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.