Takings: A Costly Screen for IPRs.

by Dennis Crouch

In Oil States, the patentee lost its broad challenge to the AIA Post Issuance trial system. However the majority opinion penned by Justice Thomas hinted that other collateral attacks on the system could find more success.  Particularly, the court wrote that “our decision [finding that patents are public rights] should not be misconstrued as suggesting that patents are not property for purposes of the Due Process Clause or the Takings Clause.”

A Costly Screen: The takings clause is an interesting limit on government power. Rather than serving as an absolute limit, the clause creates a costly screen.  Although the government has power to take private property for public use, it is required to provide “just compensation” for every such taking.  “[N]or shall private property be taken for public use, without just compensation.” U.S. Const. 5th Amendment (1791).

If the government cancels my land ownership rights to instead create a public commons — the takings clause would require just compensation.  Imagine for a moment that the PTO’s cancellation of established patent rights is also categorized as a taking — the PTO would need to provide just compensation to the patentee.  The question now being raised in various cases — including the recent petition in Advanced Audio Devices, LLC v. HTC Corp.

One starting point: It is certainly a taking for the government to cancel patent rights in merely because it wants to use the invention or to give the public free access to the invention.  IPRs also involve cancelling patent rights.  However, in IPRs the patents are cancelled based upon a different justification — a non-patentability determination rather than merely a desire for unfettered public use of the invention.  The question though is whether this different justification will serve as a cognizable distinction.

The Advanced Audio petition adds the additional twist that its patents were filed pre-AIA.  Thus, the patentee asks the following question:

Whether inter partes review (“IPR”) of patents filed before enactment of the Leahy-Smith America Invents Act (“AIA”) violates the Takings Clause of the Fifth Amendment to the U.S. Constitution.

[Advanced Audio Devices SCOTUS Cert Petition (Final)].  Similar arguments are being raised in other cases, including the class action Christy v. USA.

Just Compensation for Cancelling My Patent

104 thoughts on “Takings: A Costly Screen for IPRs.

  1. 18

    I had not considered that there could be any way to make Examiners even more reluctant to grant claims. At times it already feels like they are examining under a Broadest Unreasonable Interpretation standard. Yet, here we are.

    If the revocation/invalidation of patents through IPR requires the Federal Government pay the invalidated-patent’s assignee/owner, the practical effect is going be that a much greater burden will be placed on the USPTO and thus the Examiner Corps to Not. Grant. Any. Damn. Thing. even remotely close to a borderline arguable case where the Fed Gov’t may have to one day pay the value lost on an improvidently granted monopoly.

    This is one of those situations where it might be better for the overly-zealous advocates to Just Leave It Alone, because the continued single-minded pressure may have undesirable consequences.

    (One would think that this lesson would have been learned already. Arguably, the lack of respecting / giving teeth to 103 under KSR led to defendants seriously resorting to 101. Similarly, one can argue that the bullying behavior of the patent owners in Myriad essentially pissed off enough people to form AMP and also attack on the basis of eligibility. Yes, those situations are different, but I’m sure everything will work itself out rationally if IPRs become a drain on the finances of the government.)

    1. 18.1

      Well, we could have a counter force – I hear that the USPTO just lost a major battle to Hyatt.

      1. 18.1.1

        Yes, but it was a Hyatt win in the D.C., not yet the Fed. Cir. Also unique to the unique Hyatt situation of his having so many patent applications with thousands of amended claims already pending so long that their future patent terms keep on extending indefinitely, with appeal avoidance, AND the bizarre and very unusual special treatment by the PTO some years ago which was a major contributor to those application pendencies.

    2. 18.2

      As to your apparent “blessing” of using 101 in place of 103 – that’s a critically different problem (and it is NOT with the patent holders).

  2. 17

    A common refrain in the comments below is that no Takings can occur if the patent right had not properly existed in the first place – in a PTAB finding of “invalidity.” Contrary to this notion, a PTAB finding of “invalidity” is still Takings without due process of law because this Fifth Amendment protection is an essential requirement for any legal proceeding regardless of the ultimate decision on validity.

    First, a PTAB invalidity determination may itself be in error – when the patent is actually valid. This PTAB error in IPRs cannot be challenged de novo in an Article III court as available for PTAB errors in affirming examiner rejections in prosecution. The only judicial review available in IPR is a Federal Circuit review deferential to the PTAB.

    Second, adjudications at the PTAB lack fundamental due process of law protections which are fully available only in Article III courts of law. Due process of law under the Fifth Amendment requires (a) inclusion of the presumption of validity and the application of a clear and convincing evidence standard for invalidation, (b) multiple procedural fairness protections in the proceedings, and (c) safeguards for fair availability of discovery.

    None of these are properly available in IPRs. Rather, the PTAB applies no presumption of validity and invalidates claims by mere preponderance of evidence, which is “a constitutionally defective evidentiary standard” when the countervailing risk of error for the litigants are asymmetric. Santosky v. Kramer, 455 U.S. 745, 745-46 (1982).

    The limits on discovery in IPRs undermine substantive litigants’ rights that can only be available in an Article III court. The latter’s discovery standard provides that “[p]arties may obtain discovery regarding any non-privileged matter that is relevant to any party’s claim or defense and proportional to the needs of the case…” Fed. R. Civ. P. 26(b)(1). In contrast, the one-year statutory deadline for completion of IPRs in 35 U.S.C. § 316(a)(11), and the substantial hurdle of meeting the PTAB’s permissible discovery “in the interest of justice” standard under 35 U.S.C. § 316(a)(5) results in PTAB denial of discovery that would otherwise be available in Article III courts. See Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001, Paper No. 26, at *5–6 (PTAB. Mar. 5, 2013) (In IPR, “discovery is limited as compared to that available in district court litigation.”) The lack of such protections is a direct result of Congress’ deliberate choice to displace Article III adjudications through cost reduction for invalidating patents at the expense of patent holders.

    The fact that the SCOTUS held in Oil States that IPRs’ removal of invalidity adjudications from Article III courts does not violate Article III of the Constitution does not mean that such removal does not violate other provisions of the Constitution such as the “due process of law” clause of the Fifth Amendment, a matter that was not before the Oil States Court.

    While IPRs provide a procedural process for adjudication, they do not provide “due process of law,” which only Article III courts of law provide. So it matters not whether a tribunal finds an issued patent invalid ex-post – the Fifth Amendment protections must be available throughout the proceedings regardless of their outcome.

    1. 17.1


      In a rough translation, some view it as “OK” to kick you out of your house at the onset of any process, and then say “no foul” if in the end, the non-Article III body states that you shouldn’t have had the house all along.

      Separately, Ron, I would be interested in your views of “Public Franchise Rights” – still being a form of property – have as much “impact” in Takings law as does the (formerly understood) “Private Personal Rights” that patents were (near universally) understood to be prior to Oil States. Most all of my Takings Law understanding is not reflected in any cases that deal with “Public Franchise” types of property. I was curious if you feel that this (underlying fundamental change) affects the Takings stance – in your opinion.

      1. 17.1.1

        I believe that any discussion on “Public Franchise Rights” of patents is a distraction from the rights actually adjudicated in IPRs. The SCOTUS sidestepped those issues in Oil States despite our amicus brief’s urging that they focus on those as required by their own decision in Tull v. U.S..

        First, even if the patent is found invalid, there are implicated rights extinguished that are strictly “private rights.” Whether in court or at the PTAB, an issued patent must be presumed valid, 35 U.S.C. § 282, and “shall have the attributes of personal property.” 35 U.S.C. § 261. Takings may thus occur of a private trade secret right that would not have been disclosed but for the reliance on the statutory promise of Sections 282 and 261 of the patent bargain. It is the government that is responsible for an “error” in issuance (and publication of a trade secret), and the government’s dedication of the trade secret to the public is a Taking of private rights.

        Second, as you correctly point out below, the issuance of the patent constitutes “inducement” subject to which the patent holder incurred “franchising” costs, which are private rights. And more importantly, even if the ex post invalidation of the patent is justified, any value of post issuance investments the patent holder made under the expectations of, and reliance on, the statutory presumption of validity and the property attributes of an issued patent are private rights that are redistributed to the public. This too is a Taking of private rights – not public rights.

        To be sure, I am not saying that the government cannot engage in such Taking; it certainly can, and perhaps should; but it must do so with due process of law and provide fair compensation for that which was taken.

        I refuse to discuss “Public Franchise Rights” of patents because it should be irrelevant to IPR’s constitutionality. Oil States was wrongly decided because the Court did not focus on the rights actually adjudicated in IPR, which are private rights. Any “Public Franchise Rights” of a patent may relate only to the enforcement of the exclusive right, i.e., § 271 (infringement of patent), § 281 (remedy for infringement of patent); § 283 (injunction), §§ 284, and 286 (damage awards), and § 285 (award of attorney fees). None of these are adjudicated in IPRs.


          Thanks Ron – interesting notion that although the Court classified the entire patent as being of one type, that a patent may have a panalopy of rights, some of which may be designated “public,” while others designated “private.”

          I’ll have to ruminate on that.

    2. 17.2

      Re: “a PTAB finding of “invalidity” is still Takings without due process of law. ” Yes, but flogging a dead horse as an attack on the entire system, as opposed to a few individual evidentiary IPR errors.* Numerous due process violations have been alleged in IPRs, Fed. Cir. appeals, and at the Sup. Ct. in Cuozo briefs. If there were actual fundamental 5th Amendment Constitutional violations in every IPR or reexamination they would have long since been successfully argued on appeal. The AIA will be 7 years old in September, and of course inter partes and ex parte reexamination is very much older and of course contains the same fundamental 5th Amendment Constitutional violations you are still alleging.

      *A very small number of due process violation allegations which have been sustained at the Fed. Cir. have been given remands to the PTAB to provide the other party with a responsive evidence opportunity.

      1. 17.2.1

        they would have long since been successfully argued on appeal

        Vacuous logic amounting to “don’t argue that now” –without addressing the argument.


          I would be happy to see you and anyone else here dare to make your arguments in an actual case or amicus brief. I would only be bothered if you were conning a client into paying for it.


            And I would be happy to see you NOT snipe from the sidelines here and actually engage on the merits.

            The “out yourself with an amicus brief” is beyond lame and entirely fails to deal with the fact that HERE AND NOW is a different forum and a conversation that you are not engaging with on the merits.

            Instead, we just have your lame rebuttals and “but no one argued that” mantra.

            Well, clearly someone HAS argued that – and argued it HERE. Maybe instead of the dodging, you actually spend a little time and address the points being made HERE.

            By all means, Paul, follow your own advice and ONLY “post” in amicus briefs if that is the forum that you deign to be the only one that counts.


              One does not have to “out oneself” IF one can find anyone that agrees with one’s legal theories and is signing and filing the amicus brief themselves. Or, is willing to raise arguments in one of their own cases as suggested in hundreds of published comments.


          Forget about amicus briefs. Let me turn the question directly back to you given the information in my post at 17.3:

          If you were counsel to Oil States in the IPR, would you have left on the table the Fifth Amendment retroactivity argument and not raise it with all other challenges? If so, please explain why?


            No. But that is not what we are talking about now that Oil States has been decided with only one dissent, and on a pre-AIA patent.


              This is not about what has been decided by SCOTUS – it is about what has not been decided. It is an effort to get you to explain why you think that Fifth Amendment challenges at this stage are futile. Your point was that they would have been raised earlier if they had merit. So I tried to get you to explain why they had no merit at the time they could have been raised.

              Please give actual reasons tied to the substance of the arguments – not to the fact that they were not raised – why the Fifth Amendment arguments have no merit now.


                I am frankly amazed that Paul has even bothered engaging at this level.

                He typically limits his involvement to cheerleading for the IPR regime (and taking snide shots from the sidelines).

                Oh wait, that’s what he is doing here.

    3. 17.3

      The fact that nobody since the AIA has raised these Fifth Amendment infirmities of IPR is of no import. At best, it only shows counsel’s lack of foresight and proper analysis, and at worse an indication of malpractice.

      The attached table shows the various cases for which a cert petition on IPR was filed. But only Oil States’ was granted. Now, note that unlike its failed predecessors, the Oil States’ case had the ideal fact pattern and patent attributes for challenging IPR based on the Fifth Amendment.

      First, the `053 patent was filed not only before the AIA, but also before the AIPA’s inter partes reexaminations became law. This constitutes the strongest Takings argument against retroactive application of the IPR statute. Congress could not “impair” a patentee’s existing “right of property” by retroactively changing the law. McClurg v. Kingsland, 42 U.S. 202, 206 (1843); Richmond Screw Anchor Co. v. U.S., 275 U.S. 331, 345-346 (1928) (refusing to interpret a statute to “take away” a patent holder’s right to sue government contractors for infringement to avoid “serious” Fifth Amendment constitutional questions). So why did Oil States’ counsel blow this opportunity to raise an obvious Fifth Amendment cause of action?

      Second, note that Oil States’ `053 patent was never published before issuance, making this a classic case of the patent bargain – disclosure in exchange for the exclusive patent right. This too was an ideal fact pattern for arguing that the government “error” in issuance resulted in its Taking of a trade secret right without just compensation. So why did Oil States’ counsel blow this further opportunity to raise the Fifth Amendment cause of action?

      Indeed, one cannot miss the text inserted in the SCOTUS decision, without which there would likely not have been 7 votes:

      “We emphasize the narrowness of our holding. … we address only the precise constitutional challenges that Oil States raised here. Oil States does not challenge the retroactive application of inter partes review, even though that procedure was not in place when its patent issued. Nor has Oil States raised a due process challenge.” Oil States, 138 S. Ct. 1365, 1379 (2018).

      You see Paul, one cannot assume that just because the Fifth Amendment challenge was missed, it does not actually exists in spades. Meritorious constitutional causes of action are not always raised immediately after a law is enacted. Your logic is fundamentally flawed.

      1. 17.3.1

        Re: “..at worse an indication of malpractice.”
        That must make several thousand malpractice cases by now since most IPRs were against pre-AIA patents. Likewise all the inter partes reexamin ations against patents issued before that statute. Law firms are apparently missing a major new revenue source.


          Again, please explain what in your view all those who did not raise the Fifth Amendment argument know that we do not? Please enlighten the readers of this blog with your knowledge of why retroactive application of the AIA is not constitutionally infirm.


            Ron, that is already covered in other comments here and elsewhere. But more to the point, we will soon see the outcome of this Sup. Ct. cert petition, which is what counts, not personal opinions which no Fed. Cir. judge has yet supported.

  3. 16

    Still waiting for answer/rebuttal to Government “taking” of patents question at 5 re “Court of Federal Claims” [or old Claims Court].

    1. 16.1

      What are you talking about Paul? The entire underpinning of the Court of Federal Claims is based on ‘takings’ law – and the limited waiver of sovereign immunity.

      1. 16.1.1

        The holding of Oil States is such a giant sea change, SCOTUS had to toss in a little ‘takings’ and due process dicta – because it basically put both the Art III courts and the Court of Federal Claims out of a job and jurisdiction.


          As I have pointed out, that “tossing in of dicta” is self-defeating based on the facts already present in the Oil States case itself.

          The tossed-in dicta cannot conflict with the Ends reached on holding.

          No matter if the point was argued or not.

          One person here has postulated that since the item to which the dicta pertains was not “presented to the court,” that the fact of the Oil States case itself are immaterial to what the Court states. The problem of course is that such is simply not true. Facts remain facts. The Court – by holding one way and yet “offering dicta” that “supposes” the rule of law (based on the same facts alone) would yield a different result sets up a Gordian Knot. Both the holding and the dicta cannot be true. Not with the single and unchanging facts of the Oil States case itself.


            (Let me add that this is so in part because of the level of the court involved – that one person may be mistaken based on viewing the subordinate courts (and the fact that such offered dicta may well be applied as one goes higher in the judicial branch). The problem for that person’s thinking is that there is no such outlet or higher place to go than the body offering the dicta. This is why dicta and holding offered on a single case (and facts of that single case) that result in mutually exclusive results is an indicator that the offered dicta is meaningless.

    1. 15.1

      Wow, missed that one. That is exactly Hayburn’s case writ large. Oil States is just such an abomination to what it means to have a Constitutional guarantee of an independent judiciary to decide a case and controversy in which it has jurisdiction. Just open warfare to elevate PTAB, which per the statute and the unitary Executive, is like the President himself overturning a decision of an Art III court. CAFC had become it’s own worst enemy, is lawless, and antithetical to the Constitution. Guess it just goes to show – public choice theory is like a law of physics – its only a matter of time before total capture.

    1. 14.1

      True. But the PTAB rules and procedures cannot determine whether a patent is valid or not. It is more like flipping a coin to determine validity.

      1. 14.1.1

        the PTAB rules and procedures cannot determine whether a patent is valid or not. It is more like flipping a coin to determine validity.

        Not very persuasive to simply make stuff up that sounds good to you. Please try harder. Most of us grown up patent attorneys can tell pretty easily whether a patent is cr@p or not. We’re paid between $500 and $1500/hr to do that on a regular basis by clients who keep coming back for more.


          Not very persuasive to simply make stuff up that sounds good to you. Please try harder.

          Heed your own advice, PLEASE.

    2. 14.2

      …at a minimum, Franchisee expenses?

      Perhaps even, since the government is the Franchisor, and the act of Franchising creates an expectation value, some “fair” portion of expected income…. (but for the Franchisor granting the original Franchise rights, there would be no expectation, so given the fact that the Franchisor is the “controller” in any such grant, they have induced the expectation)

  4. 13

    “Imagine for a moment that the PTO’s cancellation of established patent rights is also categorized as a taking”

    This scenario assumes the conclusion that PTO cancellations are takings, in addition to invalidity determinations. Then the question is asked whether the “different justification” of a non-patentability determination is a “cognizable distinction.”

    The answer is that a determination of non-patentability is the only justification for cancelling claims in an IPR proceeding.

  5. 12


    USPTO grants a ridiculously broad composition claim to Tr0llBio, Inc. that covers injectable insulin in a solution comprising a physiological acceptable concentration of salt. It’s a travesty. Neverthless … “presumed valid”!

    Iancu is asked about the patent, which is generating headlines about PTO incompetence, huckster applicants gaming the system etc, and Iancu replies “Well, that patent is obviously problematic and we are working to understand how it was granted.” Tr0llBi0 stock tanks and some potential licensees walk away from the table (losses on the order of hundreds of millions of dollars).

    Is that a “government taking”?

    I’m especially interested in comments from the Re pu k k k es and glibertarians who are the f0lks who tend to cheerlead most strongly for abolishment of the IPER system (LOL! never going to happen, l 0 sers)

  6. 11

    A prior comment in relation to the actual Oil States decision belies BOTH this article’s lead in statement of “In Oil States, the patentee lost its broad challenge to the AIA Post Issuance trial system. However the majority opinion penned by Justice Thomas hinted that other collateral attacks on the system could find more success.” as well as the dicta itself offered by Justice Thomas.

    The patent in Oil States IS a pre-AIA patent.

    If the dicta by Thomas had any actual “bite,” there would be nothing stopping the Supreme Court (given their own predilections with their own sense of Supremacy) from deciding the case on that angle.

    By offering that angle as a mere “maybe someday but not today” ON an item to which that “maybe” attaches eviscerates that dicta.

    Any future holding on that point would immediately be in conflict with the fact that the Oil States case had the proper fact pattern but did NOT apply the law in that manner.

    1. 11.1

      While you can blightly wave your hand and say that the Court could have decided the case on the angle (using the Taking Clause)….you conveniently bypass the well-written rule at the SCOTUS that they decide cases based on the ISSUES PRESENTED, arguments made, and the law (as individually interpreted by the nine Justices).

      Neither Oil States lawyers, the PTO, nor the U.S. Solicitor briefed anything regarding the Takings Clause and the case wasn’t argued along those lines at any point in the proceedings….so how was the case RIPE to rule on regarding that particular issue (raised by none of the parties)?

      In the past…in such circumstances where a potential flaw is seen by several SCOTUS Justices…a dicta-like warning pointing out other avenues other aggrieved party can pursue isn’t uncommon.

      1. 11.1.1

        Your “well-written rule” is not so.

        Mere normal courts may have that rule, but you are referring to the Supreme Court.

  7. 10

    More silliness and pontification from the patent prosecution bar…

    How exactly is IPR a “taking”?? The Takings Clause applies to private property being “taken” for a “public use.” Private property? Check, I’ll give you that one. The patent statute itself says that patents have the “attributes of personal property,” 35 U.S.C. 261, although that property right is expressly “subject to” the other provisions of the Patent Act under Section 261.

    But how is IPR a taking?

    The AIA allows a patent to be revoked based on a finding by the agency that the patent did not meet the conditions prerequisite to obtaining the patent in the first instance. The revocation of a patent that never should have been issued isn’t a “taking” because the patent rights aren’t being transferred to the government or anyone else; they’re being extinguished because they were never valid. And assuming the PTAB found the patent unpatentable, and was right about that, why would anyone think the patent owner should receive “just compensation” for having its invalid property removed from the patent landscape?

    To use a real property analogy, a “taking” would be when the government seizes your land and transfers it to someone else (such as a government agency). AIA is more akin to the situation where the deed to the real property turned out to be invalid, maybe because of a prior recorded transfer, or because you forged the grantor’s signature, or for whatever reason. And that’s not a “taking” in the sense of the Fifth Amendment, nor is that a “public purpose” even if it was a taking. The “takings” analysis simply doesn’t work.

    1. 10.1

      Basically I think you are right. But the takings would be giving to the public the invention which was disclosed in exchange for exclusive right to the invention for a limited period of time. So there is a good argument for a taking.

    2. 10.2

      The taking is the damages available in a court of law that does not find the patent invalid. That is what the agency took when they held the patents were issued in error. While this case was not tried in a court of law, the substantial licensing deals pre-AIA indicate it is very likely it was a valid patent. But for the PTAB death squad, HTC would have had to pay for damages for infringing these patents.

      1. 10.2.1

        IR: I get your argument. Read below. Close to what I said.

        The difference is that I am saying that it is not per se that there can’t be a takings. There could be. For example, if Congress passed a law that said that the PTO director may invalidate any claim for public good. This might be a takings.


          Or because the (previous) Director applied a stricter requirement than the Patent Act, BRI for example.

    3. 10.3

      I agree entirely with your analysis here, but I wonder if “public purpose” is really an element of the takings analysis. I am sure that—as a practical matter—most government takings are takings to advance a public purpose. Still and all, if the government were to take your property merely out of caprice or to advance the private ends of a corrupt functionary, surely the government would have to compensate you all the same, no? Are you aware of a case in which the government was excused from the obligation to pay just compensation because the taking of property did not advance a public purpose?

      1. 10.3.1

        No, the Government cannot get out of paying “just compensation” because an alleged taking wasn’t for a “public use.” The premise of the Takings Clause is that the purported taking IS for a public purpose, otherwise it’s a clear violation of the Fifth Amendment.

        Of course what constitutes a “public use” is pretty broad under the Supreme Court’s much-reviled decision in Kelo v. City of New London, 545 U.S. 469 (2005), where they held that the transfer of property from one private entity to another (for “redevelopment purposes”) was a “public use” because of the general benefits enjoyed by the community.

        But that still implicates the taking (i.e. transfer from one to another) of private property; canceling an invalid patent isn’t a taking, and it’s pretty silly to think otherwise. The fact that the alleged invention falls into the public domain doesn’t make it a “taking,” it simply means the property right isn’t valid. The same would be true if you held a forged deed to the land used for a public playground. If the deed is declared invalid, that’s not a taking, even though the land now falls into public use.


          The fact that the alleged invention falls into the public domain doesn’t make it a “taking,” it simply means the property right isn’t valid. The same would be true if you held a forged deed to the land used for a public playground. If the deed is declared invalid, that’s not a taking, even though the land now falls into public use.

          Exactly. Agree 100%.

      2. 10.3.2

        Cancelling an invalid patent is not what happens in an IPR. They are “reconsidering the original decision to grant the patent”. They are determining “unpatentability” under their rules and procedures which under the APA can be stricter than required by the Patent Act. Using BRI for example. Refusing to weight the credibility of so-called experts in a live cross-examination for another. Denying patent owner discovery to prove up commercial success or copying for another. Ignoring the 7th amendment for another. Thirty minute trials for another. Skipping most of the FRCP for another. These things the agency can do. But if they do, they are not determining validity of the property right. To say that there is not a property right because the kangaroo court said so is non-sequitur.


          ALL of that which you reference here are part and parcel of the effect of the separate legal point of the institution decision.

          People – for some unknown reason – are not willing to uncouple two separate legal events (the institution decision and any later subsequent decision on the merits).

          The fact that you can distinguish what “the decision on the merits” means provides a two fold benefit:

          1) The points of your own post.
          2) the fact that the two legal events are separable


          30 minute trial? What are you talking about. Trial is one-year long. Everything after institution is the trial. Oral argument is typically 30-minutes per side for 1-hour. With consolidated IPRs, they can be longer (I’ve experienced 90 minutes per side). I haven’t been in one where the patent owner has asked for more time. And I’ve definitely seen patent owners sit down with 20+ minutes left (where 90 minutes was allotted).

          I’ve also experienced the process from the other side, representing patent owners. I’ve only experienced a professional Board (not a kangaroo court). And I’ve been successful in defeat IPRs for patent owners. Some panels even seem to bend over backward to help the patent owner, albeit this isn’t the norm. I’ve seen institutions denied based upon arguments sua sponte raised by the Board (where the actual arguments raised by the patent owner were just bad).

          I think many here either (a) don’t know what they are talking about, (b) are angry because their clients’ invalid patents were rightly found invalid, (c) they perhaps aren’t very good attorneys and so a patent was wrongly invalidated, or (d) maybe they’ve just been unlucky. In any event, the vitriol is often over-the-top.


            Parsing semantics is not a rebuttal. I was talking about the 30 minute hearing. In a real court the parties get that much time for the opening statement in a Markman hearing. It doesn’t matter how professional it is, the procedures make it a kangaroo court.

            You agree that the hearing is only 30 minutes per side. That is one factor that makes it a Kangaroo court. What about the others?

            They could also dress up in uniforms and gather in a wood paneled room and professionally flip a coin to determine the patent is invalid. Same thing. It is invalid merely because they declared it so applying arbitrary shortcut procedures.


              The IPR final hearing is for attorney oral arguments AFTER a trial in which all the evidence must submitted, contested, declarations subjected to live cross-examination, and final briefs have been submitted. Your arguments and cites to their support in the record are supposed to already be in your final briefs! It is not an evidence and testimony proceeding such as a pre-trial Markman proceeding can be for claim interpretation.
              Also, an IPR has far less issues to dispute than a patent trial. In a patent trial often the most serious dispute is over products infringements, validity issues are not restricted to only prior patents and publications, and technology and patent law have to be explained to lay jurors.
              IPRs are not going to be eliminated or improved by misunderstandings or inaccurate representations as to how they operate. Specific rule change suggestions are needed.


            I think many here either (a) don’t know what they are talking about, (b) are angry because their clients’ invalid patents were rightly found invalid, (c) they perhaps aren’t very good attorneys and so a patent was wrongly invalidated, or (d) maybe they’ve just been unlucky. In any event, the vitriol is often over-the-top.

            It’s “over the top” because hysterical dust-kicking and sycophantic misinformation campaigning is pretty much all these people know how to do. They aren’t “innovative.” They aren’t particularly smart. They’re just incredibly loud and overburdened with the some of the legal profession’s most extreme narcissism and entitlement issues. This has been going on for years.

            Plan A: complain that the patent system is being destroyed by entities who “don’t understand innovation” or by incredibly successful entities who plainly do understand innovation but who are just being mean
            Plan B: come up with a bizarre hail mary argument regarding “unconstitutionality” or (worse/better) a statutory interpretation argument completely at odds with decades of reasoned understanding and the congressional record
            Plan C: when plan B fails, attack the entire premise of judicial review of the patent system as “broken”/unconstitutional
            Plan D: start from Plan A and pretend that nobody is paying attention

    4. 10.4

      A cop caught me coming out the window of somebody’s house carrying a TV set. They took the tv away from me before booking me for burglary. Takings clause, save me from this state tyranny!

      (How is this meaningfully different from someone who claims to have invented something that was already in the public domain and who wrongfully files for a patent monopoly on that basis, thereby attempting to rob the public of something it rightfully owns?)

      1. 10.4.1

        A cop caught me coming out window of my own house carrying a TV set. They took the tv away from me and convicted me (and yes, I am ‘upping’ your story here) of being a burglar.

        Never mind that the window was a double wide and was simply an easier way to remove the giant TV than through a narrow door, which was down a narrow and twisting hallway.

        How is this meaningfully different?

        Well, for starters, you might want to read Ron’s posts at 17 and 17.1.1.

        Secondly, if in fact this is a case of “attempted robbing the public of something the public rightfully owns,” then there are proper legal channels for that. Or do those legal channels not interest you?

  8. 9

    Clarifying the syllogism under the most recent “error correction” jurisprudence (i.e., Oil States and Saint Regis Mohawk Tribe):

    1. If IPR is a taking then the government will compensate the patent owner

    2. If IPR is not taking and the patent is found invalid under §282 then the patent owner gets nothing

    3. If IPR is not a taking and the patent is not found invalid under §282 then the patent owner gets damages from the infringer

  9. 8

    For Ex Parte Reexamination (EPR), was there ever a challenge to the applicability to patents filed before the enactment of EPR?
    In Oil States, there was an admission that EPR was constitutional. If EPR applied retroactively, then there should be no difference with IPR applying retroactively.

      1. 8.1.1

        The admission may have been based on a prior case upholding EPR. Does anyone have a cite?


          Yes, Patlex Corp. v. Mossinghoff, 1985. The Federal Circuit held that PTO ex parte reexamination proceedings do not violate the Seventh Amendment or Article III of the Constitution. Later on in Joy Technologies v. Manbeck they also re-affirmed the adjudication of “public rights” in reexaminations.

  10. 7

    This will go nowhere. They have already said–don’t remember where–that post-grant procedures are invalidating claims that were improperly granted.

    The takings clause approach will go nowhere.

    1. 7.1

      That depends on how the question is asked.

      Ask – as here – on something after a final determination on the merits has worked against you is quite different than asking at a different Takings point – at the institution decision point prior to any adjudication on the merits – and your answer may well be VERY different.

      1. 7.1.1

        anon, they have said it is a public right like a driver’s license. I know a driver’s license is state. But they could pass a new law that said licenses used to be for life, but now we are saying that you have to pass the eye test every year after the age of 70.

        Etc. This has no chance.

        A public right coupled with characterizing invalidating claims as merely invalidating claims that were improperly granted and we have nothing.


          You too are making an error by ONLY looking at the coupling and wanting to view this ONLY AFTER a decision on the merits may have been arrived at AND that decision is a negative one.

          Recalibrate and look at ONLY the separate legal point of the institution decision point.

      2. 7.1.2

        the institution decision point prior to any adjudication on the merits

        This ridiculous nonsensical position of yours was roundly tr@shed here before the Supremes tr@shed it “officially.”

        The fact that you belong to the completely discredited Mayo Nays crowd just puts the clown nose on the face of your ign0rance-embracing denialism. Do yourself a favor and just stop already.


          Your “legend in your own mind” has affected you (again), Malcolm, seeing as neither here nor the Court has “trashed” my point.

          It takes more than your vapid and unsubstantiated “say-so” to effect a “trashing.”

          You actually have to provide some cogent legal reasoning.


            vapid and unsubstantiated “say-so”

            Yes, that is an excellent summary of your baseless inarticulate g@rb@ge assertion that the institution of an IPR proceeding is some sort of “taking.”

    2. 7.2

      NW, that is being realistic, but there is apparently no end of attorneys willing to try yet-another constitutional challenge to IPRs as long as some companies let them bill stockholder dollars to do so.

  11. 6


  12. 5

    Just to add a twist question to the above statement that “It is certainly a taking for the government to cancel patent rights in merely because it wants to use the invention..”
    Does than mean that every time the “Court of Federal Claims” frequently holds that a patent that the Government IS using is invalid [and thus does not award compensation to the patent owner], that that is an unconstitutional “taking?”

    1. 5.1

      P.S. Note that AIA IPRs being applied retroactively against pre-AIA patents is not being challenged directly or solely here, only as tied to “takings.” One hurdle is the difference in statutory scope of AIA IPRs, CBMs, etc., and all prior reexaminations, vis a vis AIA PGRs is clearly indicative that such retroactivity was intended for IPRs.

  13. 4

    Is it a taking for the government to kick you out of a house you are trying to adversely possess? What would be just compensation?

    1. 4.1

      You forgot about the presumption of validity that exists PRIOR to any final decision on the merits – so your analogy does not fit.

      1. 4.1.1

        You a squatting on something that belongs to me. It shouldn’t matter that a government agent wrongfully told you that it was yours. You shouldn’t get any compensation now that the government says “What a minute, we were wrong. That is not Anon’s house, that is OSitA’s house.”


          Where do you get this “it shouldn’t matter” in view of the point presented here that the self-same government has provided a statutory presumption (and a high level one at that) to the opposite?

          Pay attention squirrel – this point here that I make is PRIOR TO any adjudication on the merits.


            I genuinely don’t understand what having a statutory presumption of validity that exists PRIOR to any final decision on the merits matters in this context. The confusion likely stems from our different views on the matter. I am going to try to articulate what I understand that difference to be.

            OSitA: When a patent is invalidated through an IPR, it is as if you never had rights to that invention. You are in the same position as if the patent never issued. (I acknowledge that this somewhat involves a legal fiction because you may have exercised some of these now non-existent rights in good faith while you thought you had those rights). Therefore, nothing was taken from you.

            Anon: You had the full basket of rights up until the IPR cancels the claims. Therefore, something was taken from you.


              There is a separate legal action at the institution decision point.

              Recalibrate and focus on that.


              I genuinely don’t understand [how] having a statutory presumption of validity that exists PRIOR to any final decision on the merits matters in this context.

              I do not wish to put words in anyone else’s mouth, but perhaps I can clarify this for you. Anon has a theory (baseless, in my view, but that is for the courts to say) that the patentee suffers a taking at the point of institution. Before institution, the patent is entitled to a presumption of validity that a claim—to be invalidated—must be proven defective by “clear & convincing” evidence. Microsoft Corp. v. i4i Ltd., 131 S. Ct. 2238 (2011). After institution, however, the claim need only be proven defective by “preponderance of the evidence.” 35 U.S.C. § 316(e).

              In other words, under Anon’s theory the patentee has lost the delta between “clear & convincing” and “preponderance of evidence” at the moment of institution. He considers this to be an uncompensated taking.

              The problem with this theory, of course, is that the patentee loses no such thing. Even after institution, if someone wants to challenge the claims in court, the challenger must rise to the clear & convincing standard in that court challenge. Meanwhile, it has never been the case that the patentee was entitled to a “clear & convincing” standard in PTO proceedings (when a patentee was dragged into a interference, for example, the standard always used to be “preponderance of the evidence,” Norton v. Curtiss, 433 F.2d 779, 798 (C.C.P.A. 1970)).

              In other words, Anon’s theory is legally baseless. Still and all, that is the theory to which he is alluding when he advances his takings argument. I hope that helps to clarify the exchange for you.


                The problem with this theory, of course, is that the patentee loses no such thing. Even after institution, if someone wants to challenge the claims in court,

                That misses the point as to the property itself – it is NOT an issue of the property upon enforcement (and where such is being enforced).

                In other words, Anon’s theory is legally baseless.

                Not so – you have merely misapplied the direct and simple premise with an extraneous factor unrelated to the property itself.


                The problem with this theory, of course, is that the patentee loses no such thing. Even after institution, if someone wants to challenge the claims in court, the challenger must rise to the clear & convincing standard in that court challenge. Meanwhile, it has never been the case that the patentee was entitled to a “clear & convincing” standard in PTO proceedings (when a patentee was dragged into a interference, for example, the standard always used to be “preponderance of the evidence,” Norton v. Curtiss, 433 F.2d 779, 798 (C.C.P.A. 1970)).

                Just to be clear, Mr. Squirrel, I would like to unpack my refutation a bit further.

                Even before the AIA, each patentee took the patent subject to the understanding that the claims would require clear & convincing evidence to invalidate in court (as in an infringement suit or a DJ action), but only preponderance of the evidence to invalidate in a PTO action (as in an interference). All that the AIA did was add an additional class (IPRs) of PTO action in which a claim could be challenged.

                Under the AIA, the patentee has the right (1) to insist on clear and convincing evidence in order for a court to declare a claim invalid before the PTAB institutes an IPR, and (2) to insist on clear and convincing evidence in order for a court to declare a claim invalid after the PTAB institutes an IPR. Similarly, the patentee can only demand that PTO establish invalidity by preponderance of the evidence before the PTAB institutes IPR, and can likewise only demand preponderance of the evidence after the PTAB institutes an IPR.

                In other words, the patentee has lost nothing at the moment of institution. All of the rights that the patentee has vis-à-vis “clear & convincing” vs. “preponderance of the evidence” are exactly the same before and after the moment of institution.

                Still and all, for those who oppose the AIA, any port in a storm will serve. I am sure that if this theory of unconstitutionality were ever raised, it would be (deservedly) shot down, and the partisans of this theory would begin eagerly formulating another theory of unconstitutionality, because they just know that IPRs have to be constitutionally insupportable unless and until they become as complicated and expensive as Art. III litigation.

                1. Greg,

                  Thank you for this clear and cogent addition to the dialogue.

                  THIS is something worth considering – and I will consider it.

                2. Greg,

                  A weakness to the “take the patent per the understanding…” is that even Congress is not free to write law “to an understanding” that violates other protections of the Constitution.

                  If property is protected under the Takings clause prior to what Congress did, then the change in the AIA cannot take that away.

                  Granted, this position does depend on patents actually being PERSONAl private property (per an unchanged portion of patent law) as opposed to the PUBLIC Franchise property as re-written by Oil States – which is to say, the legal view under personal private property protection is a known item, whereas I am less certain how a Public Franchise property right is treated under Takings law.


              But for the fact you published your trade secrets to obtain the now – incorrectly issued patent – then sure you are in the “same” position, but don’t have any trade secrets to the best mode of the claimed invention. Just saying.


                Interesting fold in of Trade Secrets.

                Your comment too hints at Quid Pro Quo.

                The act (of the Franchisor) in publishing presents only a partial exposition.

                While it remains true that the non-publication route remains open, the fact remains that patentees OPT for publishing (either directly in an unconstrained fact pattern, or indirectly by “publishing” elsewhere), thereby removing the Trade Secret “route.”

  14. 3

    The question though is whether this different justification motivation will serve as a cognizable distinction.

    Hmmmm does motive ever figure into legal proceedings?

    anon says if you even look at a patent crossways you have “taken” from the patentee the inalienable dignity of the patent, which is of course presumed by God to be valid.

  15. 2

    I am entirely on board with the idea that subjecting pre-AIA patents to IPRs works a taking. I am far more skeptical, however, that any determination of unpatentability (even of an AIA patent claim) in an IPR can constitute a taking.

    The government cannot take what the patentee never had. When the PTAB finds that a claim is invalid as anticipated, that is merely a finding that while the patentee might have thought that she had a legally enforceable claim to X, it turns out that X was already in the public domain, and thus she never had such a legally enforceable claim in the first place. It is not a “taking” for the government merely to inform you that you did not own that which you thought that you had owned.

    1. 2.1

      Thanks for highlighting this Dennis. The government wants to change its mind under the “error correction” doctrine, now endorsed by the Supreme Court in Oil States. And now the Federal Circuit has added clarity in Saint Regis Mohawk Tribe that IPR has not turned out to be an adjudication between private parties after all.

      The government (PTO and DOJ) does not believe the subject matter was in the public domain from the beginning. They admit to interpreting the claims more broadly than the courts. The admit that a patent can be invalid in the agency while still valid in the court.

      There is no taking. The cancellation of the claims under these admissions cannot be retro-active. The question of whether the claims were valid for the period between grant and cancellation is still an open question for the courts in a §281 action. At best the PTAB decision is evidence or advisory. Under 2017-18 jurisprudence is not an alternative adjudication of validity as a defense to infringement.

      1. 2.1.1

        At best the PTAB decision is evidence or advisory.

        Except that is expressly NOT what the AIA provides.

        Your “answer” cannot hold if but only for that single point.

      2. 2.1.2

        Re: “The question of whether the claims were valid for the period between grant and cancellation is still an open question for the courts in a §281 action.”
        ? Has anyone actually collected damages in an infringement suit for infringement of claims subsequently removed from the patent by a reexamination or IPR [or held invalid in another case] other than when that occurs after that infringement suit is fully final?


          Not yet. If IPR is not a taking, then they will get their damages from the infringer. If it is a taking they will get compensation from the government.


            By now there have been many hundreds of patent suits over many years in which the patent’s claims were removed by reexaminations or IPRs some time after the suit started but before the suit ended. It is inconceivable that infringement damages recoveries for the time periods before the claims were removed has not even been asserted or recovered by anyone if it was actually legally available. Litigators do not throw away cash recovery opportunities. Nor was it inhibited by any PTO post-grant “takings” argument, which has been around for many years yet rarely taken seriously by those actually contesting IPRs.


              Tell me again about your “theory” when it came to DECADES of the “false marking statute” situation…

              Your cheerleading is underwhelming.

  16. 1

    As has been postulated many times, the takings issue also occurs PRIOR to any final decision on the merits of whether or not non-patentability is found.

    That “different justification” is off the table if the right question is asked.

    1. 1.1

      Please explain how an IPR, reexamination, etc., preliminary action or decision, when there is NO invalidation of any patent claim in the FINAL decision, can be considered a taking or even a greater taking?

      1. 1.1.1

        Asked and answered Paul.

        There is a separate legal point at the institution decision point.

        Compare the sum total of sticks in the bundle of property rights before and immediately after any such institution decision point.

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