Amici Urge Supreme Court to Grant Celgene’s Petition on Constitutionality of Retroactive IPRs

By Rebecca Tapscott
April 6, 2020

“The Professors noted that IPR is signi?cantly different from pre-AIA reexamination, particularly since in reexamination, the patentee is free to amend its claims an unlimited number of times, but during IPR there is ‘no back-and-forth between the patentee and examiner seeking to resolve claim scope ambiguity; there is no robust right to amend.’”

Amici Urge Supreme Court to Grant Celgene’s Petition on Constitutionality of Retroactive IPRsOn March 31, 2020, Intellectual Property Law Professors Gregory Dolin of the University of Baltimore School of Law, Kristen Osenga of the University of Richmond School of Law, and Irina D. Manta of the School of Law at Hofstra University (the Professors) filed an amicus brief in support of the Celgene Corporation’s petition for writ of certiorari to take up Celgene Corp v. Peter on appeal from the U.S. Court of Appeals for the Federal Circuit (CAFC).  In Celgene the CAFC addressed the applicability of the Takings Clause of the Fifth Amendment to inter partes reviews (IPRs), holding “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 Revisited

Celgene involved IPR challenges to two patents, U.S. Patent No. 6,045,501 and U.S. Patent No. 6,315,720, which were directed to methods of safely providing teratogenic agents to patients without risking distributing the drug to patients who are pregnant or may become pregnant. The ‘501 and ‘720 patents were issued about a decade before the AIA’s effective date of September 16, 2012. The PTAB instituted review of the patents and invalidated as obvious all of the claims of the ‘501 patent and all but one claim of the ‘720 patent. On appeal to the CAFC, Celgene asserted that the Board erred in finding the claims obvious and argued that the retroactive application of IPRs constituted an unconstitutional “taking” of private property under the Fifth Amendment. The CAFC affirmed the PTAB’s obviousness finding and held that retroactive application of IPRs did not violate the Constitution. Celgene filed a petition for en banc rehearing, wherein it argued that the CAFC’s panel opinion is contrary to Supreme Court precedent and the issue addressed is one of national importance, but the CAFC denied en banc review.

Celgene’s Petition

On February 26, 2020, Celgene filed a petition for writ of certiorari with the Supreme Court, which presented the question of “whether retroactive application of inter partes review to patents issued before passage of the America Invents Act violates the Takings Clause of the Fifth Amendment.”  The petition set forth three reasons why review of Celgene was warranted: 1.) the question presented was important because the “AIA imposes a revolutionary change to the administrative patent system, a change that has eviscerated settled expectations in property rights in every patent in force that issued before the AIA”; 2.) the retroactive application of inter partes review violates the Constitution as it constitutes the taking of private property without compensation; and, 3.) Celgene “is a uniquely good vehicle for resolving the question presented” because the CAFC addressed the merits of this issue for the first time. Celgene emphasized that the AIA eliminated a patent owner’s right to claim amendments that existed under inter partes reexamination. Further, Celgene emphasized that retroactive application of the AIA is a taking since it is a “regulatory program that destroys all economic value in property.”

Intellectual Property Law Professors in Support of Celgene

The Professors’ amicus brief was based on their mutual concerns and interests in promoting and securing legal protection for patent owners and encouraging innovation. The Professors asserted that the Supreme Court should grant Celgene’s petition for a writ of certiorari because the question of whether there is an unconstitutional taking in the retroactive application of inter partes reviews is a question that affects “thousands of patents and its resolution calls into question the constitutionality of a federal statute.”  The Professors noted that IPR is signi?cantly different from pre-AIA reexamination, particularly since in reexamination, the patentee is free to amend its claims an unlimited number of times, but during IPR there is “no back-and-forth between the patentee and examiner seeking to resolve claim scope ambiguity; there is no robust right to amend.”  Citing Monsanto, the Professors stated that patent owners “disclosed data and information to the public in exchange for exclusive right to practice the disclosed invention and under an understanding that this right could be abrogated only upon clear and convincing evidence that it was improperly granted”, but the “AIA abrogated these guarantees and allowed cancellation of claims under a preponderance of evidence standard and absent an opportunity to amend the claims.”  According to the Professors, this is a “bait-and-switch” that constitutes a compensable taking under Monsanto.

The Professors also noted that their empirical research and the research of others support Celgene’s position that the retrospective application of IPR is a regulatory taking. They explained that 64% of cases in which the PTAB reached a final decision resulted in all claims being found unpatentable, which “confirms that IPR proceedings are extremely hostile terrain for patentees.”  The possibility of a patent later being declared invalid is a factor that must be considered when determining the economic value of a patent, the Professors explained. Thus, they concluded that “the retroactive imposition of the IPR scheme is a taking because it has a significant negative economic impact on patent owners and diminishes the value of patents, thereby upsetting the investment backed expectations of patent holders.”


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Author: zimmytws

The Author

Rebecca Tapscott

Rebecca Tapscott is an intellectual property attorney who has joined IPWatchdog as our Staff Writer. She received her Bachelor of Science degree in chemistry from the University of Central Florida and received her Juris Doctorate in 2002 from the George Mason School of Law in Arlington, VA.

Prior to joining IPWatchdog, Rebecca has worked as a senior associate attorney for the Bilicki Law Firm and Diederiks & Whitelaw, PLC. Her practice has involved intellectual property litigation, the preparation and prosecution of patent applications in the chemical, mechanical arts, and electrical arts, strategic alliance and development agreements, and trademark prosecution and opposition matters. In addition, she is admitted to the Virginia State Bar and is a registered patent attorney with the United States Patent and Trademark Office. She is also a member of the American Bar Association and the American Intellectual Property Law Association.

Warning & Disclaimer: The pages, articles and comments on 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 as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of Read more.

Discuss this

There are currently 6 Comments comments.

  1. Pro Say April 6, 2020 4:10 pm

    Sadly, as with Atlas:

    SCOTUS will shrug.

  2. Anon April 6, 2020 4:27 pm

    Mixed emotions, as Celgene’s original arguments vis a vis takings were absolutely horrendous.

    I will have to take a look to see if they learned anything and improved their advocacy in the Feb cert petition….

  3. mike April 7, 2020 3:35 am

    The AIA didn’t just impose a revolutionary change that eviscerated settled expectations in property rights in every patent in force that issued before the AIA, but it also eviscerated settled expectations in every patent APPLIED FOR having a priority date prior the AIA. Had I known such a change in the risk factor would occur between inter partes reexamination and inter partes review, I would have never exposed my patent to the government and the public in the first instance. That the USPTO takes the position that patentees should have expected such a retroactive change is preposterous.

    Not only is retroactive application of IPRs to patents having pre-AIA priority dates an unconstitutional taking, it is “contrary to the first principles of the social compact” as explained in Federalist #44. This “one legislative interference is but the first link of a long chain of repetitions, every subsequent interference being naturally produced by the effects of the preceding.” Such retroactivity creates “speculations on public measures”, does not “inspire a general prudence and industry”, and does not “give a regular course to the business of society.” For at least these reasons, it is also an unconstitutional ex post facto law.

    Justice Thomas’ concurring opinion in Eastern Enterprises v. Apfel (1998) (citations omitted) states:

    “[T]he Ex Post Facto Clause of the Constitution, Art. I., §9, cl. 3, even more clearly reflects the principle that ‘[r]etrospective laws are, indeed, generally unjust.’ Since Calder v. Bull (1798), however, this Court has considered the Ex Post Facto Clause to apply only in the criminal context. I have never been convinced of the soundness of this limitation, which in Calder was principally justified because a contrary interpretation would render the Takings Clause unnecessary. In an appropriate case, therefore, I would be willing to reconsider Calder and its progeny to determine whether a retroactive civil law that passes muster under our current Takings Clause jurisprudence is nonetheless unconstitutional under the Ex Post Facto Clause.”

  4. mike April 7, 2020 3:47 am

    The “risk factor” I mention in my other comment also includes the change in the forum — from presenting arguments in front of an examier in the pre-AIA setting, to now presenting arguments in front of three administrative patent judges in a very different forum, requiring patentees to seek and hire counsel or seek education to learn how to defend using the new rules. Either case requires new, additional and unexpected resources to be expended by patentees, which dramatically changed the risk factor and expectations when entering the patent bargain.

    One may argue “there is no right in a given mode of procedure,” but it is unjust to change a patentee’s settled expectations when she entered the patent bargain and chose to disclose her invention to the government and the public having those expectations.

  5. Anon April 7, 2020 7:39 am


    It’s even worse when you consider the difference of the subject of what IPRs are aimed at: a vested and granted personal property right.

    There are facts that remain no matter the attempted (retroactive) argument often heard as justification: that the patent should not have been allowed in the first place, so… ‘no harm, no foul.’

    The fact remains that the Act of grant fundamentally changes an inchoate right into a full set of property rights.

    The fact remains that THAT set of property rights includes — as a stick in the bundle (and an extremely important on – just ask i4i) — the existence and level of a presumption OF validity.

    The fact remains that AT the institution decision point (and here, importantly, before any NEW (semi)judicial decision on the merits (in the quasi-judicial setting of the administrative branch, THAT the decision itself is a taking of the property stick of the presence and level of presumption of validity.

    The fact remains that the US Sovereign set a very high threshold for three distinct items: Life, Liberty and Property.

    Questions of Constitutional import remain strong for both life and liberty, as can be seen in cases of criminal law focus. But we (the Royal We) have taken our eye off of the ball when it comes to NON-criminal sanctity of property.

    Well, some of us (the Royal Us). Some of us have LONG been advocates of challenging unconstitutional actions (even if those actions are by the Supreme Court).

  6. jacek April 7, 2020 7:45 pm

    Re: “Some of us have LONG been advocates of challenging unconstitutional actions (even if those actions are by the Supreme Court).”

    Maybe this is the time for you, the lawyers, to publicly protests against violating of our constitutional rights by the highest court.
    Such action, no doubt, would catch public attention.
    I can imagine the effect of you in your robes in the streets.
    Looking at the Supreme Court’s general approach to avoid controversial subjects, even if their action created the problem is hard not to think that these guys are not intellectually equipped to handle the task.
    Last Year, I was reading a piece of newly introduced legislation (unfortunately No cosponsors) aimed at Supreme court judges accepting some form of gifts.
    With the amount of money poisoning, the US government is hard not to imagine that this part of the US is free of the same form of attack.
    There is very little doubt in the public mind that the supreme court is a politically biased body and not really up to the task.
    US constitution is one big lie when you face “civil forfeiture.” and committed no crime. Same with PTAB and Patents invalidations. US law is a joker invention.