Posts Tagged: "U.S. Court of Federal Claims"

Court of Federal Claims Dismisses Psychological Damage Claims Filed Against USPTO

On July 25, the U.S. Court of Federal Claims (CFC) issued a ruling in Pulnikova v. U.S. dismissing monetary damages claims for alleged violations of 42 U.S.C. § 1983 by patent examiners and officials at the U.S. Patent and Trademark Office (USPTO). Although the CFC expressed its sympathy for the inventor’s frustrations, including the pro se filing of “appeal-books” containing thousands of pages responding to office actions, the court added that it lacked subject matter jurisdiction to award the type of damages sought.

Federal Circuit Says Army’s Broad Approval Discretion in Trademark License Is Not at Odds with Trademark Law

In an appeal from the United States Court of Federal Claims (Claims Court), the United States Court of Appeals for the Federal Circuit (CAFC) last week affirmed a decision granting summary judgment in favor of the U.S. government with respect to a nonexclusive trademark license between the Department of the Army and an apparel company (Authentic Apparel Group, LLC v. United States). In the March 4 opinion, the CAFC agreed with the Claims Court that a license agreement’s provision giving the Army broad approval discretion over Authentic’s requests to use the Army’s trademarks on proposed products or marketing materials was not at odds with the principles of trademark law. The CAFC also held that Authentic did not present any legal or factual reasons to deviate from a plain reading of the license agreement’s exculpatory clauses.

Golden v. United States Shows That the Federal Circuit Overstepped Its Bounds in Celgene

Last week, in Golden v. United States, the Federal Circuit again rejected the argument that the cancellation of a patent in an America Invents Act (AIA) post-grant proceeding violates the Fifth Amendment’s Takings Clause. Just as it did in other cases raising Patent Trial and Appeal Board (PTAB)-related Takings Clause issues, the appellate court in Golden relied on its July 2019 decision in Celgene Corp. v. Peter (931 F.3d 1342 [Fed. Cir. 2019]), rejecting the Takings Clause argument on the merits. See Collabo Innovations, Inc. v. Sony Corp., 778 F. App’x 954, 961 (Fed. Cir. 2019); Enzo Life Sci., Inc. v. Becton Dickinson & Co., 780 F. App’x 903, 911 (Fed. Cir. 2019). But unlike these previous decisions, the Federal Circuit’s analysis in Golden also included discussion and resolution of an important threshold jurisdictional question—an issue that, as we argued in a November 2019 IPWatchdog piece, should have precluded the Federal Circuit from reaching the merits of the Takings Clause argument in Celgene in the first place.

Next Steps After Celgene: Federal Circuit Ruling on Takings Clause and IPRs Leaves Open Questions

Since the Supreme Court upheld the constitutionality of inter partes review (IPR) a little more than a year ago in Oil States, several patent owners have brought other constitutional challenges to America Invents Act (AIA) trial proceedings. These cases have been slowly percolating at the Patent Trial and Appeal Board (PTAB), the U.S. Court of Federal Claims, and the U.S. Court of Appeals for the Federal Circuit. In many cases, however, the Federal Circuit has declined to address these constitutional claims on the merits, finding them unnecessary to resolve or insufficiently developed by the parties. But early last week, 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, Case No. 18-1167 (Fed. Cir. 2019) “that the retroactive application of IPR proceedings to pre-AIA patents is not an unconstitutional taking under the Fifth Amendment.” While the court’s holding may appear on its face to forestall current and future Takings Clause challenges to AIA proceedings, its analysis leaves some questions unanswered, and may even provide a narrow path forward for future takings claims. Furthermore, given the Supreme Court’s predilection for addressing both AIA and Takings Clause issues, the Federal Circuit panel’s decision may not be the last word on this interesting issue.