes reexamination procedure? I think not.

  2. angry dude November 22, 2019 9:47 am

    HIGH TREASON

  3. TFCFM November 22, 2019 10:22 am

    The entire ‘IPR-is-a-taking’ effort (i.e., trying to fool gullible folks into believing that a procedure that merely recognizes the invalidity of a previously-mistakenly-awarded right-to-exclude is a “taking”) seems to me fundamentally misguided.

    A person possesses no inherent or explicit right-to-exclude others from practicing a technology until and unless the federal government grants such a right. The government is authorized by our patent statutes to grant patent rights for a technology only to an applicant(s) who satisfy certain requirements defined in the statutes and in administrative and judicial rules and decisions which interpret and apply the statutes.

    Accordingly, our nation has set up a system for examining applications for patents, the system designed to balance close (and, to no one’s surprise, imperfect) application of the statutes/rules/decisions with relatively rapid grant of the rights. No serious person believes now, nor has ever believed, that patent examination would yield patents which unerringly apply those statutes/rules/decisions with utter perfection.

    For that reason, a U.S. patent has never been “bullet-proof,” but has always been enforceable subject to various mechanisms for denying patents on applications which do not satisfy requirements and for correcting the inevitable mistaken grant of patents on applications which did not satisfy requirements for patentability. Such mechanisms have included:
    – ordinary examination of patent applications;
    – internal PTO review of patent examiner decisions prior to issue;
    – invalidation by a court asked to enforce an issued patent;
    – various forms of reexamination and reissue of issued patents (including variants initiated by the patentee, by others, or by the PTO Director);
    – (some other procedures that I’m probably overlooking because I’m already typing more than I hoped); and
    – now IPR, PGR, and CBM procedures for issued patents.

    In each of these proceedings, the determination has not been whether the federal government can or should “take” something from an applicant or patentee, but rather solely upon whether the applicant/patentee satisfied the requirements for a patent grant to begin with. If not, then any grant that occurred was null and void to begin with.

    In short, “fooling the patent office” is not a sound basis upon which any right is grounded, regardless of whether one calls the right a “property right.”

    I don’t so much object to the fees my friends in the patent bar are able to extract from gullible clients to quibble about such nonsense (fools and their money being not only soon, but beneficially parted) so much as I object to raising the hopes of lay folks who may genuinely believe that the circumstances that led to grant of an invalid patent entitle them to something more than correction of those circumstances.

  4. Jonathan November 22, 2019 11:48 am

    As we all know payment of just compensation has long been recognized by the US Supreme Court to be a limiting condition placed by the Fifth Amendment on the power of government to take private property for public use; see First English Evangelical Lutheran Church of Glendale v. Los Angeles County, 482 U.S. 304, 314 (1987):
    “Consideration of the compensation question must begin with direct reference to the language of the Fifth Amendment, which provides in relevant part that “private property [shall not] be taken for public use, without just compensation.” As its language indicates, and as the Court has frequently noted, this provision does not prohibit the taking of private property, but instead places a condition on the exercise of that power.”

    Somewhat (un)related: there are sold and strong arguments that the US Supreme Court will find that the AIA made no substantive changes to the possible challenges of a issued patent, AIA “only” changed the procedural approach to challenge patents. Under Landgraf, the Court concluded that the presumption against statutory retroactivity exists even when the conduct preceding the new statute has resulted in a judicial case “pending” on appeal on the effective date of the new statute. See Landgraf, 511 U.S. at 263-65. Thus under this leading case of retroactivity of civil statutes, the Landgraf presumption is limited to statutes altering substantive rights. See id. at 271- 73. This is because the statute in Landgraf altered the legal consequences of past private actions only in the future. However, the Landgraf Court did not suggest that procedural rules are per se void of retroactivity issues. Landgraf, 511 U.S. at 275 n.29 (“The applicability of such provisions ordinarily depends on the posture of the particular case.”).

  5. Jonathan November 22, 2019 12:11 pm

    I agree with the authors; taking claims must be pursued under the Tucker Act (28 U.S.C. § 1491 et seq.) because it grants exclusive jurisdiction to the United States Court of Federal Claims to decide claims for monetary damages arising out of the Constitution; most courts have commonly found that a Takings Clause claim must be brought to the Court of Federal Claims in the first instance. This follows also based on the US Supreme Courts cases that when the condition of paying just compensation is fulfilled, the taking is lawful and inflicts no injury. See Williamson Cty. Planning v. Hamilton Bank, 473 U.S. 172, 195 fn.13 (1985) (“no constitutional violation occurs until just compensation has been denied”); Monterey v. Del Monte Dunes at Monterey, Ltd., 526 U.S. 687, 718 (1999) (“The constitutional injury alleged, therefore, is not that property was taken but that it was taken without just compensation. . . . Simply put, there is no constitutional or tortious [§ 1983] injury until the landowner is denied just compensation.”).
    Hence, it is not any sort of remedy. In contrast to the payment of just compensation, payment of money damages is the remedy given by a court when government has injured an owner by taking property without having paid just compensation. See Monterey, 526 U.S. at 710 (“In a strict sense [the property owner] sought not just compensation per se but rather damages for the unconstitutional denial of such compensation. Damages for a constitutional violation are a legal remedy.”). Under Monterey and other later cases the Federal Circuit has no jurisdiction to entertain/rule on Taking Clause based claims.

  6. Anon November 22, 2019 1:51 pm

    TFCFM,

    You make a critical mistake in not recognizing what is entailed in that act itself of “grant.”

  7. Anon November 22, 2019 6:32 pm

    Jonathan,

    If I recall correctly (and apologies for not having the case at hand), there was a recent case that held exactly the opposite – that one NEED NOT first attempt a “Tucker action” in order to prevail in an improper takings action.

    While certainly a “Tucker action” may be advisable IF the only thing that you are concerned about is the level of compensation, but OFTEN, it is simply NOT a matter of “level of compensation (and especially so in patent cases).

  8. Jonathan November 22, 2019 6:58 pm

    Anon, Ups! You are correct (and I should have updated my notes!); Indeed Williamson Cty. Planning v. Hamilton Bank, 473 U.S. 172 (1985) was overruled by Knick v. Township of Scott, 139 S. Ct. 2162 (2019) on January 19, 2019. I apologize for my mistake. One way to “get around” Knick is to argue that for federal (patent) cases under federal law exclusive jurisdiction is still with the Federal Court of Claims; remember Knick was a state claim and there was no exclusive jurisdiction under the pertinent state statute. Thus, federal courts’ jurisdiction over claimed violations of the Fifth Amendment’s Takings Clause (i.e., U.S. Const. amend. V (prohibiting the taking of private property “for public use, without just compensation”); see 28 U.S.C. § 1343(a)(3) (2012) (establishing original jurisdiction in federal district courts over constitutional claims); 42 U.S.C. § 1983 (2012) (creating a federal cause of action for local-government violations of constitutional rights), the U.S. Supreme Court mandated that property owners alleging such taking claims against local (state) government regulations exhaust all adequate state court remedies before pursuing relief in federal court. In other words, federal rooted taking claims are unaffected because in Knick v. Township of Scott, the U.S. Supreme Court only overruled Williamson County’s STATE-litigation requirement.

  9. Anon November 22, 2019 11:58 pm

    Jonathon – I cannot parse the case as your have done here with the attempt to read ONLY takings vis a vis “state claim” to be reached. Takings offends the Constitution, and the mere fact that the single case was a “state action” simply does not lessen the Constitutional offense.

  10. Joachim Martillo November 24, 2019 12:40 am

    I can’t believe that in this forum only I have first hand experience with agency corruption. In my case my uncle Nat grew wealthy while working at the IRS. His son-in-law was a patent examiner for many years. Nat used to tell me that if he had worked at the USPTO, he would be at least an order of magnitude richer.

    It is an open invitation to corruption to give an agency the ability to cancel a right that the selfsame agency grants.

    There is an obvious need for a 28th Amendment that states the following.

    Twenty-Eighth Amendment

    (1) Rights conferred under Article I Section 8 Clause 8
    (a) constitute private property and
    (b) can only be terminated or limited by due process of law in a suit at common law;
    (2) the right of trial by jury shall be preserved;
    (3) no fact tried by a jury shall be otherwise re-examined in any court of the United States except according to the rules of the common law; and
    (4) the rights conferred shall not without just compensation be taken for public use, be terminated, or be limited.

    Even without such an amendment I don’t understand why USPTO review of issued patents was ever needed or enacted. Congress could have enacted an equivalent proceeding in an Article III court. The results would have been much less disastrous than the nonsense associated with the PTAB.

    Here is a proposed statute much simpler than those associated with PTAB review.

    35 U.S. Code §?147 – Try Claim Validity

    (a) Subject to the following subsections a person who is not the patentee may petition the district court for a writ of scire facias to notify the patentee of a challenge on behalf of public to the validity of at least one claim in the patentee’s patent in an action to try claim validity. The petitioner as intervenor has standing to represent the public in district court and subsequent court proceedings. The patentee will respond to the petition, and the action to try claim validity commences. The court will judge whether each challenged claim of the issued patent is valid according to the requirements of Part II of Title 35.

    (b) A defendant in an action under 35 U.S. Code §?281 may petition the district court for a writ of scire facias under subsection (a) above. The 35 U.S. Code §?281 action would be stayed until the issue of claim validity is fully litigated.

    (c) A party having standing to seek declaratory judgment under 28 U.S. Code §?2201 on a question of infringement under 35 U.S. Code §?281 may first petition the district court for a writ of scire facias under subsection (a) above. The patentee may not commence an action in district court for infringement under 35 U.S. Code §?281 until the issue of claim validity is fully litigated.

    (d) A person, who is not the owner of a patent and who does not have standing under subsections (b) or (c) above, may seek leave from the USPTO to petition the district court for a writ of scire facias under subsection (a) above. The Director will grant leave to petition if and only if the request for leave demonstrates substantial likelihood of prevailing in district court. The USPTO Director shall establish, by regulation, fees to be paid by the person requesting leave, in such amounts as the Director determines to be reasonable, considering the aggregate costs of the reviewing the request.

    (e) For four years after an issue of claim validity has been fully litigated, a person, who is not the owner of the patent and who has new evidence of said claim invalidity, may make a motion to a single judge of the Court of Appeals for the Federal Circuit to reopen the question of said claim validity and to remand the case to district court. If the judge reopens the case, he will order the movant to write a new petition for writ of scire facias, and he will order the district court to issue the new writ of scire facias once it receives the new petition for writ of scire facias. In district court the movant will become intervenor on behalf of the public. After the four year period has expired since said claim was first fully litigated, said claim validity will be fully quieted for the remaining duration of the issued patent since the completion of the last legal proceeding addressing the issue of the validity of said claim, and motions to reopen and to remand a question of claim validity will no longer be granted by a judge of the CAFC.

  11. Anon November 24, 2019 8:35 am

    Joachim,

    Welcome back and I hope your absence has not been health related.

    I will take some time to digest your post here — with the exception of one immediate thought that jumps to mind: I am not sure where you dredged up scire facies (or why), but you are aware that our Congress deliberately removed that from our patent system, right? The late Ned Heller had disclosed details on that chapter of our history.

  12. Joachim Martillo November 24, 2019 1:11 pm

    The writ of scire facias exists in some states including Arkansas, Georgia, New Hampshire, Tennessee, and Texas. I could be wrong, but I was under the impression that Congress did not do away with scire facias but that scire facias has never really been used in US federal courts. I suppose quo warranto could be used for the same purpose, but we actually know the warrant by which the patentee believes he has the right to enforce his claim.

    I modeled the try claim validity action on the Massachusetts try title action, and for those interested in the historical record, the patent of Massachusetts Bay Company was revoked by scire facias after the Massachusetts colony founded Harvard College without permission of the Crown and thereby usurped prerogative of the sovereign.

    I should add the following to my original comment above.

    It never made legal sense for claim validity to be tried in the context of controversies over infringement (unfortunately a longstanding practice). Claim validity is an issue between the patentee and the public while infringement is a pairwise issue between a patentee and an alleged infringing entity. Congress should amend 35 U.S. Code §?282 (Presumption of validity; defenses) to remove all invalidity defenses, which should be handled in a separate proceeding under the proposed 35 U.S. Code §?147 action.

    Along with amending §?282 Congress should repeal all statutes enabling USPTO review of issued patents. These procedures have been a mess, contribute to breaking the US patent system, and are an open invitation to agency corruption while the proposed 35 U.S. Code §?147 action would probably be simpler, would not be more expensive, would probably be less costly for the patentee, provides a US claim cancellation procedure comparable to the EPO opposition procedure, and creates a mechanism for permanently quieting claim validity.

  13. Joachim Martillo November 25, 2019 6:47 am

    I googled for the use scire facias in the early US patent system. I found the following link.

    http://www.law.nyu.edu/sites/default/files/upload_documents/Beauchamp–Repealing%20Patents%20(NYU%20Tri-State,%202018-1-4).pdf

    Writ of scire facias seems appropriate in the proposed statute. It is late/Medieval Latin and means, “May you make (all) know/understand (why the claim is valid)!”

    The petitioner requests the Court so to order the patentee. Thus it is preferable in the proposed statute to use a writ of scire facias over a writ of quo warranto — by which warrant (is the claim valid).

  14. TFCFM November 25, 2019 10:01 am

    Anon@#6: You make a critical mistake in not recognizing what is entailed in that act itself of “grant.”

    If you’d care to explain what you mean, I’d be able to determine whether or not I agree and, if not, explain why not. As it is, your statement sounds like mere hand-waving.

    “Grant” of a patent has never been either an all-purpose immunization against later invalidation nor an entitlement to compensation should such invalidation occur.

  15. Joachim Martillo November 25, 2019 10:11 am

    I need to fix a type and bad link above.

    I meant: I googled for the use of scire facias …

    Click here to get the “Repealing Patents” article.

  16. Anon November 25, 2019 10:55 am

    TFCFM,

    Grant of a patent though DOES invoke all legal protections (including, for example the full gamut of Takings law) for the property.

    The point of grant turns an (unrealized) inchoate right into a full and proper legal right, a property right with a full bundle of sticks.

    You seem to be treating the event of grant into a nothing-burger (leastwise from the legal rights protection viewpoint).

    Certainly, there has always been a challenge post grant of the legal right. And equally certainly, the AIA did not change at all the presence — and level — of the presumption of validity of a granted patent property right.

  17. Joachim Martillo November 26, 2019 6:57 am

    Because I am trying to quiet title to a Massachusetts patent application, I have had to read numerous try/quiet title Commonwealth cases. When the issue is which of two parties own a property (land or intellectual), there is not a taking.

    These ridiculous USPTO review proceedings confuse the issue because if claim validity were tried sanely as I suggest in the proposed 35 U.S. Code § 147 proceeding that I discuss above (see comment@10), the Court would not so much be revoking a claim as it would be deciding who owns it: the alleged patentee or the public (and in a few cases, perhaps, another claimant).

  18. TFCFM November 26, 2019 10:37 am

    Anon: “Grant of a patent though DOES invoke all legal protections (including, for example the full gamut of Takings law) for the property.

    Whatever you intend to mean by this statement might be clearer if you would cite your authority for the assertion. Would you care to share it with us? (Please tell me it’s not just, “Because I Say So” again.)

    For starters, what authority is there for treating invalidation of an issued patent (which we appear to agree is entitled to a presumption of validity) as a “taking”?

  19. Anon November 26, 2019 2:48 pm

    Whatever you intend to mean…

    It is abundantly clear what I “intend to mean.”

    Your phrasing (or rather, attempted re-phrasing) already tells me that you are not willing to engage on the merits.

    And do you really need “authority” for the assertion that property rights are protected under the Constitution…?

    Or do you need “authority” to understand property rights as a “bundle of sticks?”

    Or do you need “authority” to understand that one of those sticks IN the bundle is the presence and level of the presumption of validity?

    Or do you need “authority” to understand the value of that particular stick?

    What are YOU “really intending” to mean here?

  20. TFCFM November 27, 2019 10:35 am

    I “really intend” to mean that legal professionals don’t accept “because I say so” as a basis for recognizing the validity of any and all assertions that one wishes to make. Our legal system relies for authority upon statutes, regulations, and prior relevant decisions — not whatever you or I wish were true.

    I need “authority” to accept your apparent assertion that use of the word “grant” to describe the award of a patent to an applicant renders subsequent invalidation of that patent a government “taking” of private property (although, curiously, apparently only in the context of an IPR…) — as would any court or any legal professional worth his or her salt.

    Your reluctance to provide any such authority (and, indeed, your apparent bristling at the fact that any legal professional would dare doubt your assertion) suggests to me that your assertion lacks any relevant authority.

  21. Anon November 27, 2019 4:23 pm

    apparent assertion that use of the word “grant” to describe the award of a patent to an applicant renders subsequent invalidation of that patent a government “taking” of private property

    You misconstrue and move the goalposts. As I already noted, subsequent invalidations may well occur. You are aware though that the institution decision is NOT an invalidation, and yet when you compare the bundle of sticks of the granted property from immediately before the institution decision to immediately after the institution decision, the bundle of sticks is not the same.

    Maybe YOU have a clever “intention” as to describing this loss of property rights…

    What my “bristling” suggests to you is of zero relevance, given your own predilections as to the value of the property of a granted patent. Maybe you should recognize that my bristling is due to your lack of legal professionalism (even — or perhaps more accurately — especially given your fake willingness to engage on the merits).

    That’s most definitely a “YOU” problem.

  22. TFCFM November 29, 2019 10:09 am

    As nearly as I can tell, this is the closest thing to a substantive “point” that you might be trying to make:

    Anon: “…the institution decision is NOT an invalidation, and yet when you compare the bundle of sticks of the granted property from immediately before the institution decision to immediately after the institution decision, the bundle of sticks is not the same.”

    How so? Does the patent cease to be a patent merely because a procedure (one expressly created by statute) for examining its validity has been initiated? If this trivial change is some sort of “taking,” then how are similar procedures (ex parte reexam, reissue, judicial consideration of invalidity claims in infringement counterclaims, and judicial consideration of invalidity claims in declaratory judgment claims not equally “takings” (and why do pesky courts hold that they are not)?

    Attempting to insult me doesn’t relieve you of the need to provide an even-minimally-understandable explanation of your rhetoric. What is “taking”-ish about initiation of an AIA proceeding?

  23. Anon November 29, 2019 10:53 am

    Your “as nearly” comes across as a rather disingenuous statement.

    That you have to ask “How so?” cements that disingenuousness.

    That you think the presence and level of the presumption of validity is even remotely trivial simply shows YOUR lack of appreciation and understanding of the US Sovereign choices for innovation protection.

    This is NOT about me “attempting to insult you.” YOU are doing that well enough on your own.

  24. TFCFM December 2, 2019 10:48 am

    Whatever. Get back to us if you’re ever in the mood to discuss substance, rather than fluff, insult, and evasion from backing up whatever nonsense you assert.

  25. Anon December 2, 2019 11:39 am

    TFCFM,

    Yet again, it is you that bandy about the fluff and disregard substance.

    “Whatever” indeed – just not according to your attempted spin.

  26. TFCFM December 3, 2019 10:14 am

    Answer my questions, then:

    TFCFM@#22: “Does the patent cease to be a patent merely because a procedure (one expressly created by statute) for examining its validity has been initiated? If this trivial change is some sort of “taking,” then how are similar procedures (ex parte reexam, reissue, judicial consideration of invalidity claims in infringement counterclaims, and judicial consideration of invalidity claims in declaratory judgment claims not equally “takings” (and why do pesky courts hold that they are not)?

  27. Anon December 3, 2019 3:42 pm

    Your questions are misnomers.

    Have you ever studied Takings in Con law?

    One misnomer is that a patent need to cease to be a patent in order for there to be a taking.

    This is simply not so.

    Instead, one looks at takings of sticks in the bundle of property rights and asks instead if a substantial impairment has occurred. The presence and level of the presumption of validity is one such stick.

    As I also previously noted to you, you have a misnomer in presuming that there be a “trivial change” and that “trvial changes” “don’t count.” To this misnomer I offered you the i4i case – but you must have blinked at that.

    Another misnomer (which I have already noted) is that you equate ALL procedures as “similar” but do not address any actual differences.

    It is odd that you want chapter and verse from me (on a blog), but then insist on — yourself — being so execessively ‘loose’ that coupled with your typical anti-patent tones, draws into question your actual background (as B has harpooned you every time you two interact).

    Now mind you, I do believe that you are an attorney, and may even have litigated patent cases. But you show NO signs of being a registered patent attorney, nor one that has had experience out in the engineering (or management) side of actually producing innovation.

  28. TFCFM December 4, 2019 10:12 am

    You appear to be full of nothing but insult and fluff.

    Evading serious questions fools no one.

  29. Anon December 4, 2019 1:35 pm

    Your accusations are without substance, TFCFM.

    I have evaded no questions. Pointing out the errors of your questions is not evasion — that you think so is simply an indictment against YOU.

    An not a surprising one at that.

  30. TFCFM December 5, 2019 10:35 am

    Answer (instead of evading with gibberish) my questions, then:

    TFCFM@#22: “Does the patent cease to be a patent merely because a procedure (one expressly created by statute) for examining its validity has been initiated? If this trivial change is some sort of “taking,” then how are similar procedures (ex parte reexam, reissue, judicial consideration of invalidity claims in infringement counterclaims, and judicial consideration of invalidity claims in declaratory judgment claims not equally “takings” (and why do pesky courts hold that they are not)?

  31. Anon December 5, 2019 12:56 pm

    TFCFM,

    You missed this: I have evaded no questions. Pointing out the errors of your questions is not evasion — that you think so is simply an indictment against YOU.

    I have already addressed your misnomered questions. Maybe you should ask better questions (by incorporating my answers into your questions instead of evading those answers)>

  32. TFCFM December 6, 2019 10:09 am

    Wow. I’m fooled by your repeated evasions!

  33. Anon December 6, 2019 3:34 pm

    Pointing out the errors of your questions is not evasion.

    You are “f001ed” alright, just not how you attempt to spin things here.

  34. TFCFM December 9, 2019 9:56 am

    Pointing out the errors of your questions is not evasion.

    Then answer them, in addition to pointing out the supposed “error” of asking questions to which you don’t like the answers. One guess why you don’t.

Post a Comment

Respectfully add to the discussion.

Name *
Email *
Website